Ex Parte Naya et al

Board of Patent Appeals and Interferences

Feb 16, 2010

10053585 (B.P.A.I. Feb. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MASAYUKI NAYA, TAKASHI KUBO,
TAKASHI ITO, and YOSHIMITSU NOMURA
__________

Appeal 2009-013054
Application 10/053,585
Technology Center 1600
__________

Decided: February 16, 2010
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a surface
plasmon resonance measuring chip. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

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Statement of the Case
Background
“In metals, if free electrons are caused to vibrate in a group,
compression waves called plasma waves will be generated. The compression
waves generated in a metal surface and quantized are called surface
plasmon” (Spec. 1, ll. 13-16). According to the Specification, “if a light
beam strikes the metal film at a specific incidence angle θsp equal to or
greater than a critical angle of incidence at which total internal reflection
takes place, evanescent waves having electric field distribution are generated
in the sample in contact with the metal film” (Spec. 2, l. 25 to 3, l. 3). The
Specification then teaches that “surface plasmon is excited at the interface
between the metal film and the sample” (Spec. 3, ll. 3-5). The Specification
teaches that
When the wave vector of the evanescent light is equal to the
wave number of the surface plasmon and therefore the wave
numbers between the two are matched, the evanescent
waves and the surface plasmon resonate and light energy is
transferred to the surface plasmon, whereby the intensity of
light satisfying total internal reflection at the interface
between the dielectric block and the metal film drops
sharply. The sharp intensity drop is generally detected as a
dark line by the above-mentioned photodetection means.

(Spec. 3, ll. 5-13).

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The Claims
Claims 1-12, 14-18, and 22-25 are on appeal. Claim 1 is
representative and reads as follows:
1. A surface plasmon resonance measuring chip for use
in a surface plasmon resonance measurement apparatus
constituted of a light source for emitting a light beam; an
optical system for making said light beam enter a dielectric
block at various angles of incidence so that a condition for
total internal reflection is satisfied at an interface between
said dielectric block and said metal film; and photodetection
means for detecting the intensity of said light beam
satisfying total internal reflection at said interface to detect
surface plasmon resonance; comprising:
a dielectric block;
a metal film, formed on a surface of said dielectric
block, for placing a sample thereon;
wherein said dielectric block is formed as a single
block that includes an entrance surface which said light
beam enters, an exit surface from which said light beam
emerges, and a surface on which said metal film is formed;
said metal film is united with said dielectric block;
and
said dielectric block is formed from a synthetic resin
in which, when said light beam is p-polarized outside said
dielectric block and then strikes said interface, the intensity
of an s-polarized component at said interface is 50% or less
of the intensity of said light beam at said interface.

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The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Malmqvist et al. US 5,492,840 Feb. 20, 1996
Kubo et al. US 6,597,456 B2 Jul. 22, 2003
Naya et al. US 6,611,367 B1 Aug. 26, 2003

Natsuume et al., A New High Heat Resistant, High Clarity, and High
Humidity Resistant Polymer For Optical Uses, 150 MATERIALS RES. SOC’Y
SYMP. PROC. 245-250 (1989).

The issues
A. The Examiner rejected claims 1-6 and 14-18 on the ground of
nonstatutory obviousness type double patenting over claim 13 of Kubo and
Natsuume (Ans. 3-6).
B. The Examiner rejected claims 1-3 under 35 U.S.C. § 102(e) as
anticipated over Naya (Ans. 6-7).
C. The Examiner rejected claims 4-6 and 22-25 under 35 U.S.C. § 103(a)
as obvious over Naya and Natsuume (Ans. 7-8).
D. The Examiner rejected claims 1-12, 15-18, and 22-25 under 35 U.S.C.
§ 103(a) as obvious over Malmqvist and Natsuume (Ans. 8-9).

