Ex Parte Krueger

Board of Patent Appeals and Interferences

Oct 22, 2008

10605492 (B.P.A.I. Oct. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RALF KRUEGER
____________

Appeal 2008-4239
Application 10/605,492
Technology Center 2800
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Decided: October 22, 2008
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Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of pending claims 1-3 and 8-13.1 (Examiner’s

1 Claims 4-7 have been canceled. (Amended Appeal Brief filed June 20,
2007, hereinafter “Br.,” 2).
Appeal 2008-4239
Application 10/605,492

Answer entered September 10, 2007, hereinafter “Ans.”). We have
jurisdiction pursuant to 35 U.S.C. § 6(b) (2002).
We REVERSE.
Appellant’s claimed invention is directed to an apparatus and method
for implementing phase-contrast or modulation-observation on microscopes
with a dynamically tiltable mounted modulator. (Spec. [0011]). Appellant
states that the presently claimed apparatus has the advantages of providing a
continuous phase shift during utilization of the microscope without the use
of a large number of different modulators. (Spec. [0009] and [0011]).
Claims 1, 11, 12, and 13, the independent claims on appeal, recite:
1. An apparatus for implementing phase-contrast or
modulation-contrast observation on microscopes with the aid of
a modulator arranged in each pupil plane in the observation
beam path and containing at least one layer modifying the phase
or amplitude, and of a stop arranged in the illumination beam
path, wherein the modulator is mounted dynamically tiltable
and wherein at least a portion of the at least one layer
modifying the phase or amplitude is transmissive.

11. An apparatus for implementing phase-contrast or
modulation-contrast observation on microscopes with the aid of
a modulator arranged in each pupil plane in the observation
beam path and containing at least one layer modifying the phase
or amplitude, and of a stop arranged in the illumination beam
path, wherein for phase shifting, optical polarization means in
combination with retardation plates are present and wherein the
modulator is mounted dynamically tiltable and at least a portion
of the at least one layer modifying the phase or amplitude is
transmissive.

12. An apparatus for implementing phase-contrast or
modulation-contrast observation on microscopes with the aid of
a modulator arranged in each pupil plane in the observation
beam path and containing at least one layer modifying the phase
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Application 10/605,492

or amplitude, and of a stop arranged in the illumination beam
path, wherein various modulators are arranged on a carrier in a
manner introducible into the beam path of the microscope and
are selectably mounted, dynamically tiltable individually or
dynamically tiltable together with the carrier, on that carrier and
wherein at least a portion of the at least one layer modifying the
phase or amplitude is non-reflective.

13. A method for implementing a defined phase shift in the
implementation of phase-contrast or modulation-contrast
observation on microscopes with the aid of a modulator
arranged in each pupil plane in the observation beam path and
containing at least one layer modifying the phase or amplitude,
and of a stop arranged in the illumination beam path of the
microscope, wherein the modulator is dynamically tilted and
wherein the at least one layer modifying the phase or amplitude
is transmissive.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Endou 5,777,783 Jul. 7, 1998
Kobayashi 6,057,894 May 2, 2000
Wilson 6,687,052 Feb. 3, 2004 (Sep. 13, 2001)

There are four grounds of rejection before us on appeal: (1) claims 1,
12, and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Endou; (2) claims 2, 8, 9, and 11 are rejected as being unpatentable over
Endou in view of Wilson; (3) claim 3 is rejected as being unpatentable over
Endou in view of Kobayashi; and (4) claim 10 is rejected as being
unpatentable over Endou in view of Kobayashi and further in view of
Wilson.
The principal dispute between the Examiner and Appellant is whether
Endou suggests that the modulator described therein may be mounted
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dynamically tiltable. The Examiner determined because Endou’s suggests
rotating the modulator, it would have been obvious to make the modulator of
Endou dynamically tiltable to allow for modulation contrast without having
to replace the modulator. Id.
Appellant contends that Endou does not suggest mounting the
modulator in a dynamically tiltable fashion, because Endou teaches rotation
for the purpose of adjusting the polarity of the contrast of the image not
modulation contrast, and rotation and tilting are two different operations.
(Br. 7, 11, and 12).

