Ex Parte King

Board of Patent Appeals and Interferences

Jun 1, 2007

10059242 (B.P.A.I. Jun. 1, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN KING
____________

Appeal 2007-1064
Application 10/059,242
Technology Center 2800
____________

Decided: June 1, 2007
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Before KENNETH W. HAIRSTON, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1 and 3-17. Claim 2 has been cancelled
and claims 18-23 have been withdrawn from consideration as draw to a non-
elected invention. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention generally relates to holographic data storage
and more specifically, to a method for apodizing or shaping an incident
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reference beam having a substantially uniform intensity profile on a region
of the holographic recording medium. An understanding of the invention
can be derived from a reading of exemplary independent claim 1, which is
reproduced as follows:
1. A method for apodizing an incident reference beam for a
holographic recording medium, comprising impinging the incident
reference beam on an apodizer and producing a modulated reference
beam having a substantially uniform intensity profile on a region of
the holographic recording medium, wherein the modulated reference
beam is off-axis from normal at a point in the region, the modulated
reference beam is converging or diverging at a point in the region and
further wherein the region comprises an overlap of the modulated
reference beam and an object beam.

The Examiner relies on the following prior art references:
Cowan US 4,469,407 Sep. 4, 1984
Chern US 5,007,690 Apr. 16, 1991
Kathman US 5,850,300 Dec. 15, 1998
Dhar US 6,103,454 Aug. 15, 2000
Hoffnagle US 6,295,168 B1 Sep. 25, 2001

The rejections as presented by the Examiner are as follows:
1. Claims 1, 3-8, and 13-16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chern and Cowan.
2. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chern and Cowan and further in view of Dhar.
3. Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chern and Cowan and further in view of Hoffnagle or
Kathman.
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Rather than reiterate the opposing arguments, reference is made to the
Briefs and the Answer for the respective positions of Appellant and the
Examiner.
We reverse.

ISSUE
To show that the Examiner erred in rejecting the claims under 35
U.S.C. § 103(a) (2004), Appellant’s arguments focus on the claimed
limitation related to a reference beam having “a substantially uniform
intensity profile on a region of the holographic recording medium” (Br. 4).
The issue turns on whether the combination of Chern with Cowan teaches or
suggests the claimed subject matter. Specifically, the issue is:
whether the prior art teachings disclose or suggest the claimed
subject matter including an apodizer that can produce a
substantially uniform profile on a region of the recording
medium.

FINDINGS OF FACT
Appellant’s claim 1 requires an apodizer that produces a modulated
reference beam from the impinging reference beam. The produced beam is
further required to have a substantially uniform intensity profile on a region
of the holographic recording medium, be off-axis from normal at a point in
the region of the medium, and be converging or diverging at a point in the
region. This arrangement is described as the solution to the problem of
unequal distribution of the illuminated spot on the recording medium when
the reference beam is of a convergent and/or divergent nature (Specification
6, ¶ 0015).
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Chern relates to a holographic data storage system (col. 1, ll. 6-11)
having an exposure system wherein collimated laser beam 68 is converted to
a divergent beam by lens 72 (Figure 8; col. 5, l. 66 through col. 6. l. 4).
Chern uses a Gaussian apodizer 74 in the divergent beam path for
directing the exposure beam to collimating lens 76 which produces a broad
beam 78 directed to screen 66 (Figure 8; col. 6, ll. 4-7).
Cowan discloses a laser beam apodizing filter for compensating the
Gaussian distribution of the laser beam and generating a substantially
uniform exposure (col. 2, ll. 14-18).
As depicted in Figure 1, Cowan interposes an apodizing filter in the
laser beam to even out the intensity of the beam between the center and the
edge area (col. 2, ll. 58-68). Thus a substantially “flat” intensity curve is
obtained on the laser beam as the beam exits the filter (col. 2, l. 68 through
col. 3, l. 5).

PRINCIPLES OF LAW
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, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), In
re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Moreover, in evaluating such references it is proper to take into account not
only the specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
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ANALYSIS
Appellant correctly points out that the apodizer in Cowan produces a
flat intensity profile only when the beam leaves the apodizer (Br. 4). We
also agree with Appellant that the apodizer of Cowan does not produce a
substantially uniform intensity profile at a point in the holographic storage
medium (Br. id.). While the beam leaving the apodizer may have uniform
intensity, it has no effect on the intensity profile of the beam on a region of
the holographic recording medium. In that regard, Appellant correctly
recognizes (Oral Hearing) the absence of any correspondence between the
uniform beam intensity provided by apodizer of Cowan and the geometry of
its imaging system.
Therefore, we disagree with the Examiner (Answer 8) that a uniform
intensity profile at a point in a region of the recording medium, which is
missing from Chern, may be discerned from Cowan. In fact, based on the
teachings of Chern and Cowan outlined supra, we find ourselves persuaded
by Appellant’s argument that there is nothing in Cowan to indicate that the
uniform intensity beam that leaves the apodizer will have a flat intensity
profile at the storage medium for a converging or diverging beam. Both
independent claims 1 and 13 require that modulated reference beam
produced by the apodizer have uniform intensity profile on a region of the
recording medium for an off-axis beam which is also converging or
diverging.
With respect to the rejection of claims 9-12 and 17, we note that the
Examiner further relies on Dhar and Hoffnagle or Kathman for the
additional features recited in the these dependent claims. However, the
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Examiner has not pointed to any additional teachings or convincing rationale
in modifying the combination of Chern and Cowan with the teachings of
these references that would have overcome the deficiencies of the applied
prior art as discussed above with respect to claim 1.

CONCLUSION OF LAW
On the record before us, we find that the Examiner’s rejection of
claims 1, 3-17 is not supported by a legally sufficient basis for holding that
the claimed subject matter would have been obvious within the meaning of
§ 103(a).
Therefore, in view of our analysis above, we cannot sustain the 35
U.S.C. § 103 rejection of independent claims 1 and 13, nor of their
dependent claims 3-8 and 14-16, over Chern and Cowan. Similarly, we do
not sustain the 35 U.S.C. § 103 rejection of claims 10-12 over Chern and
Cowan in combination with Dhar, nor of claims 9 and 17 over Chern and
Cowan in combination with Hoffnagle or Kathman.

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Application 10/059,242

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DECISION
The decision of the Examiner rejecting claims 1, 3-17 under 35 U.S.C.
§ 103 is reversed.

REVERSED

KIS

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