A., C., and D. Obviousness over either Kubo, Naya, or Malmqvist in
view of Natsuume
The Examiner finds that Claim 13 of Kubo “differs from the instant
invention in not reciting that the dielectric block is composed of a synthetic
resin” (Ans. 5). The Examiner finds that Naya differs “in failing to teach a
dielectric block composed of polymethylmethacrylate or a cycloolefin
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polymer or a cycloolefin copolymer” (Ans. 7). The Examiner finds that
Malmqvist differs “in failing to teach using a cycloolefin polymer to support
the thin metal film in the sensor unit” (Ans. 8).
The Examiner finds that Natsuume “discloses a polyolefin polymer
material (Zeonex) for optical uses. The polyolefin polymer material has high
transmittance properties” (Ans. 5). The Examiner concludes that it would
have been obvious to “use the polyolefin polymer material of Natsuume et al
in the dielectric block of [Kubo] because the polyolefin polymer material of
Natsuume et al provides the advantage of having high transmittance
properties to support the light beam entering the dielectric block” (Ans. 5).
The Examiner finds that “[s]ince the dielectric block of [Kubo], as modified
by Natsuume et al, is composed of the same material as the instantly claimed
dielectric block, it will possess the same properties - i.e. the intensities of s-
polarized component is 50% or less” (Ans. 5-6).
Appellants argue that “claim 1 recites a dielectric block but also
requires the dielectric block to include certain structural characteristics, the
structural characteristics are such that the s-polarization of light be limited in
the dielectric block.” (App. Br. 10). Appellants argue that “even though
Natsuume discloses the polyolefin polymer Zeonex, the polarization
properties and birefringence level of a dielectric are not dependent only on
the material of the dielectric, as shape and molding/processing conditions
are also other factors which would determine the polarization properties and
birefringence level of the dielectric” (App. Br. 11). Appellants argue that
the “submission under 37 C.F.R. § 1.114 filed on March 19, 2007 clearly
demonstrated that Natsuume clearly cannot meet the limitations as claimed.
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For example, Reference 3 (of the Rule 1.114 Submission) shows a
cycloolefin polymer having a substantial amount of birefringence, indicated
by the white portions” (App. Br. 11).
Appellants also argue that “even though Natsuume does disclose a
polyolefin polymer Zeonex, Natsuume’s Zeonex is not taught or suggested
to be capable of having the same properties of the dielectric block as recited
by claim 1” (App. Br. 12).
There are three separate obviousness rejections, but they all turn on
the same issue:
Have Appellants demonstrated that the Examiner erred in finding that
a dielectric block formed from Natsuume’s Zeonex polymer would
inherently result in reduction of the intensity of an s-polarized component to
50% or less at an interface?

