Ex Parte Swatton

Board of Patent Appeals and Interferences

Nov 19, 2009

10501113 (B.P.A.I. Nov. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEWART NATHAN RIDGLEY SWATTON
_____________

Appeal 2009-004793
Application 10/501,113
Technology Center 2600
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Decided: November 19, 2009
____________

Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 3, 6, 8, and 9.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We will sustain the rejection.
Appellant’s invention is concerned with an optical biometric sensor
(e.g., a fingerprint sensor).2 Appellant discloses and claims an optical
biometric sensor including a detector for detecting radiation emitted from a
radiation source, a planar slab waveguide, and an interference filter disposed
between the waveguide and the detector.3
Claim 8 reproduced below with emphasis added, is representative of
the subject matter on appeal:
8. An optical biometric sensor comprising:
a radiation detector;
a radiation director capable of directing radiation from a point of
contact of an individual with the radiation director towards the radiation
detector in response to contact of the individual with the radiation director at
the point of contact, the radiation director further comprising a planar
slab waveguide having a core layer with a region which is at least partly
exposed and a radiation source for introducing radiation into the core layer
such that radiation propagates throughout the exposed region thereof
wherein the sensor further comprises an interference filter disposed between
the planar slab waveguide and the radiation detector. (Claim 8 (emphasis
added)).

1 Claims 2, 4, 5, and 7 have been canceled.
2 See Spec. 1-3.
3 See Spec. 4:27-6:2; claims 1 and 8; Figs. 1 and 2.

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The Examiner relies upon the following as evidence of
unpatentability:
Wong US 5,822,445 Oct. 13, 1998
Johnson US 6,444,969 B2 Sep. 3, 2002

The following sole rejection is before us for review:
Claims 1, 3, 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wong and Johnson.
The Examiner relies upon Wong as disclosing a direct optical
biometric sensor having a radiation detector, radiation director, and a planar
slab waveguide (Ans. 3-4, 6). The Examiner relies upon Johnson as
disclosing an interference filter disposed between a waveguide and a
detector (Ans. 4-7).
Appellant does not dispute the teachings or suggestions of Wong, nor
does Appellant dispute the motivation for combining Johnson with Wong.
Instead, Appellant argues (App. Br. 8-9; Reply Br. 3-5), inter alia, that
Johnson fails to disclose or suggest an interference filter. Appellant argues
(App. Br. 8-9; Reply Br. 3-4) that Johnson’s filter 20 prevents detector
interference by blocking radiation, and is not a multilayer structure that
optically rejects light by interference effects, but is instead an absorption
filter. Appellant also argues (App. Br. 9; Reply 2, 4-5) that one of ordinary
skill in the art would understand that “‘interference filter’” means a
multilayered filter that operates using optical interference effects, and that
the multilayered structure (as shown in Appellant’s Fig. 2) is implicit in the
use of the term “‘interference filter.’”

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Appellant (App. Br. 6-9; Reply Br. 2-5) does not make the foregoing
arguments based on an analysis of a particular claim with respect to the
teachings of Johnson. Both independent claims 1 and 8, along with their
corresponding dependent claims 3, 6, and 9, contain the general features of
an optical biometric sensor having a radiation detector, radiation director
including a waveguide, and an interference filter disposed between the
waveguide and detector. We consider claim 8 as being representative of the
group of claims (claims 1, 3, 6, 8, and 9) which stand rejected under 35
U.S.C. § 103(a) as unpatentable over Wong and Johnson. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Based on Appellant’s arguments, the issue is: Has Appellant
demonstrated that the Examiner erred in finding that Johnson discloses an
interference filter, as set forth in representative claim 8?

FINDINGS OF FACT
1. As indicated supra, Appellant describes and claims an optical
biometric sensor (50 in Fig. 2) including a detector 52 for detecting
radiation emitted from a radiation source 58/60, a planar slab
waveguide 56, and an interference filter 55 disposed between the
waveguide 56 and the detector 52.
2. Appellant discloses that:
The interference filter 55 operates to reduce the solid
angle of diverted light subtended by the CMOS detector
array 52 at the point at which the individual’s fingerprint

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ridge makes contact with the waveguide 56. This
provides the sensor 50 with a greater resolution than that
of the sensor 10.

Spec. 5:6-9.
3. Johnson describes a filter 20 for filtering interference (see generally
Fig. 1; col. 3, ll. 43-51; col. 4, ll. 22-30; col. 6, ll. 30-37). The filter
20 is located between a waveguide 8 and a sensor 3.
4. As stated by Johnson:
. . . The photoelectric sensor may have a filter 20 or may
be tuned to detect only the frequency of radiation emitted
by the LED array so as to prevent interference from
radiation from other sources. Alternatively, filters or
shields may be installed on all exposed exterior surfaces
of the prism to prevent admission of radiation to the
prism from any source other than the LED array.

Column 4, lines 22-30 (emphasis added).

