Ex Parte Lee

Board of Patent Appeals and Interferences

Sep 27, 2004

09550713 (B.P.A.I. Sep. 27, 2004)

-1-
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written for publication and is not binding precedent of the Board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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
______________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________________
Ex parte JONG-SOO LEE
______________________
Appeal No. 2003-1551
Application No. 09/550,713
______________________
HEARD: August 18, 2004
______________________
Before Smith, Jerry, Levy, and Blankenship, Administrative Patent
Judges.
Smith, Jerry, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-10, which constitute all the
claims in the application. A first amendment after final
rejection was filed on July 19, 2002, but was not entered by the
examiner. A second amendment after final rejection was filed on
October 29, 2002, and was entered by the examiner.
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The disclosed invention pertains to a method and
apparatus for use in a projection-display system.
Representative claim 1 is reproduced as follows:
1. In a projection-display system for receiving a first
light beam embodying a first image from a video device and for
enlarging said image to a second image to be embodied in a second
light beam adapted for projection onto a screen, said system
comprising:
a polarized beam splitter (PBS) for separating the first
light beam into a reflected S polarized light wave and a
transmitted P polarized light wave;
a delay means for creating a half wavelength delay between
the reflected S polarized light wave and the transmitted P
polarized light wave;
a direction-modifying means for changing the direction of
the transmitted P polarized light wave in such manner that it
becomes parallel to, and travel in the same direction as, the
reflected S polarized light wave; and
a condenser for condensing the reflected S polarized light
wave and the transmitted P polarized light wave;
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the improvement comprising: an improved PBS-and-delay device
(PDD), said PDD comprising an integrally-formed means for
separating the first light beam into a reflected S polarized
light wave and a transmitted P polarized light wave, and for
creating a half wavelength delay between the reflected S
polarized light wave and the transmitted P polarized light wave.
The examiner relies on the following references:
Mitsutake et al. (Mitsutake) 5,446,510 Aug. 29, 1995
Marcellin-Dibon et al. 5,900,973 May 04, 1999
(filed May 23, 1996)
The admitted prior art disclosed by appellant.
Claims 1-10 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Mitsutake in view of
the admitted prior art with respect to claims 1-3, 5 and 7-10,
and the examiner adds Marcellin-Dibon to this combination with
respect to claims 4 and 6.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
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rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the rejection as formulated by the examiner is not
supported by the evidence of record. Accordingly, we reverse the
examiner’s rejection. Using our authority under 37 CFR
§ 41.50(b), however, we enter a new ground of rejection of
independent claims 1, 7 and 9.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
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or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 41.37(c)(1)(vii)].
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We consider first the rejection of claims 1-3, 5 and 7-10
based on Mitsutake and the admitted prior art. With respect to
independent claims 1, 7 and 9, the examiner finds that Mitsutake
teaches the claimed invention except that Mitsutake does not make
use of a half-wave plate. The examiner notes that the admitted
prior art teaches that half-wave plates were well known in the
art. The examiner finds that it would have been obvious to the
artisan to use a half-wave plate in place of the quarter-wave
plate of Mitsutake [final rejection, page 3, incorporated into
answer at page 3].
With respect to independent apparatus claim 1, appellant
argues that the examiner failed to provide any reasonable
motivation for replacing the quarter-wave plate of Mitsutake with
a half-wave plate. Appellant argues that the examiner’s finding
of obviousness is simply conclusory and is not based on specific
evidence. With respect to independent method claims 7 and 9,
appellant argues that the examiner improperly used the same
reasoning as for apparatus claim 1, and that the examiner failed
to consider claims 7 and 9 as methods [brief, pages 10-16].
The examiner responds by explaining why the artisan would
have been motivated to combine the teachings of Mitsutake with
the admitted prior art [answer, pages 3-5]. Appellant responds
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that the examiner has not pointed to a single teaching,
suggestion or motivation in the prior art to make the necessary
modifications of Mitsutake that would arrive at the claimed
invention [reply brief, pages 2-5].
We do not sustain the examiner’s rejection of independent
claims 1, 7 and 9 because the examiner has failed to establish a
prima facie case of obviousness. Most importantly, the examiner
has identified a difference between Mitsutake and the claimed
invention, which in fact does not exist, and the examiner’s
proposed modification of Mitsutake to overcome this alleged
difference makes no sense. First, the examiner’s finding that
Mitsutake does not teach a half-wave plate is misplaced because
claims 1, 7 and 9 do not claim a half-wave plate. The claims
recite, instead, a half wavelength delay. Although Mitsutake
does in fact disclose a quarter-wave plate 27 in Figure 5, the
light beam Ls passes through the quarter-wave plate twice so that
