Ex Parte Millington

Board of Patent Appeals and Interferences

Jun 18, 2008

10169502 (B.P.A.I. Jun. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROGER BRADLEY MILLINGTON
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Appeal 2008-1969
Application 10/169,502
Technology Center 1700
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Decided: June 18, 2008
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Before EDWARD C. KIMLIN, CATHERIN Q. TIMM, and KAREN M.
HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-3, 5-9, and
11-25. Claim 1 is illustrative:
1. A holographic sensor which comprises a thin film polymer matrix
that undergoes a change in response to a substance to be sensed, the matrix
comprising within its volume a set of two or more holographic recordings,
each recording providing a holographic image when the sensor is
illuminated, wherein the presence or appearance of each image is visible to
the eye as a function of the response of the sensor to the substance to be
Appeal 2008-1969
Application 10/169,502

sensed, and the images provide the dynamic range of the sensor, and
wherein the sensor provides, in the absence of the substance, a first
holographic image that is visible and a second holographic image that is
invisible, and wherein, as a consequence of a wavelength shift in the
presence of the substance, the first holographic image is invisible and the
second holographic image is visible.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Milligan 3,917,453 Nov. 4, 1975
Hochstrasser 4,059,407 Nov. 22, 1977
Koike 5,401,667 Mar. 28, 1995
Lowe 5,989,923 Nov. 23, 1999
Appellant's claimed invention is directed to a holographic sensor
which comprises a thin film polymer matrix that undergoes a change in
response to a substance that is sensed by the sensor. The matrix comprises
two or more holographic recordings which provide a holographic image
when illuminated. In the absence of the substance to be sensed, a first
holographic image is visible whereas a second holographic image is
invisible. On the other hand, due to a wavelength shift in the presence of the
substance to be sensed, the first holographic image is invisible and the
second holographic image is visible.
Appealed claims 1-3, 5, 7-9, 13-23, and 25 stand rejected under
35 U.S.C. 102(e) as being anticipated by Lowe. The appealed claims also
stand rejected under 35 U.S.C. 103(a) as follows:
(a) claims 3, 6, and 25 over Lowe in view of Hochstrasser,

(b) claim 7 over Lowe in view of Koike,

(c) claims 11, 12, and 24 over Lowe in view of Milligan.

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Appeal 2008-1969
Application 10/169,502

We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we find ourselves in agreement
with Appellant that the Examiner's rejections are not supported by the prior
art evidence relied upon.
The Examiner's § 102 rejection over Lowe is based, in large part, on
Appellant's Specification disclosure that "[a] sensor of the invention may be
constructed and used in the manner generally described in WO-A-95/26499
or WO-A-99/63408" (Spec. 3:10). The Examiner also points to the
following disclosure in Lowe:
More than one hologram may be supported on, or in, a
sensor. Means may be provided to detect the, or each,
variation in radiation emanating from, and having
interacted with, the or each hologram, arising as a result
of a variation in the, or each, optical characteristic. The
holographic elements may be dimensioned and arranged
so as to sense two independent events/species and affect
simultaneously, or otherwise, radiation in two different
ways.

According to the Examiner, the cited "disclosure clearly
indicates that there is an initial visible hologram displayed when
the sensor is not exposed to a target species and a second
holographic image that is not apparently visibly present or is
invisible prior to exposure" (Ans. 5, second para.).
Based on Appellant's Specification disclosure and the Lowe
disclosure regarding more than one hologram being on or in a
sensor, it is apparently the Examiner's position that since
Appellant's and Lowe's sensors are substantially identical in
structure, they must inherently share the same properties and
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Appeal 2008-1969
Application 10/169,502

functions. However, while Appellant acknowledges that the
publication cited in the Specification provide general teachings for
constructing the claimed sensor, the publications do not disclose
"the preparation of a sensor with multiplexed holographic images"
that have the claimed visible and invisible characteristics (Reply
Br. 6, second para.).1
Accordingly, we agree with Appellant that although Lowe
discloses that more than one hologram may be supported on the
sensor and that holographic elements may be dimensioned and
arranged so as to sense two independent events/species, it does not
necessarily follow that the sensor of Lowe comprises the presently
claimed first and second holographic images whereby the first
image is visible and the second image is invisible in the absence of
the substance to be sensed, and wherein the first and second
images become invisible and visible, respectively, in the presence
of the substance. Lowe provides no disclosure of a sensor having
such properties and the Examiner has not provided a sufficient
factual basis to reasonably conclude that the sensor of Lower
necessarily or inherently possesses such characteristics.
Hochstrasser, Koike and Milligan, additionally cited by the
Examiner in combination with Lowe to support separate § 103
rejections, do not remedy the basic deficiency of Lowe discussed
above.

1 Appellant and the Examiner agree that the disclosure of Lowe is
substantially the same as the disclosure of WO '499.
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Appeal 2008-1969
Application 10/169,502

Accordingly, based on the foregoing, we are constrained to
reverse the Examiner's rejections.
REVERSED

cam

HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
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