Ex Parte Lipson

Board of Patent Appeals and Interferences

Sep 24, 2007

10756352 (B.P.A.I. Sep. 24, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTHEW LIPSON
____________

Appeal 2007-2680
Application 10/756,352
Technology Center 1700
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Decided: September 24, 2007
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1, 6-22, 25, and 26. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
INTRODUCTION
Appellant discloses a method of coating the periphery of an optical
element such that the peripheral coating has a sharply defined border
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Application 10/756,352

between the center aperture and the coated periphery, and the peripheral
coating protects the adhesive holding the optical element in its holder from
UV light (Specification ¶ [0007]).
Claims 1 and 26 are illustrative:
1. A method comprising:

(a) holding an optical element comprised of calcium
fluoride so that a ring-shaped, peripheral portion of a face surface of
incidence of the optical element is covered and a circular, central
portion of the surface of the optical element is exposed;

(b) providing a first coating on the central portion of the
face surface of incidence of the optical element;

(c) releasing the optical element from being held;

(d) providing a second coating over the central and
peripheral portions of the face surface of incidence of the optical
element; and

(e) substantially completely removing the first and
second coatings from the central portion of the face surface of
incidence of the optical element, whereby the central portion of the
face surface of incidence forms a clear aperture.

26. A method, comprising:

(a) masking an optical element made from calcium
fluoride so that a peripheral portion of a face surface of incidence of
the optical element is covered and a central portion of the face surface
of incidence of the optical element is exposed;

(b) providing a first coating on the central portion of the
face surface of incidence of the optical element;

(c) unmasking the optical element;

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(d) providing a second coating over the central and
peripheral portions of the face surface of incidence of the optical
element; and

(e) removing the first and second coatings from the
central portion of the face surface of incidence of the optical element
to form a clear aperture.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Elmore US 4,315,044 Feb. 9, 1982
Daniels US 4,619,504 Oct. 28, 1986
Vacha US 5,714,196 Feb. 3, 1998
Haga US 5,989,628 Nov. 23, 1999
Bauer US 6,097,536 Aug. 1, 2000
Beavers US 6,106,889 Aug. 22, 2000
Masuda US 6,248,819 B1 Jun. 19, 2001
Kato US 2001/0043320 A1 Nov. 22, 2001
Ikeda US 2002/0098257 A1 Jul. 25, 2002
Bell US 6,773,746 B1 Aug. 10, 2004

The rejections as presented by the Examiner are as follows:
1. Claims 1, 7, 12, 13, 17-19, 22, 25, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bauer in view of Kao and
Daniels.
2. Claims 6-10 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bauer in view of Kato, Daniels and Beavers.
3. Claims 6, 7, 10, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bauer in view of Kato, Daniels and Haga.
4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bauer in view of Kato, Daniels, Haga and Ikeda.
5. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bauer in view of Kato, Daniels, Haga and Vacha.
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6. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bauer in view of Kato, Daniels and Bell.
7. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bauer in view of Kato, Daniels, Haga and Masuda.
8. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bauer in view of Kato, Daniels, Haga, Masuda and Elmore.
The Examiner contends motivation is provided explicitly from the
references for the combinations noted above (Answer 4-17). The Examiner
further contends that both Kato and Daniels are in the same field of endeavor
as Appellant’s claimed invention (Answer 16).
Appellant separately argues independent claims 1 and 26, and dependent
claims 6-22 and 25.