the light beam Ls is in fact delayed by a half wavelength delay
as claimed. Since Mitsutake already performs the half wavelength
delay recited in the claimed invention, replacing the quarter-
wave plate of Mitsutake with a half-wave plate, as proposed by
the examiner, would render the Mitsutake device inoperative for
its intended purpose. Because the examiner has improperly
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focused his attention on the lack of a half-wave plate in
Mitsutake, the examiner’s complete reasoning in support of the
rejection makes no sense.
Since the examiner’s findings with respect to independent
claims 1, 7 and 9 fail to establish a prima facie case of
obviousness, we do not sustain the examiner’s rejection of these
claims or of claims 2, 3, 5, 8 and 10 which depend therefrom.
With respect to dependent claims 4 and 6, although these claims
are rejected using the additional teachings of Marcellin-Dibon,
Marcellin-Dibon does not overcome the deficiencies in the basic
rejection discussed above. Therefore, we also do not sustain the
examiner’s rejection of claims 4 and 6.
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-10 is reversed.
However, we make the following new rejection using our authority
under 37 CFR § 41.50(b).
Independent claims 1, 7 and 9 are rejected under 35
U.S.C. § 103(a) as being unpatentable over the collective
teachings of Mitsutake and the admitted prior art. With respect
to claim 1, a polarized beam splitter (PBS) reads on PBS 26 in
Figure 5 of Mitsutake. A delay means for creating a half
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wavelength delay reads on quarter-plate 27 and reflecting plate
28. Since beam Ls goes through quarter-plate 27 twice, a half
wavelength delay is created. A direction-modifying means reads
on prism 29 which changes the direction of beam Lp so that it is
parallel to the reflected S polarized light wave. Mitsutake does
not disclose a condenser for condensing the reflected S polarized
light wave and the transmitted P polarized light wave, but the
admitted prior art in Figure 1 of appellant’s application shows
that it is conventional in a projection-display system for a
condenser 15 to be used for condensing the S and P polarized
light waves. It would have been obvious to the artisan to
condense the S and P polarized light waves of Mitsutake for use
in a projection-display system as taught by the admitted prior
art.
The remaining portion of claim 1 recites that the PBS-
and-delay device (PDD) comprises an “integrally-formed” element.
Mitsutake teaches that the total reflection prism 29 may be
integrally formed with a rectangular prism, positioned next to
the total reflection prism of the polarizing beam splitter (PBS)
[column 7, lines 5-8]. We interpret this portion of Mitsutake as
suggesting to the artisan that the optical elements making up the
device of Figure 5 can be integrally formed. Therefore, we find
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that Mitsutake teaches the improvement portion of claim 1.
We note that at the oral hearing for this appeal,
appellant’s representative argued that the device in Figure 5 of
Mitsutake cannot be integrally formed and that the use of the
term integrally formed in Mitsutake was an error. We advised
appellant’s representative that on the written record before us
we would assume that the literal teachings of Mitsutake are
accurate. The question of whether Mitsutake fails to teach or
suggest what it literally discloses is a question of fact which
appellant is free to argue before the examiner. We are not
prepared to accept the bare assertions of appellant’s
representative that Mitsutake does not teach or suggest what it
specifically discloses.
With respect to method claims 7 and 9, the PBS 26 of
Mitsutake separates a first light beam into S and P polarized
light waves Ls and Lp. The quarter-wave plate 27 and reflection
plate 28 create a half-wavelength delay as claimed. Prism 29
changes the direction of the p polarized light wave as claimed.
The admitted prior art teaches condensing the S and P polarized
light waves as claimed. The improvement portion of claims 7 and
9 recites steps that would be performed if the device shown in
Mitsutake’s Figure 5 was integrally formed as suggested by
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Mitsutake at column 7, lines 5-8. Therefore, method claims 7 and
9 would have been obvious over the collective teachings of
Mitsutake and the admitted prior art for the reasons discussed
above.
We have limited our consideration to independent claims
1, 7 and 9. We leave it to the examiner to decide whether
similar rejections can be appropriately made for the dependent
claims.
In summary, we have not sustained the examiner’s
rejection of claims 1-10. We have entered a new rejection of
claims 1, 7 and 9 under 37 CFR §41.50(b).
This decision contains a new ground of rejection pursuant
to 37 CFR §41.50(b)(amended effective September 13, 2003, by
final rule notice 69 Fed. Reg. 49,960, (August 12, 2004), 1286
Off. Gaz. Pat. & Trademark Office 21 (September 7, 2004)). 37
CFR § 41.50(b) provides that “A new ground of rejection...shall
not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as
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to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or new
evidence relating to the claims so
rejected, or both, and have the
matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .
(2) Request that the proceeding be
reheard under § 41.52 by the Board
upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
REVERSED
37 CFR § 1.196(b)

JERRY SMITH )
Administrative Patent Judge )
) BORAD OF PATENT
)
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS/dpv
Appeal No. 2003-1551
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Robert E. Bushnell
Attorney At Law
Suite 300
1522 K Street NW
Washington, DC 20005-1202