Ex Parte Grayson et al

Patent Trial and Appeal Board

Sep 29, 2016

12902763 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/902,763 10/12/2010
96411 7590 09/29/2016
Dinsmore & Shohl LLP
255 East Fifth Street, Suite 1900
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Benjamin Alan Grayson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
22562-384/TOY2010-049PA 2659
EXAMINER
CHANG, AUDREY Y
ART UNIT PAPER NUMBER
2872
MAILDATE DELIVERY MODE
09/29/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN ALAN GRAYSON, DEBASISH BANERJEE,
and MASAHIKO ISHII
Appeal2015-001046
Application 12/902,763
Technology Center 2800
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
January 6, 2014 decision finally rejecting claims 1-3 and 7-21 ("Final
Act"). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as the Toyota Motor
Corporation (Appeal Br. 3).
Appeal2015-001046
Application 12/902,763
CLAIMED SUBJECT MATTER
Appellants' invention is directed to semi-transparent reflectors
comprising multilayer photonic structures (Spec. i-f 2). According to
Appellants, reflectors are commonly used to reflect electromagnetic waves
at certain frequency bands, including visible light (Spec. i-f 3). The claimed
reflectors are made of alternating layers of low and high index dielectric
materials (Spec. i-f 5). The claimed reflectors can be used in automotive
communications systems (Spec. i-f 6). Details of the claimed invention are
set forth in representative claims 1 and 12, which are reproduced below from
the Claims Appendix of the Appeal Brief:
1. A semi-transparent reflector comprising a multilayered
photonic structure, the multilayered photonic structure
comprising a plurality of coating layers of high index dielectric
material and a plurality of coating layers of low index dielectric
material, wherein:
the piuraiity of coating iayers of high index
dielectric material and the plurality of coating layers of low
index dielectric material of the multilayered photonic structure
are arranged in an [LH ... (LH)N ... L] structure having a total
number of layers x, wherein:
L is one of the plurality of coating layers of low index
dielectric material;
H is one of the plurality of coating layers of high index
dielectric material;
N is a positive integer;
the total number of layers xis from about 5 to about 99;
intermediate layers (LH) are repeated N times to
achieve the total number of layers x such that N = (x-3)/2; and
the multilayered photonic structure has substantially constant
reflectance values for wavelengths of electromagnetic radiation
in a visible spectrum over a range of angles of incidence of the
2
Appeal2015-001046
Application 12/902,763
electromagnetic radiation as measured by having a standard
deviation of the substantially constant reflectance values of less
than about 7% reflectance over a range of angles of incidence
from about 0° to about 45° over a range of wavelengths of
electromagnetic radiation from about 400 nm to about 900 nm.
12. A vehicle comprising:
a communication system coupled to the vehicle
that receives or transmits a transmission signal, wherein the
communication system utilizes the transmission signal to
exchange information between the vehicle and a compatible
communication device outside of the vehicle;
a non-metallic vehicle component coupled to the
vehicle and disposed within a transmission path of the
communication system, the non-metallic vehicle component
comprising a multilayered photonic structure, the multilayered
photonic structure comprising a plurality of coating layers of
high index dielectric material and a plurality of coating layers
of low index dielectric material, wherein:
the plurality of coating layers of high index
dieiectric materiai and the piuraiity of coating iayers of iow
index dielectric material of the multilayered photonic structure
are arranged in an [LH ... (LH)N ... L] structure having a total
number of layers x, wherein:
L is one of the plurality of coating layers of low index
dielectric material;
H is one of the plurality of coating layers of high index
dielectric material;
N is a positive integer;
intermediate layers (LH) are repeated N times to achieve
the total number of layers x such that N = (x-3)/2;
the multilayered photonic structure has substantially
constant reflectance values for wavelengths of electromagnetic
radiation in a visible spectrum over a range of angles of
incidence of the electromagnetic radiation as measured by
having a standard deviation of the substantially constant
reflectance values of less than about 7% reflectance over a
3
Appeal2015-001046
Application 12/902,763
range of angles of incidence from about 0° to about 45° over a
range of wavelengths of electromagnetic radiation from about
400 nm to about 900 nm; and
the multilayered photonic structure is substantially
transparent to the transmission signal.
REJECTIONS2
I. Claims 1-3 and 7-11 are rejected under 35 U.S.C. § 103(a) as
being unpatentab le over Mizrahi 3 in view of Wood 4 and Spiro. 5
II. Claims 12-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takayanagi6 in view ofWitkowski, 7 Mizrahi, and Wood.
III. Claims 18 and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable8 over Mizrahi in view of Spiro. 9
IV. Claim 19 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizrahi and Spiro, and further in view of Wood.
2 The Final Action contained several rejections under 35 U.S.C. § 112. These
rejections have been withdrawn (Ans. 2) and, therefore, are not before us.
