Ex parte Andrews

Board of Patent Appeals and Interferences

Feb 22, 2001

08598854 (B.P.A.I. Feb. 22, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. ANDREWS
____________
Appeal No. 1998-2463
Application No. 08/598,854
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and LEVY, Administrative Patent
Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-11, which are all
of the claims pending in this application.
BACKGROUND
The appellant’s invention relates to facet tracking using
wavelength variations and a dispersive element. An
understanding
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Application No. 08/598,854
of the invention can be derived from a reading of exemplary
claims 1 and 11, which are reproduced as follows:
1. A scanner, comprising:
a laser for emitting a laser beam having a wavelength
which is a function of an electric signal;
a source for applying a variable electric signal to said
laser;
a rotating facet for sweeping the laser beam in a scan
line; and
a wavelength dispersive element for receiving the laser
beam and for directing the laser beam onto the rotating facet
to form a spot;
wherein said wavelength dispersive element is positioned,
and said source varies the electric signal to said laser such
that the spot tracks the rotation of said facet.
11. A method of facet tracking comprising the steps of:
passing a variable wavelength laser beam through a
wavelength dependent dispersive element into a spot on a
selected area of a rotating facet; and
varying the wavelength of the laser beam such that the
spot follows the selected area as the facet rotates.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Asada 4,845,358 Jul. 4, 1989
Andrews 5,363,126 Nov. 8, 1994
Appel et al. (Appel) 5,498,869 Mar. 12, 1996
(filed Dec. 20, 1993)
Claims 1-5 and 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Andrews in view of Appel. Claims 6-
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Application No. 08/598,854
The examiner (answer, page 3) notes that a substantially correct copy1
of claim 9 appears in the appendix to the brief. A correct copy of claim 9 is
attached to this decision.
10 stand rejected under 35 U.S.C. § 103 as unpatentable in1
view of Andrews in view of Appel, further in view of Asada.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner’s answer (Paper
No. 8, mailed March 30, 1998) and the final rejection (Paper
No. 5, mailed October 27, 1997) for the examiner’s complete
reasoning in support of the rejections, and to the appellant’s
brief (Paper No. 7, filed February 9, 1998) for the
appellant’s arguments thereagainst. Only those arguments
actually made by the appellant have been considered in this
decision. Arguments which the appellant could have made but
chose not to make in the brief have not been considered. See
37 CFR 1.192(a).
OPINION
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Application No. 08/598,854
In reaching our decision in this appeal, we have
carefully considered the subject matter on appeal, the
rejections advanced by the examiner, and the evidence of
obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
Upon consideration of the record before us, we make the
determinations which follow.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
Appeal No. 1998-2463 Page 5
Application No. 08/598,854
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole. See id.; In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
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Application No. 08/598,854
We consider first the rejection of claims 1-5 and 11
based on the teachings of Andrews in view of Appel. We begin
with claim 1. The examiner asserts (final rejection, page 2)
that Andrews fails to disclose a variable wavelength laser and
a wavelength dispersive element. To overcome these
deficiencies in Andrews, the examiner relies upon Appel for a
teaching of a controller for applying a variable signal to a
laser, and a wavelength dispersive element for receiving the
laser beam and for directing the beam onto the facet to form a
spot. The examiner concludes (id.) that “[i]t would have been
obvious to replace the laser and dispersive element in Andrews
with those of Appel et al (but still oriented as in Andrews),
to obtain a shorter wavelength switching time, and to deploy a
cheaper, passive dispersive element.”
The appellant admits (brief, page 5) that the invention
is comprised of elements described in prior art references.
The appellant asserts (brief, page 6) “[t]aken alone or in
combination there is no suggestion in Appel et al. and Andrews
to use wavelength variations for facet tracking. Appel et
al., which do teach the use of wavelength variations, do not
teach facet tracking. Andrews, which does teach facet
Appeal No. 1998-2463 Page 7
Application No. 08/598,854
tracking, does not teach the use of wavelength variations to
accomplish it.”
We find that Andrews is directed to a raster output
scanner (col. 1, lines 5-11) which includes both facet
tracking and wobble correction (col. 12, lines 34-36). Facet
tracking (col. 3, lines 29-32) is brought about through the
use of a shifting structure for causing the laser beam to
follow the active deflecting facet as it rotates. In facet
shifting (col. 11, lines 37 and 38), the laser beam is shifted
in a direction
parallel to polygon rotation. In wobble correction (col. 11,
lines 35 and 36), the laser beam is shifted in a direction
perpendicular to the direction of rotation of the polygon
(Figure 6). In Andrews (col. 7, lines 29-31), an optical
element 50 is disposed in the pre-scan optics, between laser
12 and rotating polygon 16. The optical element 50, includes
(col. 7, lines 38-40) a cell containing a ferroelectric liquid
crystal material. Andrews further discloses (col. 8, lines 8-
17) that by applying a biasing voltage to the optical element
50, the refractive index of the optical element is varied,
resulting in the laser beam being deflected at an angle with
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Application No. 08/598,854
respect to the magnitude of the biasing voltage. Thus,
Andrews teaches the use of facet tracking in a raster output
