Ex Parte Silveira et al

Patent Trial and Appeal BoardOct 15, 2012

10171434 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAULO E.X. SILVEIRA, TONY SARTO, LARRY FABINY, and MARKO VOITEL ____________ Appeal 2010-004818 Application 10/171,434 Technology Center 2600 ____________ Before THU A. DANG, GREGORY J. GONSALVES, and ANDREW J. DILLON, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004818 Application 10/171,434 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 7-14 (Ans. 3). Claims 6 and 18 were allowed and claims 1-5, 15-17 and 19-28 were cancelled (id.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary Claim 7 follows: 7. An optical system for routing light, the optical system comprising: an optical element having an intrinsic polarization- dependent loss and disposed to be encountered by the light at least twice; a reflective element disposed to be encountered by the light between encounters with the optical element; and a wave plate assembly disposed to be encountered by the light between encounters with the optical element, wherein the wave plate has a retardance optimized according to a material property of the reflective element to reduce polarization- dependent loss in the system and/or the wave plate has an orientation optimized according to a material property of the reflective element to reduce polarization-dependent loss in the optical system. Claims 7-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ogusu (U.S. Patent Number 5,917,625, issued June 29,1999(filed February 21, 1997)) in view of Peng (U.S. Patent Number 6,529,307 B1, issued March 4, 2003 (filed June 4, 2001)) (Ans. 5-7). Appeal 2010-004818 Application 10/171,434 3 ISSUE Appellants’ responses to the Examiner’s positions present the following issue: Did the Examiner properly combine the teachings of Ogusu and Peng in determining that the combination renders claims 7-14 obvious? ANALYSIS We disagree with Appellants’ assertions regarding the Examiner’s rejection of the claims on appeal. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 5-11) in response to arguments made in the Appellants’ Appeal Brief and Reply Briefs. We concur with the conclusion reached by the Examiner. We highlight and address certain findings and arguments below. Appellants contend that the Examiner did not properly combine the teachings of Ogusu and Peng in determining that the combination renders claims 7-14 obvious (App. Br. 4-6). In support of the contention, Appellants argue that it would be improper to “substitute the entire combination of elements between the dispersive element 11 and reflective surface 31 in Peng for the wave plate 132 in Ogusu” (id. at 5). Appellants also argue that “[t]o selectively incorporate the reflective polarization modulator 80 into a different system without the birefringent beam displacer 50 is completely contrary to the explicit description of its functionality in Peng” (id.). But the Examiner did not suggest that particular components from Peng should be bodily incorporated into Ogusu’s system (See Ans. 5-6). We find no error in Appeal 2010-004818 Application 10/171,434 4 the Examiner’s conclusion that one of ordinary skill would have been motivated to use Peng’s teachings of additional wave plates to reduce polarization dependent loss. That is, the issue here is not whether a particular set of components from Peng could be bodily incorporated into Ogusu’s system, but rather whether a person of ordinary skill, upon reading Peng, would have been motivated to use additional wave plates in Ogusu’s system. See In re Keller, 642 F.2d 413 (CCPA 1981). We find that such a person would have been so motivated to provide additional degrees of freedom to reduce polarization dependent loss (see Ans. 9-10). Accordingly, we find no error in the Examiner’s rejection of claims 7-14. DECISION We affirm the Examiner’s decision rejecting claims 7-14 as obvious. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED llw