Ex Parte Harchanko

Board of Patent Appeals and Interferences

Mar 26, 2009

10665530 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN S. HARCHANKO
____________

Appeal 2009-2036
Application 10/665,530
Technology Center 2800
____________

Decided:1 March 27, 2009
____________

Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and ELENI MANTIS MERCADER, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 15 to 27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Any applicable time period for the Appellant(s) to take further action in
this case, such as the time periods proscribed by 37 C.F.R. §§ 1.304 and
41.50(b), begins to run from the decided date shown on this page of the
decision. The time period does not run from the Mail Date (paper delivery)
or Notification Date (electronic delivery).
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We will sustain the anticipation rejection of claims 15, 16, 20 to 22,
24, and 25, reverse the anticipation rejection of claims 18 and 23, sustain the
obviousness rejection of claims 17 and 26, and reverse the obviousness
rejections of claims 19 and 27.
Appellant has invented a multi-optical element device in which a
recess in a substrate of a mounting system receives a reference optical
element, and at least a first optical element is attached to a predetermined
structure of an etched structure in the mounting system (Figs. 5B and 7;
Spec. 7, 8, 13, and 14).
Claim 15 is the only independent claim on appeal, and it reads as
follows:
15. A multi-optical element device comprising:
a reference optical element;
a mounting system, wherein said mounting system is formed by
etching substrate(s) to form a recess to receive the reference optical element,
where said recess at least partially conforms to the shape of said reference
optical element, and where said reference optical element is attached to said
recess in said substrate; said mounting system contains etched substrate(s)
forming etched structures upon which optical devices can be attached; and
at least a first optical element attached to a predetermined structure of
said etched structures.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hafner US 6,716,409 B2 Apr. 6, 2004
(filed Sep. 18, 2001
Chiu US 7,006,426 B2 Feb. 28, 2006
(filed Dec. 18, 2001)
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The Examiner rejected claims 15, 16, 18, and 20 to 25 under 35
U.S.C. § 102(e) based upon the teachings of Chiu.
The Examiner rejected claims 17, 26, and 27 under 35 U.S.C. § 103(a)
based upon the teachings of Chiu.
The Examiner rejected claim 19 under 35 U.S.C. § 103(a) based upon
the teachings of Chiu and Hafner.
ISSUES
Anticipation
Appellant argues that “[t]he Chiu reference neither explicitly nor
inherently discloses ‘a reference optical element . . . and at least a first
optical element attached to a predetermined structure of said etched
structures’ as recited in independent claim 15” (App. Br. 4). Appellant
additionally argues that “[t]he Chiu reference neither explicitly nor
inherently discloses ‘wherein said etched structure is covered with a filling
compound to change the index of refraction’ as recited in dependent claim
18” (App. Br. 8).
Based upon Appellant’s arguments, the issues before us are:
Has the Appellant rebutted the Examiner’s findings that Chiu
describes a reference optical element and at least a first optical element
attached to a predetermined structure of the etched structures as set forth in
claim 15 on appeal?
Has the Appellant rebutted the Examiner’s findings that Chiu
describes an etched structure covered with a filling compound to change the
index of refraction as set forth in claim 18 on appeal?

