Ex Parte Page et alDownload PDFPatent Trial and Appeal BoardJun 28, 201311768230 (P.T.A.B. Jun. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/768,230 06/26/2007 David J. Page LUMEP0149US 2693 23908 7590 07/01/2013 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER CHIEM, DINH D ART UNIT PAPER NUMBER 2883 MAIL DATE DELIVERY MODE 07/01/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID J. PAGE and BRIAN M. SPAHNIE ____________ Appeal 2010-010637 Application 11/768,230 Technology Center 2800 ____________ Before MARC S. HOFF, ELENI MANTIS MERCADER, and JOHN A. EVANS, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010637 Application 11/768,230 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 27, 29, 30, 33, 35, 37, 39, 40, 42, 43, and 45. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellants’ claimed invention is directed to light guides having one or more flat optical fibers having a pattern of U shaped notches in at least one side (Abstract). Independent claim 29, reproduced below, is representative of the subject matter on appeal. 29. An illuminator comprising a light guide having at least one light receiving edge for receiving light from a light source for transmission through the light guide by internal reflection, some of a surface of the light guide being coated with a masking material, and a pattern of shallow U shaped notches or grooves that are laser cut in unmasked areas of the surface for causing at least some of the transmitted light to be reflected or refracted out of the light guide. REFERENCES and REJECTIONS 1. The Examiner rejected claim 29 under 35 U.S.C. § 102(b) as being anticipated by Taniguchi (US 6,700,632 B2). 2. The Examiner rejected claim 30 as being anticipated by 35 U.S.C. § 102(b) as being anticipated by Lundin et al (US 5,845,038). 3. The Examiner rejected claims 27, 33, 35, 37, 39, 40, 42, 43, and 45 as being unpatentable under 35 U.S.C. § 103(a) over Mabuchi (US 6,565,255 B2) in view of Lundin (US 5,845,038). Appeal 2010-010637 Application 11/768,230 3 ISSUES The issues are whether the Examiner erred in finding that 1. Taniguchi teaches the limitation of “a pattern of shallow U shaped notches or grooves that are laser cut in unmasked areas of the surface for causing at least some of the transmitted light to be reflected or refracted out of the light guide” as recited in claim 29; and 2. Lundin teaches the limitation of “a pattern of shallow U shaped notches or grooves that are laser cut in the coated surface of the light guide for causing at least some of the transmitted light to be reflected or refracted out of the light guide” as recited in claim 30. ANALYSIS Claim 29 Appellants argue that forming a mask pattern on a silicon substrate and then forming micro-dots by use of an anisotropic etching method of Taniguchi (col. 12, ll. 22-63, and Figs. 15A-15G) does not result in a light guide having at least some surface coated with a masking material and a pattern of shallow U shaped notches or grooves that are laser cut in unmasked areas of the surface for causing at least some of the transmitted light to be reflected or refracted out of the light guide as recited in claim 29 (Br. 5-6). Appellants further argue that the claimed pattern of shallow U shaped notches or grooves that are “laser cut in unmasked areas of the surface” of the light guide is as capable of being construed as a structural limitation as “‘intermixed,’” “‘ground in place,’” “‘press fitted,’” “‘etched,’” and “‘welded,’” all of which at one time or another have been separately Appeal 2010-010637 Application 11/768,230 4 held capable of construction as structural rather than process, limitations (citing In re Garnero, 412 F .2d 276, 279 (CCPA 1969)) (Br. 6). We do not agree with Appellants’ arguments. We agree with the Examiner that Taniguchi teaches a light guide (1) in Figure 5 wherein the grooves are formed at the unmasked areas (Fig. 15H) (Ans. 6). We also agree with the Examiner’s finding that the limitation of “laser cut” does not impart structural limitation on the finished product (Ans. 6). Since Appellants recited the invention as a product-by-process claim, the Examiner provided evidence showing each and every structural limitation of claim 29 is met by Taniguchi (Ans. 6). We also agree with the Examiner that Appellants have not provided evidence or rationale which would impart a structural difference between the laser cut grooves of the claimed invention would be patentably distinct from the anisotropic etching disclosed by Taniguchi (Ans. 6-7). The “burden [of proof] shifts to Appellant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” See also MPEP § 2113. Ans. 7. We further note that Garnero, cited by Appellants, stands for the proposition that the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art -- especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279 (CCPA 1969) and MPEP 2113. On the record before us, we find no evidence to support the proposition that the grooves made by a laser cut process could not also be defined by grooves made by an etching process, or Appeal 2010-010637 Application 11/768,230 5 that these different processes impart distinctive structural characteristics to the final product. Accordingly, we affirm the Examiner’s rejection of claim 29 over Taniguchi. Claim 30 Appellants argue that Lundin does not teach U shaped notches or grooves being laser cut in the coated surface of the light guides (Br. 7). We do not agree. We agree with the Examiner’s finding (Ans. 7) that Lundin teaches a light guide (i.e., core 22) being coated with cladding and or jacketing layers to enhance laser cutting in the surface (col. 4, ll. 55-60). We also agree with the Examiner that the limitation of “laser cut” does not impart structural limitation on the finished product (Ans. 8). We further agree with the Examiner, for the same reasons as those we discuss with respect to claim 29, Appellants’ claimed invention and arguments have not distinguished how a groove made by the laser cut method would be patentably different from the anisotropic etched grooves by Lundin (Ans. 9). Accordingly, we affirm the Examiner’s rejection of claim 30. Claims 27, 33, 35, 37, 39, 40, 42, 43, and 45 Appellants repeat the same arguments as those presented above for claims 27, 33, 35, 37, 39, 40, 42, 43, and 45. Accordingly, we affirm the rejections of claims 27, 33, 35, 37, 39, 40, 42, 43, and 45 for the same reasons as stated supra. CONCLUSIONS The Examiner did not err in finding that: Appeal 2010-010637 Application 11/768,230 6 1. Taniguchi teaches the limitation of “a pattern of shallow U shaped notches or grooves that are laser cut in unmasked areas of the surface for causing at least some of the transmitted light to be reflected or refracted out of the light guide” as recited in claim 29; and 2. Lundin teaches the limitation of “a pattern of shallow U shaped notches or grooves that are laser cut in the coated surface of the light guide for causing at least some of the transmitted light to be reflected or refracted out of the light guide” as recited in claim 30. DECISION The Examiner’s decision rejecting claims 27, 29, 30, 33, 35, 37, 39, 40, 42, 43, and 45 is affirmed. 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 gvw Copy with citationCopy as parenthetical citation