Ex parte Ishii

Board of Patent Appeals and Interferences

Feb 28, 2002

08638759 (B.P.A.I. Feb. 28, 2002)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TETSUYA ISHII
____________
Appeal No. 1999-1656
Application No. 08/638,759
____________
HEARD: FEBRUARY 5, 2002
____________
Before RUGGIERO, LALL, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1-12, which are all the claims in the application.
We affirm-in-part.
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BACKGROUND
The invention is directed to an optical system having an element for attenuating
diffraction light of order other than that necessary for forming an image. Claim 1 is
reproduced below.
1. An optical system for forming an image of an object, the optical system
comprising:
at least one diffraction optical element for receiving light from the object and
for diffracting the light from the object to produce first diffraction light of a given
order and second diffraction light of at least one order other than the given order;
at least one refraction optical element in series with the at least one
diffraction optical element; and
a diffraction light selection element, arranged in series with the at least one
diffraction optical element and the at least one refraction optical element, for
receiving the first diffraction light and the second diffraction light, transmitting the
first diffraction light and attenuating the second diffraction light.
The examiner relies on the following references:
Nose 4,539,482 Sep. 3, 1985
Hugle et al. (Hugle) 5,517,279 May 14, 1996
(filed Aug. 30, 1993)
Claims 2, 5, and 6 stand rejected under 35 U.S.C. § 102 as being anticipated by
Nose.
Claims 1-12 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Hugle and Nose.
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We refer to the Final Rejection (mailed May 7, 1998) and the Examiner's Answer
(mailed Mar. 2, 1999) for a statement of the examiner's position and to the Brief (filed Jan.
15, 1999) and the Reply Brief (filed Apr. 30, 1999) for appellant’s position with respect to
the claims which stand rejected.
OPINION
Section 102 rejection over Nose
In the rejection of claims 2, 5, and 6 as being anticipated by Nose, the examiner
points to “kerfs” 94, 97 (Fig. 24) or “light-intercepting masks” 106, 109 (Fig. 26) as
“diffraction light selecting elements.” (Answer at 4.) Appellant disagrees (Brief at 11-13).
As described in the reference’s “Background of the Invention,” a prior art facsimile
apparatus (Figs. 1 and 2) used imaging lenses 7 , 7 , 7 , for conveying images from1 2 3
original document 5 to solid sensors 9 , 9 , 9 . Nose at col. 1, ll. 12-56. However, there1 2 3
were problems inherent in the manufacture and use of discrete imaging lenses. Id. at col.
3, ll. 27-68. Nose’s solution was to replace the discrete lenses of the prior art with zone
plates (e.g., Fresnel type). Id. at col. 4, ll. 1-42.
The structure shown in Figure 24 of Nose for imaging the original 89 comprises
means for intercepting light 91 through 91 , zone plates 92 , 92 , 92 , substrates 93, 961 4 1 2 3
secured together by adhesive 95, light-intercepting kerfs 94 -94 and 97 -97 , and sensors1 4 1 4
99 , 99 , and 99 . Id. at col. 10, ll. 34-45. The light-intercepting kerfs serve to block light1 2 3
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other than the (positive) first-order diffracted light, which would otherwise enter an adjacent
sensor group as stray light. Id. at col. 9, l. 53 - col. 10, l. 33. A similar apparatus is
described at column 10, line 54 through column 11, line 14, and shown in Figure 26, but
with light-intercepting masks 106, 109.
In arguments with regard to the scope of the claimed “numerical aperture limiting
member,” appellant offers one definition (Brief at 12), from the Handbook of Optics, for
“numerical aperture.” Appellant offers another definition in the Reply Brief (at 10-11) from
the McGraw-Hill Dictionary of Scientific and Technical Terms, which is substantially the
same as that we find in another reference. “Numerical aperture Optics. a measure
specifying the resolving power of a microscope, calculated by multiplying the refractive
index of the medium occupying the objective space by the sine of the angle between the
most oblique ray entering the objective and the optical axis.” Academic Press Dictionary of
Science and Technology, Harcourt, available at
http://www.harcourt.com/dictionary/def/7/0/4/5/7045800.html (Feb. 8, 2002).
However, appellant discloses several environments in which the numerical aperture
limiting member is put to use. In only one (Fig. 7) is the member, as louver 30, used within
a microscope optical system. Even there, louver 30 is not in a position to limit light
entering the objective lens (i.e., first lens group 96), and therefore cannot be a “numerical
aperture limiting member” in the terms of the definition offered in the Reply Brief. Further,
even in view of the broader Handbook of Optics definition (Exhibit A filed with the Brief),
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the disclosed member (30 or 33 in the instant figures) is not in a position to affect “the
slope angle of the marginal ray exiting the lens.” Rather, the member is in a position to
affect light rays incident upon an imaging element (e.g., instant Fig. 2).
Appellant’s disclosure (e.g., page 10, first full paragraph) indicates that the
“numerical aperture limiting member” is to be defined in somewhat broad terms. The
specification, at the bottom of page 8 through page 11, provides guidance with respect to
the scope of the claims. The paragraph bridging pages 9 and 10 defines the numerical
aperture limiting member in structural and functional terms: “the diffraction light flux of the
unrequired order incident on the NA [numerical aperture] limiting member 30 [Fig. 1] is
