Ex parte May et al.

Board of Patent Appeals and Interferences

Aug 30, 1999

08110064 (B.P.A.I. Aug. 30, 1999)

Application for patent filed August 20, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL MAY,
GRAHAM J. WOODGATE, and
DAVID EZRA
__________
Appeal No. 1997-0502
Application 08/110,0641
__________
ON BRIEF
__________
Before THOMAS, KRASS, and GROSS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
This a decision on appeal from the examiner's final rejection of claims 1, 2, and 4
through 23.
Appeal No. 1997-0502
Application 08/110,064
2
Each independent claim 1 and 17 on appeal requires in part "a spatial light
modulator" or SLM.
The following references are relied on by the examiner:
Santilli et al. (Santilli) 3,989,971 Nov. 2, 1976
Dolizy 4,698,496 Oct. 6, 1987
Smits 5,059,854 Oct. 22, 1991
Claims 1, 2, and 4 through 23 stand rejected under 35 U.S.C. § 103. As evidence
of obviousness, the examiner presents Santilli in view of Smits as to claims 1, 2, 4 through
12, and 16 through 23, with the addition of Dolizy as to claims 13 through 15.
Rather than repeat the positions of the appellants and examiner, reference is made
to the Briefs and the Answer for the respective details thereof.
OPINION
We reverse both stated rejections.
Neither the image intensifier tube of Santilli nor that of Smits comprises the claimed
spatial light modulator. As indicated at column 1, lines 11 through 14 of Santilli, an "image
intensifier [tube] converts an optical input image to an electron image, and back to an
optical image while intensifying the original image." It is not apparent to us that there is
Appeal No. 1997-0502
Application 08/110,064
3
any structure in either Santilli or Smits which provides any light modulation in accordance
with the requirements of a spatial light modulator.
Moreover, we agree with the arguments presented by appellants in the Brief and the
Reply Brief that neither Santilli nor Smits separately or in combination teaches such a
spatial light modulator. We understand SLMs to function in the manner argued by
appellants in the Brief and Reply Brief. Additionally, the Reply Brief presents evidence that
spatial light modulators have a known special meaning in the field of electro-optics. SLMs
are a term of art. We note that appellants' disclosed invention as well the prior art
mentioned in the early pages of appellants' specification as filed in part gives examples of
spatial light modulators comprising liquid crystals as the basic light modulating element.
This is consistent with the basic SLM structures presented at the bottom of page 478 of
the Horner book attached to the Reply Brief.
Thus, the initial rejection of independent claims 1 and 17 and their respectively
noted dependent claims must be reversed.
Appeal No. 1997-0502
Application 08/110,064
4
Because Dolizy's image dissector tube does not cure the noted deficiencies with
respect to both Santilli and Smits, the separate rejection of claims 13 through 15 under 35
U.S.C. § 103 relying upon the three references must also be reversed. As such, the
decision of the examiner rejecting claims 1, 2, and 4 through 23 under 35 U.S.C. § 103 is
reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-0502
Application 08/110,064
5
Armand P. Boisselle
Renner, Otto, Boisselle & Sklar
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