ISSUE
Based on the contentions of the Examiner and the Appellant, the issue
presented is: Has Appellant shown error in the Examiner’s determination
that Endou suggests mounting the modulator so as to be dynamically
tiltable?
We answer this question in the affirmative.

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence.

1. Appellant’s Specification states:
According to the present invention, in order to achieve a
defined phase shift from the zero-order diffraction to higher
diffraction orders, the modulator is mounted tiltably in the
plane conjugated with the objective exit pupil. In the context of
strip-shaped modulators, the tilt is preferably accomplished in
the direction of the modulator strips. By setting different tilt
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Application 10/605,492

angles, correspondingly different phase shifts can be
implemented. If the angular adjustment is performed
continuously, a continuous modification of the phase shift can
also be implemented.
(Spec. [0011]).

2. Endou states:
In observing a modulation contrast image, unlike in
observing a phase contrast image, it is necessary to rotate a
pupil modulator to adjust the polarity of the contrast of the
image. According to this embodiment, since the pupil
modulator slider is employed, the modulator can be easily
removed from the microscope main body and a whole unit of
the modulator can be exchanged with another one.
Since the pupil modulator 26b is detachably provided in the
main microscope housing 1, the size of the pupil modulating
section is reduced and the operability is improved.
(Col. 13, ll. 5-15).

3. Endou describes the position of the pupil modulator with respect to
the optical axis. (Col. 11, ll. 28-36).

PRINCIPLES OF LAW
“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). In KSR, the Supreme Court explained, “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, §103 likely
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bars its patentability.” Id. at 1740. However, the Court went on to state, “a
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” The Court further explained that “[a]lthough common sense
directs one to look with care at a patent application that claims as innovation
the combination of two known devices according to their established
functions, it can be important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” Id. at 1740-1741.

ANALYSIS
Appellant relies on similar arguments for all four grounds of rejection.
Therefore, we address all grounds of rejection together. After consideration
of both the Examiner’s and Appellant’s contentions, we agree with
Appellant that the presently claimed apparatus would not have been obvious
over Endou.
The Examiner contends that because Endou teaches rotation without
any reference to the axis about which the rotation occurs, Endou’s rotation
includes tilting. (Ans. 7). The Examiner reasons that the axis of rotation
could be perpendicular to the optical axis, which would adjust the
inclination, or tilt the modulator. Id. The Examiner determined that Endou
suggests mounting the modulator dynamically tiltable “for the purpose of
allowing for modulation contrast without having to remove the modulator
and replace it with another modulator.” (Ans. 4). However, the Examiner
fails to provide sufficient basis for this determination. Although Endou
discloses rotation of the modulator in order to adjust the polarity of the
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Application 10/605,492

contrast of the image (FF 2), Endou is silent as to rotation for the purpose of
adjusting the contrast of the image. The Examiner’s reasoning fails to
sufficiently explain how Endou’s teaching of rotating the modulator for
polarity purposes would suggest to one of ordinary skill in the art to mount
the modulator dynamically tiltable to provide modulation contrast. See KSR,
supra.
In addition, there is no persuasive evidence on the record that the
rotation suggested by Endou to adjust the polarity of the contrast of the
image would have been about an axis perpendicular to the optical axis,
particularly where Endou describes the position of the pupil modulator with
respect to the optical axis. (FF 3). Although we agree that “rotation”
depends on the axis about which the modulator is rotated, the Examiner fails
to provide sufficient reasoning as to why one of ordinary skill in the art
would have chosen rotation perpendicular to the optical axis, rather than
about the optical axis. Further, to the extent that the Examiner’s reasoning
relies on common sense, the basis for such a common sense rationale is not
present in Endou, and no other sufficient basis for the Examiner’s rationale
is identified in the rejection. See KSR, supra. Therefore, the Examiner’s
decision rejecting claims 1-3 and 8-13 is reversed.

CONCLUSION
For the foregoing reasons, Appellant has shown reversible error on the
part of the Examiner.

ORDER
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Application 10/605,492

The decision of the Examiner rejecting claims 1-3 and 8-13 under 35
U.S.C. § 103(a) is reversed.
REVERSED

PL initial:
sld

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