absorbed substantially by the light shielding layer 31, so that only a part of the diffraction
light flux of the unrequired order can be passed through the light shielding layer 31.”
In view of the record before us, we conclude that the broadest reasonable definition
of “numerical aperture limiting member” does not exclude the light-intercepting kerfs (Fig.
24) or light-intercepting masks (Fig. 26) as disclosed by Nose. Appellant further argues
(Reply Brief at 9-10) that the light-intercepting masks are not “arranged in series with the at
least one diffraction optical element,” as required by instant claim 2.
Claim 2 sets forth “at least one” diffraction optical element. Zone plate 103 (Fig. 26
of Nose) is a monolithic structure (see, e.g. col. 6, ll. 4-44) and could be considered a
single diffraction optical element. Alternatively, the zone plates 103 , 103 , 103 could be1 2 2
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considered as three diffraction optical elements. In either case, the claim 2 “at least one
diffraction optical element” reads on the one or the plurality of optical elements.
The claim 2 “numerical aperture limiting member” sets forth nothing different from
the Figure 26 structure comprised of substrate 104, 107, the four light-intercepting masks
106, and the four light-intercepting masks 109. We find the diffraction light selection
element to be arranged in series with respect to the light passing through zone plate 103
(or through zone plates 103 , 103 , 103 ) toward sensors 112. We also note the similarity1 2 2
with respect to, for example, appellant’s louver 30 (Figure 2) arranged in series with the
single diffraction lens 72 and imaging element 60.
Finally, we observe that although appellant argues about limiting numerical aperture
of a lens, instant claim 2 recites that the numerical aperture limiting member is for “limiting
numerical aperture of the optical system for the second diffraction light” (emphasis added).
The apparatus disclosed by Nose is designed to block light of orders other than the
desired first order from the image sensing elements. Thus, even if one were to use a
definition for “numerical aperture limiting member” narrower than that indicated by the
instant disclosure, blocking the “second diffraction light” in the Nose apparatus would limit
the “numerical aperture of the optical system” by virtue of absorption of the second
diffraction light within the system.
We thus are unpersuaded that the examiner’s finding of anticipation is erroneous
with respect to instant claim 2. Nor do we see any basis for appellant’s view that the
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numerical aperture limiting member is not “disposed near an imaging position of the
optical system” (Claim 5), or that the member does not comprise “a plurality of light
transmitting portions and a plurality of light screening portions which are arranged
alternately in one plane” (Claim 6). We sustain the rejection of claims 2, 5, and 6 under 35
U.S.C. § 102 as being anticipated by Nose.
Section 103 rejection over Hugle and Nose
Because we find that claims 2, 5, and 6 are anticipated by Nose, we sustain the
rejection of those claims under section 103 as being unpatentable over Hugle and Nose,
and consider Hugle to be merely cumulative in the rejection. A finding of anticipation
means that the claims are also obvious under 35 U.S.C. § 103, since "anticipation is the
epitome of obviousness." See, e.g., Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1548, 220 USPQ 193, 198 (Fed. Cir. 1983); In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644
(CCPA 1974).
As for the remainder of the claims, appellant argues that Hugle teaches a “field-
lens” array 48 for reducing cross-talk in the imaging system. The field lenses serve to
collimate the light. Because the undesired light “gets lost in the system” -- does not reach
the imaging plane -- appellant urges that the teachings of Nose would be inapplicable.
See Hugle at col. 9, ll. 13-45.
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We find appellant’s arguments convincing, and consider the proposed combination
to be not well founded. Nose deals with problems inherent in diffracted light which is
decidedly not collimated (e.g., not parallel); see Figures 4 and 5, with the accompanying
description. While the “diffractive elements” of Hugle might “introduce higher orders of light
which are unaffected by the field lenses” (Answer at 10), we consider the position to be
speculative in view of the objective teachings of the two references before us. Nor is there
sufficient evidence that combining “several lens arrays in series...to correct for the effect of
chromatic aberration” (Hugle at col. 9, ll. 36-37) would lead the artisan, in view of the
teachings of Nose, to replace or complement a field lens array as disclosed by Hugle.
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011,
1016, 154 USPQ 173, 177 (CCPA 1967)). We consider the references applied
insufficient to support the ultimate conclusion of prima facie obviousness, and cannot
sustain the section 103 rejection of claims 1, 3, 4, and 7-12.
CONCLUSION
The rejection of claims 2, 5, and 6 under 35 U.S.C. § 102 as being anticipated by
Nose is affirmed. The rejection of claims 1, 3, 4, and 7-12 under 35 U.S.C. § 103 as being
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unpatentable over Hugle and Nose is reversed, while the rejection of claims 2, 5, and 6
over Hugle and Nose is affirmed. The examiner’s decision in rejecting claims
1-12 is thus affirmed-in-part.
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No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-1656
Application No. 08/638,759
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MR. JAMES E. LEDBETTER, ESQ.
STEVENS, DAVIS, MILLER & MOSHER, L.L.P.
1615 L STREET, NW SUITE 850
P. O. BOX 34387
WASHINGTON DC 20043-4387