Ex Parte Kim

Board of Patent Appeals and Interferences

Jun 23, 2008

10076075 (B.P.A.I. Jun. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BONG-GI KIM
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Appeal 2008-0869
Application 10/076,075
Technology Center 2600
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Decided: June 23, 2008
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Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-15, 17, and 18. Claims 2 and 16 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
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Appellant has invented an optical pickup device wherein a
holographic optical element (HOE) is formed on a surface of a beam splitter
to compensate for a deviation between optical axes of the first and second
light beams transmitted through the first surface (Spec. ¶ [0013]).
According to Appellant, using an HOE separately from a beam splitter
increases the cost of manufacturing and adds to the complexity of the device
(Spec. ¶ [0009]).
Claim 1 is representative of the claims on appeal and read as follows:
1. An optical pickup apparatus comprising:

a first light source to generate a first light beam;

a second light source to generate a second light beam whose
optical axis is parallel to the optical axis of the first light beam, the
second light source being disposed optically farther from a recording
medium than the first light source;

a photodetector to receive the first light beam and the second
light beam which are emitted from the first and second light sources,
respectively, and which are reflected from the recording medium and
performing photoelectric conversion;

an objective lens to focus the first light beam and second light
beam on the recording medium, the objective lens being disposed on
an optical path between the first and second light sources and the
recording medium; and

a beam splitter disposed on an optical path between the
objective lens and the photodetector, the beam splitter having a first
surface to reflect the first light beam and the second light beam toward
the objective lens and simultaneously transmitting the first light beam
and the second light beam, and a second surface on which a hologram
is formed to compensate for a deviation between optical axes of the
first and second light beams transmitted through the first surface,

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wherein the hologram is formed to diffract the first light beam
into a relatively more +l-order diffracted light beam and relatively less
residual light, and to diffract the second light beam into a relatively
more zero-order diffracted light beam and relatively less residual
light, and

wherein the optical axis of the first light beam is parallel to the
optical axis of the second light beam before the first and second light
beams are reflected by the beam splitter and after the first and second
light beams are reflected by the beam splitter.

The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Ono US 5,659,531 Aug. 19, 1997
Ando US 6,392,977 B2 May 21, 2002
Appellant’s Admitted Prior Art (APA) disclosed in ¶ [0004] and
Figure 1.

Claims 1, 3-15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ando in view of Ono and APA.
We make reference to the Briefs and Answer for Appellant’s and the
Examiner’s arguments. Only those arguments actually made by Appellant
have been considered in this decision. Arguments which Appellant could
have made but did not make in the Briefs have not been considered and are
deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).
We affirm.
ISSUE
The issue on appeal turns on whether under 35 U.S.C. § 103, the
combination of Ando with Ono and APA, as proposed by the Examiner,
teaches or suggests the claimed subject matter, and specifically, the claimed
arrangement of the hologram formed on the beam splitter.
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PRINCIPLES OF LAW
To reach a conclusion of obviousness under § 103, the Examiner bears
the burden of producing a factual basis supported by a teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed.
Cir. 1984).
Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA
1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739). The Court also said that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR, 127 S. Ct. at 1741.
“One of the ways in which a patent’s subject matter can be proved obvious
is by noting that there existed at the time of invention a known problem for
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which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
The KSR Court further recognized that “[w]hen there is a design need
or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” KSR, 127
S. Ct. at 1742. In such circumstances, “the fact that a combination was
obvious to try might show that it was obvious under § 103.” Id.

