Ex Parte Lee et al

Patent Trial and Appeal Board

May 23, 2016

12728140 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121728,140 03/19/2010
758 7590 05/25/2016
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
FIRST NAMED INVENTOR
Chun-Sheu Lee
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
25520-16538 4756
EXAMINER
ELAHI, SHANE
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
05/25/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUN-SHEU LEE and JONG BURM PARK
Appeal2014-007624 1
Application 12/728,140
Technology Center 2400
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
STACY B. MARGOLIES, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) the Examiner's Final
Rejection of claims 1-3, 5-9, 11, and 12. Claims 4 and 10 are cancelled.
We have jurisdiction over the pending rejected claims under 35 U.S.C.
§ 6(b ).
We reverse.
1 An oral hearing was held May 16, 2016.
2 Appellants identify Lightspeed Genomics, Inc., as the real party in interest.
(App. Br. 1.)
Appeal2014-007624
Application 12/728,140
THE INVENTION
Appellants' disclosed and claimed invention is directed to synthetic
aperture optics (SAO) imaging. (Abstract.) Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An apparatus for performing synthetic aperture optics
(SAO) on a target including one or more objects, the apparatus
compnsmg:
a plurality of interference pattern generation modules (IPGMs ),
each IPGM configured to generate a pair of light beams
that interfere to generate a selective excitation pattern on
the target at a predetermined orientation and a
predetermined pitch;
a monolithic half-ring shaped structure holding the plurality of
IPGMs; and
an optical imaging module configured to optically image the
illuminated target at a resolution insufficient to resolve
the objects, the optical image of the illuminated target
being further processed using information on the
selective excitation pattern to obtain a final image of the
illuminated target at a resolution sufficient to resolve the
objects.
REJECTION
The Examiner rejected claims 1-3 and 5 under 35 U.S.C. § 103(a) as
being unpatentable over Hong et al. (US 2009/0061505 Al, published Mar.
5, 2009) and Murshid et al. (US 7,639,909 B2, issued Dec. 29, 2009). (Final
Act. 4--7.)
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Hong, Murshid, and Sawatari (US 3,780,217, issued Dec.
18, 1973). (Final Act. 7-8.)
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Appeal2014-007624
Application 12/728,140
The Examiner rejected claims 7-9 and 11under35 U.S.C. § 103(a) as
being unpatentable over Hong, Murshid and Schiwietz et al. (US
2007 /0014486 Al, published Jan. 18, 2007). (Final Act. 9-12.)
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Hong, Murshid, Schiwietz, and Sawatari. (Final Act. 12-
13.)
ISSUE ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositive issue: 3
Whether the combination of Hong and Murshid teaches or suggests
the independent claim 1 limitation, "a monolithic half-ring shaped structure
holding the plurality of IPGMs," and whether the combination of Hong,
Murshid and Schiwietz teaches or suggests the similar limitation recited in
independent claim 7. (App. Br. 3---6, 7-9.)
ANALYSIS
For the claim limitation at issue, the Examiner relies on the disclosure
in Hong of multiple interference pattern generation modules (IPGMs)
arranged to direct light patterns on a target. (Final Act. 3, Hong Fig. 7 A,
i-f 52.) The Examiner further relies on the disclosure in Murshid of an
apparatus for multiplexing in optical fiber communications in which one
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Mar. 31, 2014); the Reply
Brief (filed July 2, 2014); the Final Office Action (mailed Aug. 29, 2013);
and the Examiner's Answer (mailed May 7, 2014) for the respective details.
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Appeal2014-007624
Application 12/728,140
type of output forms a half ring pattern (Final Act. 5; Murshid Fig. 28, col.
16, 11. 52---66.) Appellants argue no support structure for the IPGMs is
illustrated in Figure 7 A of Hong, nor is any such structure otherwise referred
to in that reference. (App. Br. 4.) In regard to Murshid, Appellants argue
the ring-shaped output light patterns discussed do not pertain to any structure
for supporting light sources. (App. Br. 4--5.)
The Examiner responds by providing an annotated version of Figure
37 of Murshid, labeling a curved line on that figure with the claim language:
"monolithic half-ring shaped." (Ans. 13.) Appellants point out that there is
no basis in Murshid for so labeling this portion of the drawing, or
associating it with any structure supporting light sources. (Reply Br. 3--4.)
We are persuaded by Appellants' arguments. The Examiner has not
cited any portion of Hong or Murshid (or, with respect to claim 7, the
Schiwietz reference) that teaches or suggests the claim limitation at issue,
nor does the Examiner otherwise soundly articulate a basis for the rejections.
Therefore, on the record before us, we are constrained to find the Examiner
errs in rejecting independent claims 1 and 7.
CONCLUSION
For the reasons stated above, we do not sustain the obviousness
rejection of independent claim 1 over Hong and Murshid, or of independent
claim 7 over Hong, Murshid and Schiwietz.
We also do not sustain the obviousness rejections of claims 2, 3, and 5
over Hong and Murshid, of claim 6 over Hong, Murshid, and Sawatari, of
claims 8, 9 and 11 over Hong, Murshid and Schiwietz, or of claim 12 over
4
Appeal2014-007624
Application 12/728,140
Hong, Murshid, Schiwietz, and Sawatari, which claims depend from claims
1or7.
DECISION
The Examiner's rejection of claims 1-3, 5-9, 11, and 12 is reversed.
REVERSED
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