Ex Parte Akiyama et al

Patent Trial and Appeal Board

Jan 18, 2017

12400766 (P.T.A.B. Jan. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/400,766 03/09/2009 Daisuke AKIYAMA 12577/148 4607
26646 7590 01/20/2017
ANDREWS KURTH KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
GREENE, JOSEPH L
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
01/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
u spto @ keny on .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAISUKE AKIYAMA and TAKESHI SUGA
Appeal 2016-001754
Application 12/400,7661
Technology Center 2400
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—17, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants contend that, even if Takagi2 were combined with
Kaneko,3 Xie,4 and Morita,5 “a person of ordinary skill in the art would not
arrive at the claimed invention” because Takagi does not teach or suggest
1 Appellants identify Olympus Medical Systems Corp. of Tokyo, Japan as
the real party in interest. App. Br. 2.
2 US 2004/0246874 Al; published Dec. 9, 2004.
3 US 2003/0040668 Al; published Feb. 27, 2003.
4 US 2008/0027286 Al; published Jan. 31, 2008.
5 US 6,118,476; issued Sept. 12, 2000.
Appeal 2016-001754
Application 12/400,766
“wherein, on an image pickup surface of the single image pickup element, a
region on which the polarized light-based observation image is formed
coincides with a region on which the nonpolarized light-based observation
image is formed,” as recited in claim 1. App. Br. 6; Reply Br. 2 (emphasis
added). In particular, Appellants argue as follows:
The teaching of Takagi makes clear that the nonpolarizing
hologram diffraction grating 58 does not result in non-polarized
light from the observation target. Takagi states and the figures
show a polarizing element, 5X4 plate 73, through which laser
light reflected off the optical recording medium 76 must pass
through before reaching the nonpolarizing hologram diffraction
grating 58. See paragraphs 0157 and 0168; figures 12 and 13. In
this manner, the polarizing hologram diffraction grating 59
further changes the polarization of the light but the light that
reaches and results from the nonpolarizing hologram diffraction
grating 58 is also polarized. In this regard, the nonpolarizing
hologram diffraction grating 58 is not a depolarizer. Therefore,
the optical pickup device of Takagi does not receive both
polarized and non-polarized light on the same receiving surface
but receives only polarized light.
App. Br. 6.
In the Answer, the Examiner quotes all but the first sentence of
Appellants’ argument above, and then finds:
However, Takagi’s paragraph 0179, lines 1—9, explicitly state
that it receives the polarized and non-polarized light in a common
region of the light receiving device. Thus, the limitations are
believed to be taught.
Ans. 11.
In the Reply Brief, Appellants quote paragraph 179 of Takagi and
argues that “Takagi does not explicitly state that the light is polarized or
non-polarized.” Reply Br. 2. Appellants further argue that because the laser
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Appeal 2016-001754
Application 12/400,766
light reflected off the optical recording medium 76 in Takagi must pass
through a polarizing element, 5X4 plate 73, before reaching the
nonpolarizing hologram diffraction grating 58, “regardless of whether the
diffraction gratings are polarizing or nonpolarizing the resulting light is
always polarized light.” Id.
Paragraph 179 of Takagi discusses the nonpolarizing diffraction
grating 58 and polarizing diffraction grating 59 diffracting “reflection light
beams of the transmitted light beams by the optical recording medium 76 to
a common region of the light receiving device 60.” It is unclear, however,
from this discussion that both a “polarized light-based observation image”
and a “nonpolarized light-based observation image” are diffracted to
common region 60. We agree with Appellants that Takagi shows and
describes polarizing element, 5X4 plate 73, through which light reflected off
the optical recording medium 76 passes before reaching the hologram laser
unit 65 containing the polarizing hologram diffraction grating 59 and the
nonpolarizing hologram diffraction grating 58. See, e.g., Takagi Fig. 13,
157, 165—169. In the Answer, the Examiner does not discuss Takagi’s
polarizing element or specifically respond to Appellants’ argument that
because light reflected off the optical recording medium 76 must pass
through the polarizing element before reaching the nonpolarizing hologram
diffraction grating 58, “regardless of whether the diffraction gratings are
polarizing or nonpolarizing the resulting light is always polarized light.” See
Reply Br. 2. Because the Examiner has not persuasively explained why
Takagi teaches both a “polarized light-based observation image” and a
“nonpolarized light-based observation image” are diffracted to common
region 60 when considering the effect of the polarizing element, 5k4 plate
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Appeal 2016-001754
Application 12/400,766
73, we are constrained, on this record, to reverse the Examiner’s rejection of
claim 1. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s
burden of proving non-patentability is by a preponderance of the evidence);
see also In re Warner, 379 F.2d 1011,1017 (CCPA 1967) (“The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”).
Thus, we do not sustain the rejection of claim 1. For the same
reasons, we do not sustain the rejection of dependent claims 2—17.
DECISION
We reverse the Examiner’s decision rejecting claims 1—17.
REVERSED
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