OPINION
CLAIMS 1 AND 26
Appellant argues that Kato and Daniels are non-analogous art because
they are neither in the same field of endeavor as Appellant’s claimed
invention, nor reasonably pertinent to the problem Appellant was trying to
solve (Br. 13-16). Appellant argues that there is no motivation to combine
Bauer, Kato and Daniels absent impermissible hindsight (Br. 16-17).
Appellant further argues that the Examiner’s reasoning provided in support
of the combination of Bauer in view Kato and Daniels amounts to an
“obvious to try” rationale (Br. 17).
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We have considered all of Appellant’s arguments1 and are
unpersuaded for the reasons below.
Generally, one of ordinary skill in the art can look in the same or
different field of endeavor when combining prior art teachings. KSR Intl.
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)
(stating “When 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”). The field of endeavor is determined by
considering applicant’s full disclosure (e.g., written description and claims)
and weighing the full disclosure from the vantage point of the common
sense likely to be exerted by one of ordinary skill in the art in assessing the
scope of the endeavor. In re Bigio, 381 F.3d 1320, 1325-27, 72 USPQ2d
1209, 1212-13 (Fed. Cir. 2004). Moreover, “[i]f a reference disclosure has
the same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection.” In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir.
1992).
Appellant claims a method of coating a calcium fluoride optical
element to form a peripheral coating on the optical element (claims 1 and
26). Appellant discloses that the “Field of Invention” is “. . . a method . . .
for forming a clear aperture on an optical element held in an optical system”

1 Appellant copies independent claims 1 and 26 and states that none of the
applied references, alone or in combination, teach or suggest the features of
claims 1 and 26. “A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim”
37 C.F.R. § 41.37(c)(1)(vii) (2006). In accordance with the aforementioned
rule, we have not treated Appellant’s mere copying of claims 1 and 26 in the
Brief as an argument.
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(Specification ¶ [0001]). Appellant discloses that the coating method is
needed to “define a sharp border for the clear aperture” (i.e., no peripheral
coating on the clear aperture obscuring the light transmission) (Specification
¶¶ [0006] to [0007]).
From the above disclosures and the claims, we find Appellant’s field
of endeavor includes methods of coating optical elements. Bigio, 381 F.3d
at 1325-27, 72 USPQ2d at 1212-13. Appellant’s argument that the field of
endeavor should be limited to forming peripheral coatings on calcium
fluoride optical elements so as to leave a clear aperture is too narrow a field
of endeavor in light of Appellant’s full disclosure and the common sense
exerted by one of ordinary skill in the art having read Appellant’s disclosure.
Id.
Moreover, we find that the purpose of Appellant’s claimed invention
(i.e., the problem to be solved) is maintaining a clear aperture while
providing a peripheral coating having a “sharp border” (i.e., sharply defined
borders). Clay, 966 F.2d at 659, 23 USPQ2d at 1061.
Kato is directed to forming a TiO2, UV light absorbing coating on
fluorite (i.e., calcium fluoride) optical elements (Kato ¶¶ [0063], [0064],
[0087]).
Daniels discloses forming a coating on an optical element by applying
a removable adhering substance (i.e., a first coating) having a particular
design and applying an antireflective coating (i.e., a second coating) over the
removable adhering substance (i.e., first coating) (Daniels, col. 3, ll. 52-68).
Daniels further discloses that the first coating is removed to leave a void on
the optical element (Daniels, col. 3, ll. 60-61, 67-68; col. 4, ll. 1-2). Daniels
discloses that the prior art masking methods that leave a gap between the
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mask and the optical element (i.e., the mask is not adhered to the surface of
the optical element as is done in Daniels’ method) are disadvantageous
because “the marking will not be sharply defined at the edges thereof” (i.e.,
some of the peripheral coating will travel through the gap between the mask
and the optical element and deposit on the clear aperture of the optical
element) (Daniels, col. 1, ll. 64-68).
From Kato’s and Daniels’ disclosures, it is evident that both are in the
same field of endeavor as Appellant’s claimed invention. Kato and Daniels
are directed to forming coatings on optical elements, which is the same as
Appellant’s field of endeavor. Moreover, it is clear from Kato’s and
Daniels’ disclosures that both are reasonably pertinent to the problem to be
solved by Appellant (i.e., providing an optical element with a coating with
sharp borders and a clear aperture). Accordingly, Appellant’s non-
analogous art arguments are not persuasive.
Regarding Appellant’s impermissible hindsight and “obvious to try”
arguments, the Examiner has provided motivation directly from the
references for combining Kato’s step of coating the periphery of an optical
element and Daniels’ method of coating to form sharply defined edges with
Bauer’s process of peripherally coating optical element (Answer 5 and 7).
In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457-58 (Fed. Cir.
1998).
Furthermore, when 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. KSR, 127 S. Ct. at 1740, 82 USPQ2d at
1396. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability. Id. For the same reason, if a technique
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has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. Often, it will be
necessary for a Court to look to interrelated teachings of multiple patents;
the effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue. Id. To facilitate review, this analysis should be made
explicit. Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336-37 (Fed. Cir. 2006).
From the foregoing, design incentives to form a clear aperture and a
peripheral coating with a sharp border on an optical element, would have
prompted one of ordinary skill in the art, seeking to form Bauer’s optical
element with Bauer’s peripheral UV absorbing coating, to look in either the
same field of endeavor or different one. KSR, 127 S. Ct. at 1740, 82
USPQ2d at 1396. In the present case, one of ordinary skill would have been
prompted to look to Kato’s and Daniels’ disclosures for relevant coating
techniques to achieve the above stated goals in forming the peripheral
coating on Bauer’s optical element. Kato and Daniels disclose techniques to
form a coating on an optical element having a more sharply defined border
and to prevent coating the aperture of the optical element (Daniels, col. 1, ll.
64-68; Kato ¶ [0064]).
Moreover, there is nothing unpredictable in the combination of
Daniels’ coating techniques to produce a more sharply defined border and
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Kato’s limiting the coating to the peripheral regions to provide a clear
aperture so as to increase UV light transmission through the aperture with
Bauer’s optical element coating method. Id. The combination of Daniels
and Kato with Bauer predictably uses prior art techniques (masking, coating
and removing the mask) according to their established functions (i.e.,
masking to provide a coating with a more sharply defined border). Id.
In fact, making such a combination would have been desirable
because it produces coatings on optical elements having sharply defined
borders and optical elements with increased light transmission and decreased
contamination as disclosed by Daniels and Kato (Daniels, col. 1, ll. 64-68;
Kato ¶¶ [0002], [0064]).
From the foregoing, we affirm the Examiner’s § 103(a) rejection of
argued claims 1 and 26.