scanner, but does not do so by varying the electrical signal
to vary the wavelength of the laser. Rather, Andrews teaches
providing a varying electrical signal to the optical element
50, which has a variable index of refraction.
We find that Appel is directed to (col. 1, lines 10-15)
facet-to-facet wobble correction in a raster output scanner.
Appel discloses (Figures 3 and 4 and col. 4, lines 3-45) the
use of a controller 230 for modulating the wavelength of laser
source 202 so that upon passing through optical beam
deflecting element
206, wobble in a facet of a pyramidal scanner can be corrected
prior to scanning. Appel further discloses an alternate
embodiment (Figures 5 and 6, and col. 5, lines 34-48) wherein
controller 230 provides an electrical signal to optical beam
deflecting element 232 which has a variable index of
refraction. Appel additionally discloses (embodiments of
Figures 7-9, and col. 5, lines 50-58) that the controller can
provide electrical signals to modulate both the wavelength of
the laser source and the variable index of refraction of the
Appeal No. 1998-2463 Page 9
Application No. 08/598,854
optical beam deflecting element. Thus, we find that in Appel,
electrical signals are used to modulate either the laser
source and/or the optical beam deflecting element, but only to
provide correction of pyramidal wobble. We find that neither
Andrews nor Appel discloses varying the electric signal to the
laser for facet tracking.
Obviousness is tested by “what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). Obviousness “cannot be established by
combining the teachings of the prior art to produce the
claimed invention,
absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). Although
the prior art to Andrews and Appel suggests that wavelength
modulation of the laser can be used to correct pyramidal
wobble, and that both wavelength and refractive index
modulation can be used to correct pyramidal wobble, we find
that the advantages of utilizing modulation of the laser
source for facet tracking were not taught or suggested by the
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Application No. 08/598,854
prior art applied by the examiner. We agree with the examiner
that if the raster output scanners of Andrew
and Appel were modified as advanced by the examiner the
resultant structure might obtain a shorter wavelength
switching time, and a passive dispersive element could have
been utilized. However, from all of the above, we find no
suggestion in the prior art for making the proposed
modification of replacing the laser and dispersive element of
Andrews with those of Appel.
It appears to us that the examiner has relied upon
hindsight in reaching the obviousness determination. Our
reviewing court has said, “[t]o imbue one of ordinary skill in
the art with knowledge of the invention in suit, when no prior
art reference or references of record convey or suggest that
knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher.” W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). Accordingly, we
find that the examiner has failed to establish a prima facie
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Application No. 08/598,854
case of obviousness with respect to claim 1. The rejection of
claim 1 under 35 U.S.C.
§ 103 is therefore reversed. As claims 2-5 depend from claim
1, the rejection of claims 2-5 under 35 U.S.C. § 103 is
reversed.
Turning next to claim 11, we find that claim 11 recites
“varying the wavelength of the laser beam such that the spot
follows the selected area as the facet rotates.” However,
unlike claim 1, claim 11 does not recite that the electric
signal to the laser is varied. Claim 11 recites that the
wavelength of the laser beam is varied. We find that Andrews
teaches (col. 8, lines 49-52) that “[s]uch liquid crystal
cells are often used to alter polarization of a light passing
therethrough so as to
provide . . . a wavelength tuner” (underlining added). In
view of the teachings of Andrews, we find that it would have
been
manifestly obvious to a skilled artisan to have used the
liquid crystal cell of optical element 50 of Andrews as a
wavelength tuner. However, as acknowledged by the examiner
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Application No. 08/598,854
(final rejection, page 2) Andrews does not disclose “a
wavelength [dependent] dispersive element.” For the reasons
stated above with respect to claim 1, we find no suggestion in
the prior art to have substituted the wavelength dependent
dispersive element 206 of Appel for the variable refractive
index optical element 50 of Andrews. We additionally find
that if the wavelength dependent dispersive element of Appel
were substituted for the variable refractive index optical
element 50 of Andrews, the resultant structure would not
include wavelength tuning. We therefore conclude that the
examiner has failed to establish a prima facie case of
obviousness for claim 11. Accordingly, the rejection of claim
11 under 35 U.S.C. § 103 is reversed.
We turn next to the rejection of claims 6-10 under 35
U.S.C. § 103 as unpatentable over Andrews in view of Appel,
further in view of Asada. We note that claim 6 has language
identical to claim 1 “said source varies the electrical signal
to said laser such that the spot tracks the rotation of said
facet.” In addition, we find that Asada does not overcome the
deficiencies of the basic combination of Andrews and Appel.
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Application No. 08/598,854
Accordingly, the rejection of claims 6-10 under 35 U.S.C. §
103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-11 under 35 U.S.C. § 103 is reversed.
REVERSED
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Application No. 08/598,854
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 020
ROCHESTER, NY 14644
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Application No. 08/598,854
APPENDIX
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9. The document production machine according to claim 6,
wherein said wavelength dispersive element comprises a
dispersive grating.