3 Mizrahi et al., U.S. Patent No. 6,894,838 B2, issued May 17, 2005.
4 Wood II et al., U.S. Patent No. 6,331,914 Bl, issued December 18, 2001.
5 Spiro et al., U.S. Patent No. 6,534,903 Bl, issued March 18, 2003.
6 Takayanagi et al., U.S. Patent No. 7,980,711 B2, issued July 19, 2011.
7 Witkowski et al., U.S. Patent No. 8,380, 251 B2, issued February 19, 2013.
8 The rejection uses the phrase "as being anticipated" (Final Act. 11 ), but
identifies the rejection as being made under §103(a); accordingly, we
conclude that the use of "as being anticipated by" was simply a mistake.
The same situation exists with respect to Rejections IV and V.
9 Spiro et al., U.S. Patent No. 6,534,903 Bl, issued March 18, 2003.
4
Appeal2015-001046
Application 12/902,763
V. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takayanagi in view of Witkowski, Mizrahi, Wood, and
Spiro.
VI. Claims 1-3 and 7-11 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Spiro in view of Wood.
DISCUSSION
REJECTION II
Appellants do not proffer arguments seeking reversal of this rejection
(see, e.g., Appeal Br. 11). 10 Accordingly, we summarily affirm this
rejection.
REJECTIONS I, III, IV, and V
The Examiner finds that Mizrahi teaches an omnidirectionai, semi-
transparent reflector that is comprised of a multilayer photonic structure
which comprises a plurality of coating layers of high index dielectric
material and a plurality of coating layers of low index dielectric material
(Final Act. 5, citing Mizrahi, FIGS. 2 and 6). The Examiner further finds
that Mizrahi teaches that its reflector has substantially constant reflectance
values for wavelength of electromagnetic radiation in a visible spectrum
over a range of angles of incidence (0 to 50 degrees) (Final Act. 5, citing
Mizrahi, FIGS. 3-5 and 7-9, 3:44---64).
10 Appellants do argue the rejection of claim 21 (which depends from claim
12) over Takayanagi in view of Witkowski, Mizrahi, Wood, and Spiro
(Rejection V). These arguments are addressed below.
5
Appeal2015-001046
Application 12/902,763
The Examiner finds that Mizrahi does not disclose the specific
multilayer photonic structure set forth in claim 1 [LH(LH)NL ], but further
finds that that structure is "well-known in the art," as exemplified in Wood
(Final Act. 6). The Examiner finds that it would have been obvious to
substitute the LH(LH)NL structure of Wood into the Mizrahi reflector
because both the claimed structure and the Mizrahi structure "are art-
recognized equivalents and both sequences are known and available in the
art, which therefore provides beneficial design choices to one of ordinary
skill in the art." (Ans. 7; see, also, Final Act. 6).
The Examiner also finds that Mizrahi does not teach that the total
number of layers in its reflector is from about 5 to about 99, but does teach
that the difference between the refractive indices of the low and high
refractive index materials affects the number of layers required for the
reflector, and that it was well known in the art (using known software tools)
to vary the amount of iayers to design a reflector with the desired reflectance
(Final Act. 6, citing Mizrahi 4:25--40; Wood, 5:1-14; Spiro, 4:19--46).
Appellants argue that Mizrahi teaches away from having a total
number of layers from about 5 to about 99 (Appeal Br. 24). Appellants'
argument is persuasive. Mizrahi states:
It has been found that to achieve high reflectivity over a
bandwidth extending from, for example, 390 nm to 1100 nm or
broader, it is necessary to deposit a high number of layers
compared to prior art mirrors. In particular, the reflector portion
102 of a mirror consistent with the invention may include in
excess of 150 alternating high and low index layers.
(Mizrahi 5:7-13). Thus, Mizrahi discloses that "a high number of layers
compared to prior art mirrors" (emphasis added) is required in order to
6
Appeal2015-001046
Application 12/902,763
achieve a high degree of reflectivity (i.e. over 97.5%) over a bandwidth of at
least 400 nm (Mizrahi, 2:17-21, 5:7-13). The Examiner finds that both
Wood and Spiro teach that smaller numbers of layers (33 and 39
respectively) can achieve the high reflectance value sought by Mizrahi (Ans.
4--5).
However, as pointed out by Appellants (Reply Br. 5-8), neither Wood
nor Spiro discloses a mirror that has such a high degree of reflectance over a
wide range of wavelengths as taught by Mizrahi. In particular, FIG. 2 of
Wood shows that the reflectivity is as low as 90% in the 400-800 nm
wavelength range, while FIG. 5 of Spiro also shows reflectivity as low as
90% (or even lower) over that same wavelength range. In other words, the
secondary references are consistent with the disclosure in Mizrahi that "a
high number of layers compared to prior art mirrors" are needed to achieve
Mizrahi's sought-after level of reflectivity.
Thus, the preponderance of the evidence supports Appeiiants'
contention that using the numbers of layers disclosed in Spiro and Wood
(and recited in the claims on appeal) in Mizrahi's reflector would render
Mizrahi' s reflector unsatisfactory for its intended purpose (creating a high
reflectivity over a wide bandwidth). Therefore, we reverse the obviousness
rejection of claims 1-3 and 7-11 over Mizrahi in view of Wood and Spiro
(Rejection I), the rejection of claims 18 and 20 over Mizrahi in view of
Spiro, and the rejection of claim 19 over Mizrahi in view of Wood and
Spiro. 11 In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (in relying on a
11 Each of claims 18-20 recites a multilayer photonic structure made up of 5
to 99 layers, like claim 1.