DEPENDENT CLAIMS 6-22 AND 25
Various combinations of dependent claims 6-22 and 25 were rejected
over different combinations of the applied prior art noted above in our
presentation of the Examiner’s rejections. Appellant has not provided
arguments specific to any of the various rejections applied to dependent
claims 6-22 and 25. Rather, Appellant broadly argues that the various
secondary references are non-analogous art because they are not in the same
field of endeavor and are not reasonably pertinent to the problem to be
solved by Appellant (Br. 18). Appellant further argues that there is no
reason to combine the secondary references with Bauer, Kato and Daniels
absent impermissible hindsight (Br. 19).
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We have considered all of Appellant’s arguments and not persuaded
for the reasons below.
Regarding the non-analogous art argument, Appellant has not argued
how any specific reference of the applied prior art is not in the same field of
endeavor or reasonably pertinent to the problem to be solved. Based upon
our review of the applied prior art, we find the applied prior art to be either
in the same field of endeavor or reasonably pertinent to the problem to be
solved.
Regarding Appellant’s lack of motivation argument, the Examiner has
provided reasons for the various combinations (Answer 4-16). Appellant’s
broadly stated argument is not a sufficient rebuttal of the Examiner’s
specific motivation determination.
For the above reasons, we also affirm the following rejections: (1)
claims 7, 12, 13, 17-19, 22, and 25 under § 103(a) over Bauer in view of
Kato and Daniels, (2) claims 6-10 and 13 under § 103(a) over Bauer in view
of Kato, Daniels and Beavers, (3) claims 6, 7, 10, 13, and 14 under § 103(a)
over Bauer in view of Kato, Daniels and Haga, (4) claim 11 under § 103(a)
over Bauer in view of Kato, Daniels, Haga and Ikeda, (5) claim 15 under §
103(a) over Bauer in view of Kato, Daniels, Haga and Vacha, (6) claim 16
under
§ 103(a) over Bauer in view of Kato, Daniels and Bell, (7) claim 20 under
§ 103(a) over Bauer in view of Kato, Daniels, Haga and Masuda, and (8)
claim 21 under § 103(a) over Bauer in view of Kato, Daniels, Haga, Masuda
and Elmore.
DECISION
The Examiner’s decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

tf/ls

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