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Obviousness
Appellant argues that “[t]he Chiu reference neither explicitly nor
inherently teaches ‘wherein said recess has a curved shape to at least
partially conform to the convex shape of said reference optical element,’ as
recited in dependent claim 26” (App. Br. 9). Appellant additionally argues
that “t[h]e Chiu reference neither explicitly nor inherently teaches ‘wherein
said etched structure forms a cavity and wherein said reference optical
element is located inside said cavity and the filling compound is used to fill
said cavity,” as recited in dependent claim 27” (App. Br. 10).
In view of Appellant’s arguments, the issues before us are:
Has the Appellant rebutted the Examiner’s findings that Chiu
describes a recess that has a curved shape to at least partially conform to the
convex shape of the reference optical element as set forth in claim 26 on
appeal?
Has the Appellant rebutted the Examiner’s findings that Chiu
describes a reference optical element located inside a cavity and a filling
compound used to fill the cavity as set forth in claim 27 on appeal?
FINDINGS OF FACT
1. As indicated supra, Appellant describes and claims a multi-optical
element device that comprises a reference optical element 10 mounted in a
mounting system 300 that is formed by etching substrates to form a recess
60 that partially conforms to the shape of the reference optical element 10
when the reference optical element is attached to the substrates. The
mounting system contains etched substrate(s) upon which at least a first
optical element 510 is attached to the etched structures.
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2. Chiu describes a multi-optical unit 40 integrated with a
semiconductor chip 42 (Fig. 4; col. 2, ll. 54 to 59). The multi-optical unit 40
comprises a first lens element 12 (i.e., a reference optical unit) mounted onto
an etched substrate 22 (i.e., a mounting system) via concave extensions 44
and 46 that rest in recesses 48 and 50 in the top surface of the etched
substrate 22 (col. 1, l. 54 to col. 2, l. 6; col. 2, l. 59 to col. 3, l. 8). The
etched substrate mounting system contains etched structures (i.e., the bottom
surfaces of the etched substrate 22) that form surface structures for attaching
mirror 80 (i.e., at least a first optical element) (col. 3, ll. 23 to 31; col. 4, ll. 5
to 18).
3. Hafner describes the use of EP19HT epoxy adhesive in nanotube
technology (col. 11, ll. 1 to 25).
PRINCIPLES OF LAW
Anticipation
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Obviousness
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and the Appellant has the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

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ANALYSIS
Anticipation
As indicated supra, Appellant argues that Chiu does not teach a
reference optical element as well as at least a first optical element attached to
the mounting system.
We disagree with Appellant’s argument. Chiu describes a reference
optical element 12 mounted in recesses 48 and 50 of a mounting system 22
(FF 2). At least a first optical element 80 is attached to an etched surface of
the mounting system 22 (FF 2).
In summary, the anticipation rejection of independent claim 15 is
sustained because all of the limitations of claim 15 are found in the teachings
of Chiu. Atlas Powder Co. v. IRECO Inc., 190 F.3d at 1347; In re Paulsen,
30 F.3d at 1478-79. The anticipation rejection of claims 16, 20 to 22, 24 and
25 is likewise sustained because Appellant has not presented any
patentability arguments for these claims apart from the arguments presented
for claim 15.
The anticipation rejection of claims 18 and 23 is reversed because we
agree with the Appellant’s argument that the etched structure of mounting
system 22 in Chiu is not covered with a filling compound to change the
index of refraction. The only coating on mounting system 22 is the
reflective thin film coating that forms mirror 80 (col. 2, ll. 32 to 41; col. 3, ll.
26 and 27).
Obviousness
Turning to the obviousness rejection of claims 17 and 26, we find that
Appellant has not presented any patentability arguments for these claims
apart from the arguments presented for claim 15. Accordingly, we will
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sustain the obviousness rejection of claims 17 and 26 because Appellant has
failed to rebut the Examiner’s prima facie case of obviousness.
Turning next to the obviousness rejection of claim 27, we will reverse
this rejection because we agree with the Appellant’s argument (App. Br. 10)
that Chiu neither teaches nor would have suggested to one of ordinary skill
in the art the use of a filling compound in either of the recesses 48 and 50.
Turning lastly to the obviousness rejection of claim 19, we find that
Hafner does not cure the noted shortcoming in the teaching of Chiu. Thus,
the obviousness rejection of this claim is reversed. In re Oetiker, 977 F.2d at
1445.
CONCLUSIONS OF LAW
Appellant has failed to establish that the Examiner erred in rejecting
claims 15, 16, 20 to 22, 24, and 25 for anticipation because Chiu describes
each and every limitation set forth in these claims.
Appellant has established that the Examiner erred in rejecting claims
18 and 23 for anticipation because Chiu does not describe the filling
compound set forth in these claims.
Appellant has failed to establish that the Examiner erred in rejecting
claims 17 and 26 for obviousness.
Appellant has established that the Examiner erred in rejecting claims
19 and 27 for obviousness because the applied references neither teach nor
would have suggested to the skilled artisan the claimed filling compound.
ORDER
The anticipation rejection of claims 15, 16, 20 to 22, 24, and 25 is
affirmed, and the obviousness rejection of claims 17 and 26 is affirmed. The
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anticipation rejection of claims 18 and 23 is reversed, and the obviousness
rejections of claims 19 and 27 are reversed.
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-IN-PART

tdl

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