Ex Parte Hunt

Board of Patent Appeals and Interferences

Aug 6, 2007

10174640 (B.P.A.I. Aug. 6, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY H. HUNT
____________

Appeal 2007-1843
Application 10/174,640
Technology Center 2800
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Decided: August 6, 2007
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Before HAIRSTON, BARRETT, and BARRY, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1 to 8, 13 to 16, 21 to 27, and 29. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appeal 2007-1843
Application 10/174,640

2
STATEMENT OF THE CASE
Appellant has invented a nonlinear system and method for performing
surface-sensitive infrared spectroscopic characterizations on a surface to be
interrogated. The system and method include at least a first optical source
for providing a fixed visible input directed to a location on a surface to be
interrogated, and a second optical source for providing a tunable visible
input directed to the same location on the surface. The surface locations of
optical illumination of the two visible optical inputs overlap on the
interrogation location to produce an infrared difference-frequency. This
difference-frequency traverses an output wavelength discriminator, signal
collection optics prior to conversion to an electrical signal by an optical
detector. The output of the optical detector is provided to an electronic
signal analyzer that analyzes the electronic signal to thereby provide surface-
sensitive infrared spectroscopic characteristics (Figure 1; Specification 3 to
6).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A nonlinear optical system for performing surface-sensitive
infrared spectroscopic characterizations on a surface to be interrogated,
comprising:
a) a first optical source for providing a fixed visible input directable
to a location on a surface to be interrogated, wherein said fixed visible input
is provided at a first visible frequency;
b) a second optical source for providing a tunable visible input being
directable to said surface to be interrogated, wherein:
Appeal 2007-1843
Application 10/174,640

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said tunable visible input is provide at a second visible frequency
that is tunable so that the difference-frequency between said first visible
frequency and said second visible frequency is at an infrared frequency; and
said fixed visible input and said tunable visible input are alignable
so that their surface locations of optical illumination overlap on said
interrogated location generating said difference-frequency from said surface
overlap location;
c) an output wavelength discriminator for receiving said reflected
infrared difference-frequency generated on said interrogated location, said
output wavelength discriminator being substantially non-transmissive at
frequencies higher than said difference-frequency, but being substantially
transmissive at said difference-frequency of said fixed visible input and said
tunable visible input, the output of said output wavelength discriminator
being an infrared output;
d) signal collection optics for receiving said output of said output
wavelength discriminator and directing the propagation of said output of the
output wavelength discriminator so that a collected optical light signal is
formed after propagation through said signal collection optics; and
e) an optical detector for converting said collected optical light signal
to an electronic signal, thus monitoring the intensity of said infrared
difference-frequency as a function of the interrogated surface contamination
and observing a material resonance for providing surface-sensitive infrared
spectroscopic characterizations on the surface to be interrogated.

Appeal 2007-1843
Application 10/174,640

4
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tang U.S. 4,639,923 Jan. 27, 1987
Hunt U.S. 5,623,341 Apr. 22, 1997
Neuberger U.S. 5,658,148 Aug. 19, 1997
The Examiner rejected claims 1 to 6, 8, 13, 14, 16, 21 to 23, 26, and
27 under 35 U.S.C. § 102(b) based upon the teachings of Hunt. The
Examiner rejected claims 7, 15, and 29 under 35 U.S.C. § 103(a) based upon
the teachings of Hunt and Tang. The Examiner rejected claims 24 and 25
under 35 U.S.C. § 103(a) based upon the teachings of Hunt and Neuberger.
Appellant contends inter alia that Hunt uses a fixed frequency in the
visible range and a tunable infrared frequency to generate a difference-
frequency in the visible range (Br. 10 to 13).

ISSUE
Does Hunt teach a fixed frequency in the visible range and a tunable
infrared frequency?

FINDINGS OF FACT
In a preferred embodiment, Hunt indicates that “the fixed frequency is
in the visible range and the tunable frequency is in the infrared range” (col.
7, ll. 20 to 22; col. 10, ll. 16 to 18).
Tang was cited by the Examiner for a teaching that “an optical
parametric oscillator and amplifier have a tunable output from the ultraviolet
to the near infrared (e.g., 6 mW at 1220nm; column 7, lines 35-40)”
(Answer 7).
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Application 10/174,640

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Neuberger was cited by the Examiner for a teaching “(column 2, lines
30-32) that diode lasers are either pulsed or continuous wave” (Answer 7).

PRINCIPLE OF LAW
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, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).

ANALYSIS
As indicated supra, Hunt uses a fixed visible input and a tunable
frequency input in the infrared range; whereas, the claims on appeal use a
fixed visible input and a tunable frequency input in the visible range.

CONCLUSION OF LAW
Anticipation has not been established by the Examiner1 for claims 1 to
6, 8, 13, 14, 16, 21 to 23, 26, and 27. Obviousness has not been established
for claims 7, 15, 24, 25, and 29 because the rationale presented by the
Examiner does not demonstrate that the claims would have been obvious
based on the teachings of the applied references.

1 The Examiner recognizes that other embodiments in Hunt may use different
combinations of input frequencies (col. 1. ll. 46 to 48), and that “there are no
restrictions on the signal frequencies” (col. 3, ll. 49 and 50). Although such
teachings may be used in an obviousness rationale, they do not, however,
support an anticipation rejection.
Appeal 2007-1843
Application 10/174,640

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DECISION
The anticipation rejection of claims 1 to 6, 8, 13, 14, 16, 21 to 23, 26,
and 27 is reversed.
The obviousness rejection of claims 7, 15, 24, 25, and 29 is reversed.

REVERSED

KIS

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