Ex Parte Brooker

Board of Patent Appeals and Interferences

May 19, 2011

10969357 (B.P.A.I. May. 19, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/969,357 10/21/2004 Jeffrey Brooker 47666 4678
1609 7590 05/19/2011
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
CONSILVIO, MARK J
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
05/19/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JEFFREY BROOKER
______________

Appeal 2011-006168
Application 10/969,357
Technology Center 2800
_______________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 3-5, 11, 13-15, 20-22, 29, 31-33, 38-41,
47, and 51 in the Office Action mailed April 28, 2010. 35 U.S.C. §§ 6 and
134(a) (2002); 37 C.F.R. § 41.31(a) (2010).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a module, and is
representative of the claims on appeal:
1. A module comprising:
a light path;
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Application 10/969,357
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an aperture removably positioned with respect to the light path,
wherein the aperture has a variable size opening that allows an area
illuminated on a specimen to be adjusted; and
a spinning disk removably positioned with respect to the light path;
wherein:
when the aperture is positioned in the light path, the aperture is in a
first plane and the center of the variable size opening of the aperture remains
fixed with respect to the light path;
when the spinning disk is positioned in the light path, the spinning
disk is in a second plane; and
the first plane and the second plane are coplanar.
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: appealed claims 1, 3-5, 11,
13-15, 20-22, 29, 31-33, 38-41, 47, and 51 over Amano (US 2005/0002091
A2) in view of Hopkins (US 7,230,697 B2). App. Br. 13; Ans. 3.
Appellant argues the ground of rejection based on essentially the
claims as a group and on independent claims 1, 11, 29, and 47 as a group.
App. Br. 14-18. Thus, we decide this appeal based on representative claim
1. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
Opinion
We are of the opinion Appellant’s arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed module encompassed by claim 1 which module is essentially
a part of the optical apparatus encompassed by each of claims 11, 29 and 47.
In this respect, we are in agreement with the Examiner’s analysis of the
evidence in Amano and Hopkins, and the findings of fact and conclusions of
law stated in the Answer, to which we add the following for emphasis with
respect to Appellant’s arguments.
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Appellant submits that the Examiner erred in interpreting the claim
terms “aperture,” “plane,” and “coplanar” in claim 1 when considered in
light of the Specification. App. Br. 15-17; Reply Br. 2-4. According to
Appellant, the dictionary and art definition of the term “aperture” is “an
opening” and “diameter” of the opening “‘in an optical system that
determines the diameter of the bundle of rays traversing the instrument.’”
App. Br. 16; Reply Br. 2-3. Appellant argues, that contrary to the
Examiner’s position “that ‘coplanar’ requires that the plane has ‘some
thickness’ based in part on the illustration of aperture 32 and spinning disk
34 in Appellant’s Figures 3b and 3c,” it is
clearly shown in Appellant’s Figures 3b and 3c (in particular
Figure 3c), the blades (not labeled) of the aperture 32 that
define the opening of the aperture . . . are essentially in the
same plane as the spinning disk 34 (see, for example,
paragraphs [0028]-[0029] of the specification). While the term
“coplanar” (as recited, for example, in claim 1) does not
preclude some minor variations between the plane of the
aperture opening and the spinning disk, respectively, when
placed in the light path, one of ordinary skill in the art would
readily appreciate that, in Amano, a disk, which is sandwiched
between two outer frames (which allegedly have apertures), is
not “coplanar” with either of the two outer frames.
App. Br. 17; see Reply Br. 3. Appellant further contends that the
“specification describes ‘coplanar’ in an implementation where, as shown in
Appellant’s Fig. 2, ‘[t]he disk 34 and the aperture 32 can be moved together
in the same plane by servo 35.” Reply Br. 3, citing Spec. ¶ 0028. In this
respect, Appellant maintains that the term “coplanar” “does not preclude
some minor variations between the plane of the aperture opening and the
spinning disk, respectively, as shown in Appellant’s Figs. 2 and 3a-3c,
Amano’s outer frames 406 and 407 and disk 420 are clearly not ‘coplanar’
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Application 10/969,357
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with the meaning of Appellant’s invention.” Reply Br. 3. Appellant further
maintains that “the planes of [Amano’s] openings 409 formed by outer
frames 406 and 407 are not the same, and the pane of disk 420 sandwiched
between frames 406 and 407 is not the same as the plane of either opening
409.” Reply Br. 4.
We cannot agree with Appellant’s position. The plain language of
claim 1 specifies any module comprising at least, among other things, the
specified “aperture” component, which is “in a first plane” when “positioned
in the light path,” and the specified “spinning disk” component, which is “in
a second plane” when “positioned in the light path,” wherein “the first plane
and the second plane are coplanar” with respect to the plane of the module.
Thus, based on the claim language of claim 1 as a whole, the “plane” of each
of the “aperture” and the “spinning disk” components of the module is part
of the larger plane of the module with respect to which the “plane” of the
respective components are “coplanar,” that is, in the plane of the module.
We agree with the Examiner’s position that the plain language of
claim 1 is supported by the Specification, including the Figures thereof.
Ans. 3-4 and 6-8. Contrary to Appellant’s position, we find that in
Specification Figure 3c, the line extending from numeral 32, “aperture,” is
directed to the interior of the aperture component of module 8, and not to an
unlabeled “blades” portion thereof as argued, which supports the Examiner’s
position that “[i]n this example, the plane of the aperture would have a
thickness.” Ans. 6-7; see also Ans. 3-4. Spec. ¶¶ 0028-0029. We further
find that in Specification Figure 3c, spinning disk component 34 is
positioned below aperture component 32 within housing 36 of module 8.
Thus, we are of the view that Specification Figure 3c illustrates the
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requirements of claim 1 that the aperture component 32 and the spinning
disk component 34 are each in separate planes within the plane of housing
36 of module 8, and indeed, it is module 8 which is located at a conjugate
focal plane of an optical apparatus. See Spec., e.g., 7:9-14, ¶¶ 0028-0029,
and Figs. 1-3a-c.
In view of the plain language of claim 1, we cannot agree with
Appellant’s position that Amano’s disk cartridge 440 module with apertures
409 component and rotary disk 420 component does not fall within the
language of claim 1. Indeed, as illustrated in Amano’s Figures 7A-C,
aperture 409 and rotary disk 420 are in separate planes within the plane of
the housing formed by frames 406 and 407 of disk cartridge 440 module,
and thus the aperture 409 and rotary disk 420 planes are coplanar within the
plane of disk cartridge 440 module as required by claim 1. To the extent
that aperture 409 in frame 406 alone can be the aperture, the aperture 409 in
frame 407 is not precluded in view of the open-ended transitional term
“comprising.” See, e.g., In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004);
Vehicular Technologies Corp. v. Titan Wheel Int’l, Inc., 212 F.3d 1377,
1383 (Fed. Cir. 2000). Accordingly, based on our consideration of the
totality of the record before us, we have weighed the evidence of
obviousness found in the combined teachings of Amano and Hopkins with
Appellant’s countervailing evidence of and argument for nonobviousness
and conclude, by a preponderance of the evidence and weight of argument,
that the claimed invention encompassed by appealed claims 1, 3-5, 11, 13-
15, 20-22, 29,
31-33, 38-41, 47, and 51 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
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The Primary Examiner’s decision 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)(v).
AFFIRMED
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