Findings of Fact (FF)
1. The Specification teaches that “the dielectric block is formed
from a synthetic resin in which, when the light beam is p-polarized outside
the dielectric block and then strikes the interface, the intensity of a s-
polarized component at the interface is 50% or less of the intensity of the
light beam at the interface” (Spec. 8, ll. 14-19).
2. The Specification teaches that the “dielectric block 11 is formed
from PMMA, and in the case of PMMA, the intensity of the s-polarized
component is on the order of a few percent of the intensity of the lightbeam
30 at the interface 11a and is therefore reduced to 50 percent or less” (Spec.
29, ll. 22-25).
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3. The Specification teaches that “it is difficult to suppress the
intensity of the s-polarized component (conversion ratio R) to less than or
equal to 50%, less than or equal to 30%, or less than or equal to 10% simply
by employing PMMA as the material for the dielectric block 11” (Spec. 30,
ll. 12-16).
4. The Specification teaches that “[t]hese conversion ratios R can
be realized by applying the method of manufacture of a surface plasmon
resonance measuring chip of the present invention, when PMMA is
employed” (Spec. 30, ll. 16-18).
5. The Specification teaches that “the material of the dielectric
blocks is not limited to PMMA. For example, even if ‘ZEONEX 330R’, a
cycloolefin polymer manufactured by Japan Zeon, is employed, nearly the
same effect as the case of PMMA can be obtained” (Spec. 37, ll. 11-14).
The Specification teaches that “[f]urther, synthetic resins such as
‘ZEONOR’, a cycloolefin polymer manufactured by Japan Zeon, and
‘ABERU’, an ethylene tetracyclododecene cycloolefin polymer
manufactured by Mitsui Chemical, may also be employed as the material for
the dielectric block” (Spec. 37, ll. 15-19).
6. Claim 13 of Kubo reads:
A measuring chip for a surface plasmon resonance sensor,
comprising: a dielectric block; a metal film layer which is
formed on a first face of the dielectric block and is brought
into contact with a sample; a light source which emits a light
beam; an optical system which causes the light beam to
enter the dielectric block through a second face thereof so
that the light beam is reflected in total internal reflection at
the interface of the dielectric block and the metal film layer
and so that various angles of incidence of the light beam to
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the interface of the dielectric block and the metal film layer
are obtained; photodetector means which detects attenuation
in total internal reflection due to plasmon resonance by
detecting the intensity of the light beam which is reflected in
total internal reflection and goes outside the dielectric block
through a third face thereof; and a sample holder mechanism
for holding the sample on the metal film layer; wherein the
dielectric block of the measuring chip comprises all the first
to third faces and the metal film layer integrally formed on
the first face of the dielectric block; and wherein the sample
holder mechanism comprises a member which defines above
the metal film layer a space which has closed side walls and
is flared upward.

(Kubo, col. 16, Claim 13).
7. Natsuume teaches that the “new polyolefin polymer, Zeonex, is
an amorphous and transparent hydrocarbon polymer without any polar
groups. The polymer has high transmittance, small photo-elasticity
coefficient, high glass transition temperature, low water absorption, low
water permeability, and easy processing properties” (Natsuume 250).
8. Natsuume teaches that Zeonex “has outstanding characteristics
for optical uses” (Natsuume 245).
9. Naya teaches
a surface plasmon optical modulator element comprising a
dielectric material block disposed so that light-to-be-
modulated travels through the interior of the dielectric
material block and impinges upon one surface thereof at an
angle of total reflection, a metal film formed on said one
surface of the dielectric material block, a photo-functional
film which is formed on the metal film and whose refractive
index is changed upon exposure to light, and a modulating
light source which projects modulating light onto the photo-
functional film.
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(Naya, col. 3, ll. 47-56).
10. Naya teaches that “the dielectric material block may be formed
of BK7, high refractive index glass, polycarbonate, or the like” (Naya, col.
4, ll. 40-42).
11. Malmqvist teaches “a replaceable sensor unit consisting of a
substrate of a dielectric material, for example a glass substrate, which has
one of its faces coated with a metal film containing one sensing surface or
preferably a plurality of sensing surfaces. Such sensing surfaces have to be
functionalized for selective interaction with the desired biomolecules”
(Malmqvist, col. 2, l. 66 to col. 3, l. 5).