ANALYSIS
Initially, we note that Appellant does not dispute whether Ando
teaches all the claimed limitations except for a hologram formed on the
second surface of the beam splitter and parallel optical axis of the two light
beams before and after they are reflected by the beam splitter. In that
regard, Appellant asserts that both Ando and APA show the hologram
separate from the beam splitter (App. Br. 16).
Appellant’s arguments focus on the function of the hologram
disclosed in Ono and indicate that there is no suggestion to one of ordinary
skill in the art to use Ono’s hologram element 216 in the optical apparatus of
Ando since Ono does not correct the spherical aberration recognized in
Ando (App. Br. 17; Reply Br. 7). Appellant further asserts that, even if
combinable with Ando, Ono does not disclose or suggest that “a hologram is
formed to compensate for a deviation between optical axes of the first and
second light beams transmitted through the first surface,” as recited in claim
1 (App. Br. 16; Reply Br. 4).
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The Examiner relies on Ono for disclosing a hologram element
formed on a beam splitter in an optical head device and on APA for teaching
that the optical axis of the first light beam is parallel to the optical axis of the
second light beam before and after the beams are reflected by the beam
splitter (Ans. 5-6). To support the obviousness of the subject matter of claim
1, the Examiner points out that Ando teaches using a hologram for
compensating between the optical axes of the first and second light beams
while the placement of the hologram on the beam splitter is taught by Ono
(Ans. 6-7).
A review of Ono reveals that the reference teaches a hologram
element formed on a beam splitter (Fig. 11A, 15; col. 7, ll. 36-46 and col. 9,
ll. 15-27). In particular, the embodiment depicted in Figure 15 clearly shows
that beam splitter 218 has first and second surfaces, wherein a hologram
element 216 is formed on the second surface (col. 9, ll. 17-19). Ono
describes the benefits of using the hologram element to be related to
focusing and detecting focusing error signals (col. 2, ll. 41-48; col. 7, ll. 40-
46; col. 9, ll. 48-51).
We disagree with Appellant that one of ordinary skill in the art would
not have combined the teachings of Ando with those of Ono and APA. The
benefits of using the hologram in correcting spherical aberration as well as
focusing and tracking error signal detection are described in Ando and Ono
to be the result of adding a hologram element to the signal path to the
detector and specifically, on the second surface of the beam splitter. We
observe that Appellant also recognizes the deviation between optical axes of
the light beams in the context of focusing problem (Spec. ¶ [0005]).
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Appellant specifically points to using a hologram element in the
conventional optical pickup devices depicted in Figure 1 to compensate for a
deviation between the optical axes by diffracting the two light beams and
“thereby focusing the first light beam 13a and the second light beam 15a at a
predetermined focal point on the photodetector 29” (Spec. ¶ [0008]).
Therefore, the mere presence of a hologram element, such as the hologram
element in Ando and Ono, ensures that the deviation between the optical
axes is compensated for and thus, proper focusing is achieved.
Therefore, we find that Ono’s teaching that forming the hologram
element on the beam splitter helps with the desired focusing level and
tracking error signal detection while the integral structure of the beam
splitter and the hologram results in a more compact and light weight optical
head device provides proper suggestion in Ono for the proposed
combination. (See Ono, Abstract). We further observe that the solution
suggested by Ono for reducing complexity by forming the hologram on the
beam splitter is also consistent with Appellant’s disclosure regarding the
need for a lower cost optical pickup apparatus when a hologram is used
separately from the beam splitter (Spec. ¶ [0009]).
Based on our findings above with respect to Ando and Ono and
consistent with the KSR holding, the proposed combination provides an
obvious solution for a known problem, which is among the predictable
solutions available to one of ordinary skill in the art. Thus, we find that
Ono’s hologram element formed on the beam splitter is being used for
nothing more than its intended purpose of providing better focusing with
predictable results of compensating for a deviation between the optical axes
of the two light beams and focusing the error signal.
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CONCLUSION
In view of our analysis above, we find that the teachings of Ando in
combination with Ono and APA, when considered as a whole, support the
Examiner’s obviousness rejection of claim 1. Appellant has not presented
any substantive arguments directed separately to the patentability of claims
3-15, 17, and 18 (App. Br. 18), allowing these claims to fall with the
representative independent claim 1. See In re Young, 927 F.2d at 590. Thus,
we sustain the 35 U.S.C. § 103(a) rejection of claims 1, 3-15, 17, and 18
over Ando, Ono, and APA.

ORDER
The decision of the Examiner is affirmed.
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

KIS

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