Ex Parte Bhowmik

Board of Patent Appeals and Interferences

Jul 21, 2008

10669938 (B.P.A.I. Jul. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ACHINTYA K. BHOWMIK
____________

Appeal 2008-0487
Application 10/669,938
Technology Center 2800
____________

Decided: July 21, 2008
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to the compensation of dispersion in an
optical medium by tunably providing a dispersion of the opposite sign by
Appeal 2008-0487
Application 10/669,938

2
stressing a photoelastic medium. A tunable degree of dispersion
compensation is applied by providing an adjustable amount of stress to a
photoelastic medium which generates an amount of dispersion sufficient to
compensate for the induced dispersion in the optical medium.
(Specification 2-5).
We affirm.
Representative independent claim 1 is illustrative of the invention and
it reads as follows:

1. A method comprising:
determining an amount of dispersion in an optical system; and
applying an amount of stress to an optical medium to provide
dispersion compensation for the determined amount of dispersion.

The Examiner relies on the following prior art reference to show
unpatentability:
Chien US 2002/0168165 A1 Nov. 14, 2002

Claims 1-15, all of the appealed claims, stand rejected under 35
U.S.C. § 102(e) as being anticipated by Chien.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Brief have not been considered and are deemed waived [see 37
C.F.R. § 41.37(c)(1)(vii)].

Appeal 2008-0487
Application 10/669,938

3
ISSUE
Under 35 U.S.C. § 102(e), does Chien have a disclosure which
anticipates the invention set forth in claims 1-15?

PRINCIPLES OF LAW
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg. Co. v.
Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir.
1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

ANALYSIS
With respect to the 35 U.S.C. § 102(e) rejection of representative
independent claim 1 based on the Chien reference, the Examiner indicates
Appeal 2008-0487
Application 10/669,938

4
(Ans. 3) how the various limitations are read on the disclosure of Chien. In
particular, the Examiner directs attention to the illustrations in Figures 1, 3,
and 4, as well as the accompanying description at paragraphs 50-53 of
Chien.
Appellant’s arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of Chien
so as to establish a prima facie case of anticipation. Appellant’s arguments
(Br. 10) focus on the contention that, in contrast to the requirements of the
appealed claims, Chien does not determine the amount of dispersion in an
optical system and apply the appropriate amount of stress to compensate for
the dispersion. According to Appellant (id.), Chien simply uses a closed
feedback control system to apply a fixed correction signal to the optical
system until dispersion is reduced to zero.
After reviewing the disclosure of Chien in light of the arguments of
record, however, we are in general agreement with the Examiner’s position
as stated in the Answer. Our interpretation of the disclosure of Chien
coincides with that of the Examiner, i.e., as described at paragraph 52 of
Chien, a detector 406 detects the amount of dispersion in the optical system
100 and develops a DC voltage which is provided to processor 402. The
processor 402 functions to control the piezoelectric actuators of the
compensator 402 to compensate for the determined amount of dispersion.
(Chien, paragraph 53).
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Chien, the Examiner’s 35 U.S.C. § 102(e)
rejection of representative independent claim 1, as well as claims 2-14 not
separately argued by Appellant, is sustained.
Appeal 2008-0487
Application 10/669,938

5
CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 102(e)
rejection of all the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-15 is affirmed.
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

gvw

TROP PRUNER & HU, PC
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631