Principles of Law
“Obviousness-type double patenting … requires rejection of an
application claim when the claimed subject matter is not patentably distinct
from the subject matter claimed in a commonly owned patent. Its purpose is
to prevent an unjustified extension of the term of the right to exclude granted
by a patent by allowing a second patent claiming an obvious variant of the
same invention to issue to the same owner later.” In re Berg, 140 F.3d 1428,
1431 (Fed. Cir. 1998).
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] analysis need
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not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int'l v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “Whether
the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products.” Id. at
1255.
Analysis
Claim 13 of Kubo is directed to a surface plasmon resonance
measuring chip which comprises a dielectric block, and a metal film formed
on the surface of the dielectric block (FF 6). Similarly, Malmqvist and Naya
teach suface plasmon resonance chips (FF 9-11). The Examiner
acknowledges that Claim 13 of Kubo “differs from the instant invention in
not reciting that the dielectric block is composed of synthetic resin” (Ans. 5).
The Examiner makes the same concession regarding Malmqvist and Naya
(Ans. 6-8).
Natsuume teaches the polyolefin polymer Zeonex for optical uses,
noting that the “polymer has high transmittance, small photo-elasticity
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coefficient, high glass transition temperature, low water absorption, low
water permeability, and easy processing properties” (Natsuume 250; FF 7).
Natsuume specifically teaches that Zeonex “has outstanding characteristics
for optical uses” (Natsuume 245; FF 8).
Applying the KSR standard of obviousness to the findings of fact,
using the Zeonex polymer of Natsuume in the dielectric block of Claim 13
of Kubo represents a combination of known elements which would
predictably result in a superior dielectric block (FF 6-8). The same
combination would predictably work with the chips of Malmqvist and Naya.
Such combinations are merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
Appellants do not dispute the obviousness of combining Claim 13 of
Kubo (or Malmqvist or Naya) with Natsuume, but rather argue that “even
though Natsuume discloses the polyolefin polymer Zeonex, the polarization
properties and birefringence level of a dielectric are not dependent only on
the material of the dielectric, as shape and molding/processing conditions
are also other factors which would determine the polarization properties and
birefringence level of the dielectric” (App. Br. 11).
We are not persuaded. First, while the Specification indicates that the
method of manufacture may impact the amount of S-polarized light (FF 3-
4), the Specification focuses on the material used in forming the dielectric
block (FF 1-2). The Zeonex of Natsuume is a cycloolefin polymer just like
the cycloolefin polymers such as ZEONEX 330R, ZEONOR and ABERU
which are identified by the Specification as superior materials for use in
reducing the amount of S-polarized light (FF 5). The Examiner reasonably
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finds that “[s]ince the dielectric block of [Kubo], as modified by Natsuume
et al, is composed of the same material as the instantly claimed dielectric
block, it will possess the same properties” (Ans. 5). We think the Examiner
has reasonably established a prima facie case of inherency based upon the
identity of the cycloolefin polymers. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”)
Appellants respond to the Examiner’s inherency argument by arguing
that “[e]vidence of such factors effecting polarization properties and
birefringence level were previously submitted in the submission under 37
C.F.R. § 1.114 filed on March 19, 2007” (App. Br. 11).
We have reviewed Appellants’ evidence submitted on March 19,
2007, but this evidence is neither in English nor in the form of a Declaration.
Thus, we cannot weigh the probative effect of the references because they
are not translated into English. We also cannot review Appellants’
characterization of these references because this characterization is not
evidence, but rather represents attorney argument. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney's argument in a brief cannot take
the place of evidence.”).
Additionally Appellants state that “[r]eference 3 (of the Rule 1.114
Submission) shows a cycloolefin polymer having a substantial amount of
birefringence . . . which would cause a change in polarization. The amount
of birefringence shown in Reference 3 is substantial” (App. Br. 11). In this
argument, Appellants never state that the change in polarization would not
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satisfy the requirement of Claim 1, only that there is a substantial change.
Consequently, even based upon Appellants’ statements, there is no showing
that Natsuume’s cycloolefin polymers do not inherently satisfy the
requirements of Claim 1.
Appellants argue that “Natsuume’s general disclosure of a polyolefin
polymer Zeonex would not teach or suggest such a dielectric block with
characteristics which are specifically recited by claim 1” (App. Br. 12). We
are not persuaded since the Examiner is relying on the inherent properties of
cycloolefin polymers. Appellants have not provided any probative,
reviewable evidence which demonstrates that Natsuume’s Zeonex
cycloolefin polymer would not inherently satisfy the requirements of Claim
1. Appellants’ Specification supports the Examiner’s reasoning that
Natsuume’s Zeonex would function as claimed, since the Specification
teaches that “[i]f the aforementioned synthetic resins are viewed from the
point of suppressing the conversion ratio R from the p-polarized component
to the s-polarized component, then ‘ZEONEX 330R’, ‘ZEONOR’, and
“ABERU’ are more preferable than PMMA” (Spec. 37, ll. 19-23). Thus, the
Specification teaches that all of the cycloolefin polymers disclosed are
superior in achieving the desired polarization (see Spec. 37, ll. 13-23).
Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding
that a dielectric block formed from Natsuume’s Zeonex polymer would
inherently result in reduction of the intensity of an s-polarized component to
50% or less at an interface.

