Ex parte SUMIDA et al.

Board of Patent Appeals and Interferences

May 22, 1998

08223190 (B.P.A.I. May. 22, 1998)

Application for patent filed April 5, 1994.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID S. SUMIDA and DENNIS C. JONES
__________
Appeal No. 95-4470
Application No. 08/223,1901
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON and KRASS, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 3, 10 and 17 through 22, all of the claims
remaining in the application.
The invention is directed to a monolithic multifunctional
optical element. More particularly, the optical element has a
body made of a material with a refractive index greater than
Appeal No. 95-4470
Application No. 08/223,190
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1.414 and wherein the body is formed in the shape of a porro
prism to provide for retroreflection in one plane and
polarization rotation of incident light rays. Such a
construction is said to provide for 100% reflectivity of incident
light rays and for a geometric rotation of the plane of
polarization of light rays which is independent of whether the
reflections are totally internally reflecting or not.
Representative independent claim 1 is reproduced as follows:
1. A monolithic optical element comprising:
a body comprising a material having a refractive index
greater than 1.414 to provide for total internal reflection of
incident light, and wherein the body is formed in the shape of a
right-angle porro prism to provide for retroreflection in one
plane and polarization rotation of the incident light rays.
The examiner relies on the following references:
Crow 3,924,201 Dec. 2, 1975
Simmons 4,525,034 Jun. 25, 1985
Reeder 4,740,986 Apr. 26, 1988
Sumida 5,303,256 Apr. 12, 1994
(filed Mar. 12, 1993)
In addition, the examiner relies on appellants’ admitted
prior art Figure 4 [APA].
Claims 1 through 3 and 10 stand rejected under 35 U.S.C. 103
as unpatentable over Sumida, Simmons and Crow. In a new ground
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of rejection entered in the answer, claims 17 through 22 now
stand rejected under 35 U.S.C. 103, the examiner citing APA in
view of Sumida and Simmons regarding claims 17 through 19 and 22,
adding Crow to this combination with regard to claims 20 and 21.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
We will not sustain any of the rejections as it is our view
that the examiner has failed to establish a prima facie case of
obviousness with regard to the claimed subject matter.
Turning first to the rejection of claims 1 through 3 and 10,
the examiner contends that Sumida discloses the subject matter of
claim 1, including a suggestion of a monolithic structure, but
for the optical element being in the shape of a right-angle porro
prism. Simmons and Crow are cited to show different forms and
shapes of optical elements, viz, porro prisms, and the examiner
concludes that it would have been obvious to substitute the
optical structure of the optical element in Simmons and Crow to
the device of Sumida to achieve “a monolithic optical element,”
as claimed.
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Sumida, cited as prior art in the background section of the
instant specification, does not disclose a “monolithic optical
element,” as claimed. Although the examiner relies on the
abstract of Sumida, wherein “a single solid-state optical
element” and “[t]he optical element is a monolithic ...
multifunctional element” are recited, it is clear from his patent
specification that Sumida provides only for a “quasi-monolithic
saturable optical element” [see, for example, column 1, lines 8-9
and column 2, lines 11-12 of Sumida]. Moreover, Sumida is very
explicit, at column 3, lines 62-65:
The term “quasi-monolithic” is used since the optical
element 10 of the present invention is not a single
piece, or truly monolithic.
Thus, it is clear that Sumida merely represents the prior art
over which appellants seek improvement in providing for a single,
monolithic optical element.
Appellants also argue, and we agree, that none of the cited
references disclose or suggest the claimed “polarization
rotation” which is so important to the claimed invention.
The examiner’s response is to contend that this argument
goes to limitations not appearing in claim 1 and, therefore, the
examiner “gives no patentable weight to the ‘polarization
rotation’ feature” [answer-page 10]. If the limitation, indeed,
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did not appear in the claim, we would agree with the examiner and
we might understand how the examiner might have misconstrued the
claim language since claim 1 appearing in the appendix to the
principal brief recited “polarization” but not “polarization
rotation.” However, the term “polarization rotation” was clearly
inadvertently omitted from the claim appearing in the appendix as
this term has formed part of the language of claim 1 since the
filing of the application. Since the examiner’s rejection of
claim 1, and claims depending thereon, is bottomed on no
limitation of “polarization rotation” appearing in the claims, we
cannot understand why the examiner has persisted in this
rejection even after this inadvertent omission of the claim
language was explained in the reply brief.
Since the examiner has ignored, or, more accurately, has
failed to give any weight to a claim limitation, especially a
limitation so clearly tied to a critical aspect of appellants’
invention, the examiner’s rejection of claims 1 through 3 and 10
under 35 U.S.C. 103 must fail for a lack of a prima facie showing
of obviousness of the claimed subject matter.
Even though we could agree that porro prisms are well known
in the art and that “polarization rotation” is a well known term
of art, the examiner has failed to present a convincing line of
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reasoning as to why it would have been obvious, in view of the
art cited, to have constructed a monolithic optical element
providing for total internal reflection of incident light wherein
the body of the optical element is in the shape of a right-angle
porro prism in order to provide for retroreflection in one plane
and polarization rotation of the incident light rays. The
claimed properties have not been shown to be inherent in any
porro prism.
We note, further, that the examiner appears to rely, to some
extent, on Reeder for a suggestion of the “polarization rotation”
feature. However, where a reference is relied on to support a
rejection, whether or not in a minor capacity, there would appear
to be no excuse for not positively including the reference in the
statement of the rejection. In re Hoch, 428 F.2d 1341, 1342 n.3,
166 USPQ 406, 407 n.3 (CCPA 1970). Reeder forms no part of the
examiner’s statement of the rejection and, accordingly, we have
not considered this reference.
We now turn to the new ground of rejection wherein the
examiner rejects claims 17 through 19 and 22 under 35 U.S.C. 103
over APA, Sumida and Simmons.
To whatever extent the examiner might have mistakenly
believed that the “polarization rotation” limitation did not
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Application No. 08/223,190
We note that Crow, applied with regard to the rejection2
of dependent claims 20 and 21, does not provide for the
deficiency of the other applied references as Crow also does not
teach or suggest the claimed “polarization rotation.”
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appear in claim 1, this limitation is clearly part of independent
claim 17. However, the examiner still has not satisfactorily
explained why this limitation is taught or suggested by the
combination of applied references. Accordingly, for this reason,
alone, we will not sustain the rejection of claim 17 or of the
claims dependent thereon.2
Again, to whatever extent the examiner appears to rely on
Reeder [page 11 of the answer] for providing for “polarization
rotation,” this reference forms no part of the statement of
rejection and we will not consider it.
We further note that while the examiner appears to rely on
Simmons for the claimed “retroreflection” of the incident light
rays, appellants have submitted a declaration with the reply
brief attesting to running an experiment based on Simmons’
disclosed invention and that the experimental results show that
Simmons’ claim of retroreflectivity is inaccurate because only
part of the beam is reflected. The examiner has never refuted
this evidence.
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The examiner’s decision rejecting claims 1 through 3, 10 and
17 through 22 under 35 U.S.C. 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge)
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
ERROL A. KRASS )
Administrative Patent Judge)
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Application No. 08/223,190
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K. Lum
Hughes Aircraft Company
Building C01/A126
P.O. Box 80028
Los Angeles, CA 90080-0028