Ex Parte Holzapfel et al

Patent Trial and Appeal Board

Sep 30, 2016

13068659 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/068,659
757 7590
BGL
P.O. BOX 10395
CHICAGO, IL 60610
05/16/2011
09/30/2016
FIRST NAMED INVENTOR
Wolfgang Holzapfel
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.
56/493 7034
EXAMINER
GRAY, SUNGHEE Y
ART UNIT PAPER NUMBER
2886
MAILDATE DELIVERY MODE
09/30/2016 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 WOLFGANG HOLZAPFEL, MICHAEL HERMANN, and
KARSTEN SANDIG
Appeal2015-000763
Application 13/068,659
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON REHEARING
Appellants request rehearing of a Decision on Appeal dated July 20, 2016
("Decision"), affirming the Examiner's decision to finally reject claims 1---6 and 8-
23, which are all of the pending claims.
A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. Arguments not raised in
the briefs before the Board and evidence not previously relied on in the briefs are
not permitted in a request for rehearing except as permitted by 37 C.F.R.
§ 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(l) (2014).
For the reasons set forth below, the request is GRANTED.
Appeal2015-000763
Application 13/068,659
I.
Appellants contend the inherency analysis set forth in the Decision is flawed
because the Examiner did not provide any extrinsic evidence and/or technical
reasoning to support a finding that Sandig1 inherently discloses a reflector unit
having "a structure so that it is ensured that wave front deformations of said partial
beams, which result via a first diffraction at said scale, are converted into wave
front deformations that compensate for resultant wave front deformations of said
partial beams upon a second diffraction at said scale," as recited in claim 1.
Request 2. In particular, Appellants argue the Examiner provided a single sentence
in the Answer2 stating Sandig has the same structure as the reflector unit of claim
1. Appellants argue this sentence is conclusory in nature and does not provide any
clear reasoning to support a finding of inherency. Id. at 2-3. Appellants assert the
Board provided a rationale in the Decision to support the Examiner's finding of
inherency but this rationale was provided after Appellants had filed their Appeal
Brief and Reply Brief and effectively acted as a new rejection. Id. at 4.
Appellants' arguments are well taken. 3 We therefore designate our
affirmance of the Examiner's§ 103 rejections in the Decision as new grounds of
rejection.
II.
On rehearing, the Appellants further argue that the Board's reliance on
Appellants' Specification in affirming the Examiner's decision was improper
1 Sandig et al., US 2008/0062432 Al, published Mar. 13, 2008 ("Sandig").
2 Examiner's Answer mailed August 15, 2014 ("Answer").
3 We note that Appellants' appeal was taken from the Examiner's Final Office
Action dated February 7, 2014, not the Examiner's Answer.
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Appeal2015-000763
Application 13/068,659
because Appellants' Specification is not prior art. Request 5. This argument is
unpersuasive.
Appellants' disclosure was merely relied on to show that the reflector unit
described in Sandig has the same structure as the claimed reflector unit and thus,
performs the function recited in claim 1 (i.e., "said reflector unit has a structure so
that it is ensured that wave front deformations of said partial beams, which result
via a first diffraction at said scale, are converted into wave front deformations that
compensate for resultant wave front deformations of said partial beams upon a
second diffraction at said scale" (App. Br. 14 (emphasis added))). See In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art products are
identical or substantially identical, the PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of
the claimed product).
In particular, the Examiner found Sandig discloses a reflector unit
compnsmg a first wave front corrector ( cornpnsmg scanning gratings 14 .1 and
14.2), a beam direction inverter, and a second wave front corrector (comprising
scanning gratings 14.3 and 14.4). Final 2-3.4 We cited paragraphs 65, 71, and 72
of Appellants' Specification as defining scanning gratings and triple prisms as
particular structures for wave front correctors and beam inverters, respectively.
Decision 9. Based on that disclosure, we found the reflector unit described in
Sandig has the claimed structure.
On rehearing, Appellants argue the Board's finding of inherency is flawed
because one cannot construe Appellants' Specification as disclosing all scanning
gratings to be wave front correctors. Request 4--5. The Board, however, did not
4 Final Office Action dated February 7, 2014.
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Appeal2015-000763
Application 13/068,659
find that all scanning gratings are wave front correctors. Rather, the Board relied
on the specific scanning gratings disclosed in Sandig.
Based on the foregoing, we find the burden properly shifted to Appellants to
show that the reflector unit disclosed in Sandig does not perform the claimed
function. Best, at 1254--55 (discussing In re Swinehart, 439 F.2d 210 (CCP A
1971) and Jn re Ludtke, 441F.2d660 (CCPA 1971)).
Appellants also contend that the scanning gratings of Sandig possess optical
functions not claimed or disclosed in Appellants' Specification. Request 6.
However, the fact that Sandig discloses that the gratings have certain optical
functions does not prove, without more, that the reflector unit disclosed in Sandig
does not possess the claimed function.
Finally, Appellants state they "do not understand the meaning of the
statement" in footnote 8 of the Decision. 5 Request 6-7. The language "[s]uffice it
to say that the claimed reflector unit comprises two wave front correctors and a
beam direction inverter" in footnote 8 was merely intended to point out that the
function recited in claim 16 is attributed to the reflector unit as a whole, not any
one component of the reflector unit (i.e., a first wave front corrector, a beam
direction inverter, or a second wave front corrector).
5 Decision 9-10.
6 That function is recited in claim 1 as follows: "said reflector unit has a structure
so that it is ensured that wave front deformations of said partial beams, which
result via a first diffraction at said scale, are converted into wave front
deformations that compensate for resultant wave front deformations of said partial
beams upon a second diffraction at said scale." App. Br. 14 (emphasis added).
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Appeal2015-000763
Application 13/068,659
IV.
The Appellants' Request for Rehearing is granted. The affirmance of the
Examiner's§ 103 rejections in the Decision is hereby designated as new grounds
of rejection. The rejections are as follows:
1. claims 1---6 and 8-20 under 35 U.S.C. § 103(a) as being unpatentable
over Sandig;
2. claim 21under35 U.S.C. § 103(a) as being unpatentable over Sandig
in view of Ishizuka; 7 and
3. claims 22 and 23 under 35 U.S.C. § 103(a) as being unpatentable over
Sandig in view of Igaki. 8
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection under 37 C.F.R. § 41.50(b)
which provides that "[a] new ground of rejection ... shall not be considered final
for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. ...
7 Ishizuka, US 2005/0007598 Al, published Jan. 13, 2005.
8 Igaki, US 5,327,218 A, issued July 5, 1994.
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Appeal2015-000763
Application 13/068,659
(2) Request rehearing. Request that the proceeding be reheard
under §41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2014).
REHEARING GRANTED
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