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B. 35 U.S.C. § 102(e) over Naya
The Examiner finds that Naya discloses “a surface plasmon optical
modulator element. The element comprises a dielectric block disposed so
that light to be modulated travels through the interior of the dielectric block
and impinges upon one surface thereof at an angle of total reflection, a metal
film formed on one surface of the dielectric block, a photofunctional film
formed on the metal film, and an oxygen cut film formed on the
photofunctional film” (Ans. 6). The Examiner finds that Naya teaches that
the “dielectric block can be composed of high refractive index glass or
polycarbonate (i.e. a synthetic resin)” (Ans. 7).
Appellants argue that “the Examiner’s failure to show the s-
polarization characteristics in the prior art renders the rejection improper”
(App. Br. 13). Appellants argue “that the Examiner has not carried the
burden of maintaining the rejections” (App. Br. 13). Appellants argue that
“[e]ven if one were to assume that some s-polarization suppression would
occur in synthetic resin materials, there is no basis to conclude that the s-
polarization would achieve the levels as claimed” (App. Br. 14).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
the dielectric block of Naya composed from polycarbonate would inherently
result in reduction of the intensity of an s-polarized component to 50% or
less at an interface?

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Principles of Law
“[A] prima facie case of anticipation [may be] based on inherency.” In
re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). “[T]he examiner must
provide some evidence or scientific reasoning to establish the reasonableness
of the examiner’s belief that the functional limitation is an inherent
characteristic of the prior art” before the burden is shifted to Applicants to
disprove the inherency. Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI
1986).
Analysis
The Examiner argues “the polycarbonate material taught by Naya is a
dielectric material and is considered to have the s-polarization properties
recited in the claims” (Ans. 11). The Examiner argues that “[g]iven its
broadest reasonable interpretation, any dielectric block should have the
requisite s-polarization properties recited in claim 1” (Ans. 12).
We are not persuaded because the Examiner has not provided any
specific reasoning which suggests that polycarbonate would have the
required s-polarization characteristics other than the mere fact that it is a
synthetic resin (see Ans. 6-7, 11-12). The Specification teaches that there
are some difficulties in obtaining s-polarization (FF 3). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Thus, unlike the obviousness rejections relying on Natsuume, where
virtually identical materials are reasonably expected to yield identical
results, the anticipation rejection over Naya uses a significantly different
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synthetic resin, polycarbonate, for which no evidence is provided to show
that it would have the required s-polarization properties.
Conclusion of Law
Appellants have demonstrated that the Examiner erred in finding that
the dielectric block of Naya composed from polycarbonate would inherently
result in reduction of the intensity of an s-polarized component to 50% or
less at an interface.
SUMMARY
In summary, we affirm the rejection of claim 1 on the ground of
nonstatutory obviousness type double patenting over claim 13 of Kubo and
Natsuume. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm
the rejection of claims 2-6 and 14-18 as these claims were not argued
separately.
We reverse the rejection of claims 1-3 under 35 U.S.C. § 102(e) as
anticipated over Naya.
We affirm the rejection of claims 4-6 and 22-25 under 35 U.S.C. §
103(a) as obvious over Naya and Natsuume.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Malmqvist and Natsuume. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-12, 15-18,
and 22-25 as these claims were not argued separately.

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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)(2006).

AFFIRMED

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