Ex Parte Levola

Board of Patent Appeals and Interferences

Nov 19, 2009

11202653 (B.P.A.I. Nov. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte TAPANI LEVOLA
________________

Appeal 2009-010529
Application 11/202,653
Technology Center 2800
________________

Decided: November 20, 2009
________________

Before LEE E. BARRETT, LANCE LEONARD BARRY, and DEBRA K.
STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-010529
Application 11/202,653

2
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner's rejection of claims 1-3, 5-9, 17, 18, 20, 23-25, and 27-29.1 We
have jurisdiction under 35 U.S.C. § 6(b) (2008).
We REVERSE.

STATEMENT OF THE CASE
According to Appellant, the invention relates to a diffractive optics
method that uses a plurality of diffractive elements for expanding the exit
pupil of a display for viewing. (Spec. 1:7-9).

Exemplary Claim
1. An optical device comprising:

a substrate of optical material having a first surface and an opposing
second surface;

a first diffractive element disposed on the substrate configured to
receive a light beam;

a second diffractive element disposed on the substrate in relationship
with the first diffractive element and having substantially the same grating
line orientation as the first diffractive element; and

an intermediate diffractive element disposed between the first and the
second diffractive elements, wherein

the first diffractive element is configured to diffract at least part of the
received light beam within the first and second surfaces for providing a

1 The Examiner rejected claims 1-31 in the Final Rejection mailed October
22, 2007, under 35 U.S.C. § 112, first paragraph (See Final Rejection at 3).
However, the Examiner withdrew the 35 U.S.C. § 112, first paragraph
rejection of claims 1-31 in the Examiner's Answer mailed January 14, 2009.
(See Exam. Ans. 2-3 and 7).
Appeal 2009-010529
Application 11/202,653

3
diffracted light component to the intermediate diffractive element in an
incident direction substantially,

the intermediate diffractive element is configured to couple by
diffraction substantially between the first and second surfaces at least part of
the diffracted light component for providing a coupled diffracted light
component to the second diffractive element, and

the second diffractive element is configured to couple at least part of
the coupled diffracted light component to exit the substrate by diffraction in
the second diffractive element, wherein the intermediate diffractive element
has a substantially periodic pattern composed of substantially linear
elements along a pattern direction for producing conical diffraction.

Prior Art
Niv US 2003/0067685 A1 Apr. 10, 2003

Amitai US 6,580,529 B1 Jun. 17, 2003

Examiner's Rejections
1. The Examiner rejected claims 1-3, 5-9, 17, 18, 20, 23-25, and
28 under 35 U.S.C. § 103(a) as unpatentable over Amitai.
2. The Examiner rejected claims 27 and 29 under
35 U.S.C. § 103(a) as unpatentable over Amitai and Niv.

THE § 103(a) REJECTION OVER AMITAI
Claims 1-3, 5-9, 17, 18, 20, 23-25, and 28
Appellant argues the Examiner has admitted Amitai does not disclose
the recited limitation that the second diffractive element has substantially the
same grating line orientation as the first diffractive element (App. Br. 12).
Appellant argues Amitai discloses an “odd method” whereas their invention
Appeal 2009-010529
Application 11/202,653

4
uses an “even method” (App. Br. 13-15). Appellant argues "if the grating
lines of gratings H1 and H3 are made parallel to each other in Amitai et al.,
the system obviously will not work" (emphasis omitted) (App. Br. 15).
Further, Appellant argues the Examiner did not provide proof grating line
orientation does not differentiate the properties and function of the optical
device and is an obvious matter of design choice to one skilled in the art to
design it to be the same or not as desired (App. Br. 16).
The Examiner admitted "Amitai does not teach explicitly that the
grating lines orientations for the first diffractive element H1 is the same as
the second diffractive element H3" (Ans. 4). However, the Examiner
concluded (1) "the optical device, including the first and second diffractive
elements (H1 and H3) and the intermediate diffractive element (H2) function
exactly the same as the optical device depicted in the claims"; (2) "[t]he
feature concerning the grating line orientation therefore does not seem to
differentiate instant application from the prior art and does not seem to
provide any unexpected result"; and (3) "[i]n this case, since the grating lines
orientation whether being the same or not (between the first and second
diffractive elements) does not differentiate the fundamental properties and
function of the diffractive elements and optical device, … it then becomes an
obvious matter of design choice to one skilled in the art to make the
diffractive elements have desired relative line orientations" (Ans. 4-5).
Further, the Examiner found (1) "[t]he cited reference does not give
any explicitly disclosure concerning the line orientation of the diffractive
elements," and (2) [i]f the direction of the lines or shade of the H1 to H3
diffractive elements in figures represents the grating line orientation, then
Appeal 2009-010529
Application 11/202,653

5
from Figures 5 and 6 one can deduce that the grating line orientation of H1
and H3 are the same since they have the same slanted lines" (Ans. 12).