PRINCIPLES OF LAW
Claim Construction
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted); In re Morris,
127 F.3d 1048, 1053-54 (Fed. Cir. 1997). “[T]he specification ‘is always
highly relevant to the claim construction analysis. Usually, it is dispositive;

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it is the single best guide to the meaning of a disputed term.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citation omitted).
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s “articulated reasoning . . . in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellants have the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. See Kahn, 441 F.3d at 985-86.

ANALYSIS
Claims 8 and 9
We will sustain the Examiner’s rejection with respect to
representative claim 8 for the reasons that follow. We agree with the
Examiner’s findings of fact and conclusions of obviousness with respect to
claim 8 (Ans. 6-7, 8-11), and adopt them as our own, along with some
amplification of the Examiner’s explanation of the teachings of Johnson (FF
3, 4), as well as Appellant’s Specification (see FF 1, 2). See Fine, 837 F.2d
at 1073; Kahn, 441 F.3d at 988.

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Representative claim 8, and claim 9 (due to its dependency on claim
8), each recites “an interference filter” (claim 8). The originally filed
Specification supports interference filter as meaning a filter that filters light
interference (see FF 2). In other words, one of ordinary skill in the art would
understand that an interference filter is simply a filter that filters interference
in the form of light (i.e., radiation).
Claim 8 merely requires that an interference filter be disposed
between a waveguide and a detector with no limit on how the filter functions
or operates to filter interference. See Am. Acad. of Sci. Tech Ctr., 367 F.3d
at 1364. The phrase interference filter broadly encompasses a filter that
filters interference in the form of light, and does not require by definition
that the filter be a multilayered structure (as shown in Appellant’s Fig. 2) or
that interference be filtered optically in order to improve resolution. Id.
A proper interpretation of claim 8, giving this claim its broadest
reasonable interpretation consistent with the Specification as understood by
one of ordinary skill in the art (Phillips, 415 F.3d at 1315), has to rely on the
specific description provided in the originally filed Specification. The
Specification describes an interference filter as a filter that operates to
reduce the solid angle of diverted light (FF 2). In other words, the filter
filters light, which results in filtering out unwanted interference.
As indicated supra (FF 3, 4), Johnson describes an interference filter
as broadly set forth in representative claim 8. Johnson specifically discloses
filter 20 for the purpose of filtering radiation (e.g., light) “so as to prevent
interference” (FF 4). Thus, Appellant has not demonstrated that the
Examiner erred in relying on Johnson as disclosing or suggesting an

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interference filter, at least to the extent that this feature is broadly set forth in
representative claim 8. See Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
The Examiner has provided articulated reasoning with a rational
underpinning to support the combination for the legal conclusion of
obviousness (Ans. 3-11). See Kahn, 441 F.3d at 988. We agree with the
Examiner that Johnson discloses or suggests an interference filter. We also
agree with the Examiner that it would have been obvious to modify Wong
with the teachings of Johnson to prevent artifacts introduced from erroneous
radiation by filtering (Ans. 5, 7).
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellant to present
evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See Oetiker, 977 F.2d at 1445. In view of our discussion as to (i)
the teachings and suggestions of Johnson supra, and (ii) Appellant’s
arguments infra, Appellant has not demonstrated that the Examiner erred in
determining that Johnson discloses or suggests an interference filter.
Furthermore, as indicated supra, Appellant does not present any argument as
to Wong or the motivation to modify Wong.
Appellants’ arguments (App. Br. 8-9; Reply Br. 3-4) that Johnson’s
filter 20 is not a multilayer structure that optically rejects light by
interference effects to improve resolution, but is instead an absorption filter
that prevents detector interference by blocking radiation, are unpersuasive
inasmuch as they are not commensurate with the terminology set forth in
claim 8 of simply, interference filter. The phrase “multilayer structure” and
“resolution” do not appear in claim 8 (or any other claim for that matter).

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Appellant’s arguments (App. Br. 9; Reply 2, 4-5) that one of ordinary
skill in the art would understand that “interference filter” means a
multilayered filter that operates using optical interference effects, and that
the multilayered structure (as shown in Appellant’s Fig. 2) is implicit in the
use of the term “interference filter,” are not persuasive in light of our
findings with respect to Appellant’s disclosure in the Specification (FF 1, 2).
In view of the foregoing, we will sustain the obviousness rejection of
representative claim 8. The same holds true for claim 9, which depends
from claim 8.
Claims 1, 3, and 6
Appellant has not presented any patentability arguments as to claims
1, 3, and 6, other than stating that the Examiner failed to make a prima facie
case of obviousness with regard to these claims because Johnson fails to
disclose an interference filter (see App. Br. 10; Reply Br. 5).
Since Appellant has not particularly pointed out errors in the
Examiner’s reasoning to persuasively rebut the Examiner’s prima facie case
of obviousness, the rejection of claims 1, 3, and 6 is therefore sustained for
similar reasons as to representative claim 8.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in finding that
Johnson discloses or suggests an interference filter, as set forth in
representative claim 8.

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ORDER
The decision of the Examiner to reject claims 1, 3, 6, 8, and 9 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

KIS

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