7
Appeal2015-001046
Application 12/902,763
combination of prior art references, the examiner's proposed modification
cannot render a prior art reference unsatisfactory for its intended purpose);
see, also, Tee Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed.
Cir. 1999) (where the proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, the
proposed modification would not have been obvious).
REJECTION VI
Appellants argue, inter alia, that neither Spiro nor Wood teaches a
multilayered photonic structure having "substantially constant reflectance
values" as measured by having "a standard deviation of the substantially
constant reflectance values of less than about 7% reflectance over a range of
angles of incidence from about 0° to about 45° over a range of wavelengths
of electromagnetic radiation from about 400 nm to about 900 nm" (Appeal
Br. 38--'39). AppeUants contend that both Spiro and Wood show substantiai
drop-offs in reflectance values for wavelengths above 800 nm, as shown in
the annotated versions of Spiro FIG. 6 and Wood FIG. 2, where the circled
sections show the wavelengths with very low reflectance values:
8
Appeal2015-001046
Application 12/902,763
Spiro Fig. 6 shows the variation of reflectance (from 0 to 100%) over a
range of wavelengths (200 to 2000 nm).
FIG. 2
1 ~~: ~,·::~:::t:-~=~·~1-=~~-~~---~~~~-~~:··~r=~~~~:r:~=-~=c::::~~~l:··_·-~=-~~~~~
- o:o 4cio a~o a~o 1060 1260 1460 16601so1a2TI'ob
Reflectance(%) vs Wavelength (nm)
Wood FIG. 2 shows the variation of reflectance (from 0 to 100%) over a
range of wavelengths (200 to 2000 nm).
9
Appeal2015-001046
Application 12/902,763
In response, the Examiner finds that because the claim language only
requires substantially constant reflectance values to "about 900 nm" and
"about 900 nm" is not explicitly defined in the Specification, it must be
construed "broadly" (Ans. 10). According to the Examiner, because FIGS. 6
and 8 of the Specification show that reflectance for the incident angle of 45°
is not constant in the wavelength range of 800 to 900 nm, the limitation
"about 900 nm" should be interpreted as being "having low reflectance peak
between 800 nm to 900 nm and having non constant reflectance for the
wavelength above 820 nm" (id., emphasis in original). According to the
Examiner both Spiro and Wood meet this standard (Ans. 10-11).
We conclude that the Examiner's construction of "about 900 nm" is in
error, and that this error mandates reversal of the obviousness rejection. As
argued by Appellants (Reply Br. 11-12), the claim language specifically
recites that the reflectance value has a standard deviation of less than about
7% across the a waveiength range of about 400 nm to about 900 nm. That
certain embodiments disclosed in the Specification might not meet the
limitations of the claims, does not change the plain meaning of the claim,
which requires the constancy over the entire range. Moreover, the
Specification, while not explicitly defining the meaning of "about 900 nm,"
does state that the term "about" is designed to account for "inherent degree
of uncertainty that may be attributed to any quantitative comparison, value,
measurement, or other representation" (Spec. i-f 49). A variation of almost
10% (the amount need to conclude that 820 nm is "about 900 nm") is much
greater than the inherent degree of uncertainty in determining a wavelength
of 900 nm.
10
Appeal2015-001046
Application 12/902,763
With this in mind, the preponderance of the evidence supports
Appellants' argument that neither Wood nor Spiro teaches or renders obvious
this claim limitation. In order to reject a claim in a patent application as
obvious under 35 U.S.C. § 103(a), the Examiner must establish a prima facie
case of obviousness, including the presence of each element of the claim. In
the absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also, In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). In this instance, we determine that the
preponderance of the evidence does not support a finding that the prior art
teaches, suggests, or renders obvious each of the limitations in claim 1,
mandating reversal of the rejection of claims 1-3 and 7-11 over Spiro in view
of Wood.
CONCLUSION
We REVERSE the rejection of claims 1-3 and 7-11 under
35 U.S.C. § 103(a) as being unpatentable over Mizrahi in view of Wood and
Spiro.
We AFFIRM the rejection of claims 12-17 under 35 U.S.C. § 103(a)
as being unpatentable over Takayanagi in view of Witkowski, Mizrahi, and
Wood.
We REVERSE the rejection of claims 18 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Mizrahi in view of Spiro.
We REVERSE the rejection of claim 19 under 35 U.S.C. § 103(a) as
being unpatentable over Mizrahi and Spiro, and further in view of Wood.
We REVERSE the rejection of claim 21 under 35 U.S.C. § 103(a) as
11
Appeal2015-001046
Application 12/902,763
being unpatentable over Takayanagi in view of Witkowski, Mizrahi, Wood,
and Spiro.
We REVERSE the rejection of claims 1-3 and 7-11 under
35 U.S.C. §103 (a) as being unpatentable over Spiro in view of Wood.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a) (1) (iv).
AFFIRMED-IN-PART
12