ISSUE
Has Appellant shown the Examiner erred in finding Amitai teaches or
suggests a second diffractive element having substantially the same grating
line orientation as the first diffractive element?

PRINCIPLES OF LAW
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) which holds
the question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, and (3) the
level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).

FINDINGS OF FACT
1. Amitai discloses "FIG. 5 is a side view, diagrammatically illustrating
a holographic visor display based on a planar configuration"
(Amitai, col. 3, ll. 4-5).

Appeal 2009-010529
Application 11/202,653

6
ANALYSIS
Based on our review of Amitai, we find Amitai does not indicate that
the slanted lines shown on elements H1 and H3 are grating lines. Further,
we find FIG. 5 is a side view of a holographic visor (See FF 1). We also
find one of ordinary skill in the art would have recognized that it is
customary to utilize cross-hatching when illustrating various views of
objects.
As (1) there is no indication in Amitai that the slanted lines shown on
H1 and H3 in FIG. 5 are grading lines, and (2) the slanted lines shown on H1
and H3 in FIG. 5 of Amitai could be cross-hatching, we find Amitai does not
teach or suggest "a second diffractive element disposed on the substrate in
relationship with the first diffractive element and having substantially the
same grating line orientation as the first diffractive element," as recited in
exemplary claim 1 (App. Br. 20, Claims App'x).
Indeed, we find it would require speculation on our part to find the
lines shown in Figure 5 are grating lines. We decline to speculate. We
further find that a person of ordinary skill in the art would need to employ
more than inferences and creative steps to bridge the gap between cross-
hatching in a figure and grating lines.
We further find that the Examiner has not made a prima facie case
that the orientation of grating lines does not affect the properties and
function of the optical device or that such orientation is a design choice.
Independent claims 17 and 23 are commensurate in scope with
exemplary claim 1, as claims 17 and 23 similarly recite "a second diffractive
element disposed on the substrate in relationship with the first diffractive
element and having substantially the same grating line orientation as the first
Appeal 2009-010529
Application 11/202,653

7
diffractive element" (App. Br. 25 and 28, Claims App'x). Thus, Appellant
has persuaded us of error in the Examiner's conclusion of obviousness
regarding (1) independent claim 1, and claims 2, 3, and 5-9 which depend
therefrom; (2) independent claim 17, and claims 18 and 20 which depend
therefrom; and (3) independent claim 23, and claims, 24, 25, and 28 which
depend therefrom. Accordingly, we reverse the Examiner's rejection of
independent claims 1-3, 5-9, 17, 18, 20, 23-25, and 28.

THE § 103(a) REJECTION OVER AMITAI AND NIV
Claims 27 and 29
Claims 27 and 29 depend from independent claim 23 (App. Br. 30,
Claims App'x). Thus, for the reasons discussed above with regard to
independent claim 23, we also reverse the Examiner's rejection on claims 27
and 29.

CONCLUSION
Based on the findings of facts and analysis above, Appellant has
shown the Examiner erred in finding Amitai teaches or suggests a second
diffractive element having substantially the same grating line orientation as
the first diffractive element as recited in independent claims 1, 17, and 23.
Accordingly, Appellant has shown the Examiner erred in rejecting (1)
claims 1-3, 5-9, 17, 18, 20, 23-25, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Amitai and (2) claims 27 and 29 under 35 U.S.C. § 103(a)
as unpatentable over Amitai and Niv.
Appeal 2009-010529
Application 11/202,653

8
DECISION
We reverse the Examiner's rejection of (1) claims 1-3, 5-9, 17, 18, 20,
23-25, and 28 under 35 U.S.C. § 103(a) as unpatentable over Amitai, and (2)
claims 27 and 29 under 35 U.S.C. § 103(a) as unpatentable over Amitai and
Niv.

REVERSED

rwk

WARE FRESSOLA VAN DER SLUYS & ADOLPHSON, LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P O BOX 224
MONROE CT 06468