Ex parte Bell

Board of Patent Appeals and Interferences

Jul 15, 1999

08314749 (B.P.A.I. Jul. 15, 1999)

Application for patent filed September 29, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CONRAD J. BELL
____________
Appeal No. 97-0126
Application No. 08/314,7491
____________
ON BRIEF
____________
Before BARRETT, KRASS, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-4, all of the claims pending in the present
application. An amendment after final rejection was filed May
25, 1995 which was denied entry by the Examiner.
The claimed invention relates to a gradient index lens
assembly formed of a plurality of lens arrays which are joined
Appeal No. 97-0126
Application No. 08/314,749
The Appeal Brief was filed September 28, 1995. In2
response to the Examiner’s Answer dated January 29, 1996, a
Reply Brief was filed February 20, 1996 which was acknowledged
and entered by the Examiner without further comment on May 6,
1996.
2
together end-to-end to form an extended linear array. Each
array has two staggered rows of optical fibers extending along
the length of each array.
Claim 1 is illustrative of the invention and reads as
follows:
1. A gradient index lens array assembly comprising a
plurality of linear gradient index lens arrays, each array
having two staggered rows of optical fibers extending along
the length of each array, each array connected in a staggered
end-to-end configuration forming an extended length linear
array assembly.
The Examiner relies on the following reference:
Yamanishi et al. (Yamanishi) 4,742,240
May 03, 1988
Claims 1-4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Yamanishi. Rather than reiterate the
arguments of Appellant and the Examiner, reference is made to
the Briefs and Answer for the respective details.2
OPINION
Appeal No. 97-0126
Application No. 08/314,749
3
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, Appellant’s
arguments set forth in the Briefs along with the Examiner's
rationale in support of the rejections and arguments in
rebuttal
set forth in the Examiner's Answer. It is our view, after
consideration of the record before us, that the collective
evidence relied upon and the level of skill in the particular
art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claims 1-
4. Accordingly, we reverse.
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
Appeal No. 97-0126
Application No. 08/314,749
4
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 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); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Appeal No. 97-0126
Application No. 08/314,749
5
Cir. 1984). 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).
With respect to apparatus claims 1-3, the Examiner seeks
to modify the lens arrangement of Yamanishi by suggesting the
obviousness of staggering the disclosed lens array in the
lengthwise direction. In the Examiner’s view, it would be a
matter of obvious design choice to do so since Appellant has
not disclosed any purpose for such staggered configuration.
In response, Appellant (Reply Brief, page 2) challenges
this basis for the Examiner’s obvious design choice conclusion
by referring to pages 1 and 6 of the specification which
describes how the claimed staggered lens array assembly with
optically stitched outputs enables the copying of extra wide
documents. In addition, Appellant contends that Yamanishi
discloses only a conventional single lens array arrangement
with staggered rows of optical fibers and offers no
Appeal No. 97-0126
Application No. 08/314,749
6
suggestion to combine a plurality of lens arrays into a
staggered assembly as claimed.
Upon careful review of Yamanishi, we are in agreement
with both of the above arguments of Appellant. The Examiner’s
questioning of the purpose of Appellant’s staggered lens
assembly does not address the issue of obviousness. The
conclusion that such arrangement is a matter of obvious design
choice, as suggested by the Examiner, is not supported by any
evidence of record. We further agree that the portion of the
disclosure of Yamanishi relied on by the Examiner teaches only
a single lens array with no suggestion that a plurality of
such arrays could be coupled together, let alone in the
staggered configuration as claimed. Although not mentioned by
the Examiner, we do note that the embodiment illustrated in
Figure 14 of Yamanishi has an assembly of two lens arrays. As
evident from the Figure 14 illustration and accompanying
disclosure, however, the assembled arrays are in a side-by-
side configuration instead of staggered end-to-end as claimed.
With respect to method claim 4, we note that the Examiner
has never addressed the limitations contained in the recited
Appeal No. 97-0126
Application No. 08/314,749
7
method steps. The Examiner’s sole basis for the rejection of
this claim appears to be a reference to a portion of Yamanishi
which relates to a method of reading a document image and not
to an assembling method for a lens as claimed. Since the
Examiner has not addressed the particulars of this claim, we
are constrained, on the record before us, to agree with
Appellant’s contention that none of the claimed method steps
of forming a lens array assembly are taught or suggested by
Yamanishi.
Since it is our opinion, for at least the reasons
discussed above, that the Examiner has failed to establish a
prima facie case of obviousness with respect to claims 1-4 we
can not sustain the Examiner’s 35 U.S.C. § 103 rejection of
claims 1-4. Accordingly, the Examiner’s decision rejecting
claims 1-4 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Appeal No. 97-0126
Application No. 08/314,749
8
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
lp
RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 020
ROCHESTER NY 14644
Leticia
Appeal No. 97-0126
Application No. 08/314,749
APJ RUGGIERO
APJ KRASS
APJ BARRETT
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: February 10, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT