Ex Parte Weber

Patent Trial and Appeal Board

Sep 27, 2016

11691769 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111691,769 03/27/2007
32692 7590 09/29/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
MichaelF. Weber
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
60954US003 6228
EXAMINER
CHANG, AUDREY Y
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Exparte MICHAEL F. WEBER
Appeal2013-009054
Application 11/691,769
Technology Center 2800
Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI,
and WESLEY B. DERRICK, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 9-11 and 22-25. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
Appeal2013-009054
Application 11/691,769
STATEMENT OF THE CASE
Claim 9 is illustrative of Appellant's subject matter on appeal and is
set forth below:
9. A mirror system, comprising:
A thin film stack comprising a plurality of micro layers, the micro
layers lying generally perpendicular to a reference axis and having refractive
indices and thicknesses selected to substantially reflect light over a
wavelength range of interest and over a micro layer angular range of
interest;
an optically thick layer coupled to the micro layers and having a
refractive index ni greater than that of air but less than the refractive indices
of the micro layers; and
structure(s) that inject light in the optically thick layer and the
microlayers, including light that propagates in the optically thick layer at an
angle of substantially 90° to the reference axis;
wherein the angular range of interest extends to an angle 8amax
measured in a reference medium corresponding to that of one of the
micro layers;
wherein ni is selected such that light propagating in the optically thick
layer at an angle of substantially 90° to the reference axis refracts into the
reference medium of the plurality of micro layers at an angle of about 8amax.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Huseh et al. US 7,093,968 Aug. 22, 2016
(hereinafter "Huseh")
Wortman et al., US 6,905,220 B2 Jun. 14,2005
(hereafter "Wortman")
Spiro et al., US 6,534,903 B 1 Mar. 18, 2003;
(hereinafter "Spiro")
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Appeal2013-009054
Application 11/691,769
THE REJECTIONS
1. Claims 9-11 and 22-24 stand rejected under 35 U.S.C. § 103(a) as
purportedly unpatentable over Hsueh in view of Wortman.
2. Claim 25 stands rejected under 35 U.S.C. § 103(a) as purportedly
unpatentable over Hsueh and Wortman, as applied to claim 9, and further in
view of Spiro.
ANALYSIS
We select claim 9 as representative of all the claims on appeal, based
upon Appellant's presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014).
We affirm the rejection based upon the Examiner's findings and stated
position, including responses made to the Appeal Brief, as set forth in the
record, which we incorporate as our own, and add the following .
.LA~ppellant argues that claim 9 recites in part a mirror system including
a thin film stack including a plurality of micro layers and an optically thick
layer coupled to the microlayers and having refractive index ni, where ni is
selected such that light propagating in the optically thick layer at an angle of
substantially 90° to the reference axis refracts into the reference medium of
the plurality of micro layers at an angle of about 8amax. Appeal Br. 6.
Appellant states that 8amax is defined in the Specification as the maximum
light propagation angle measured in medium "a" for which the thin film
stack provides adequate reflectivity over the wavelength range of interest.
Appeal Br. 6, Spec. p. 8, 11. 9-10. Appellant states that this angle is a
function of many factors, such as the required or target reflectivity in the
intended application, and details of the stack design such as the total number
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Appeal2013-009054
Application 11/691,769
of micro layers, thickness gradient of the micro layer stack, refractive index
difference between micro layers, and so forth. Id. at page 8, lines 10-14.
Appellant submits that neither Hsueh nor Wortman teach or suggest
selecting the refractive index of the optically thick layer to refract light
incident from a grazing angle to about 8amax. Appeal Br. 6.
Beginning on page 3 of the Answer, the Examiner discusses Snell's
Law, and how Snell's Law governs the refraction of light passing from a
first medium to a second medium. Ans. 3-7. Based upon the well-known
Snell's Law which governs the relationship between the angles of incidence
and refraction, the Examiner concludes, inter alia, that the selection of the
material, and therefore the refractive index (nx) of the light guide plate or
optical thick layer, is deemed obvious because it is within the general skill of
a worker in the art to select a known material on the basis of its suitability
for the intended use. Ans. 13. We note that the selection of a known
~ • 1 1 1 ·~ ·~ 1 ·1·~ .. ·~ • ~ 1 1 1 1 .. 1 ~ maiena1 oasea on us suuaouuy ror us imenaea use nas oeen rouna w
support a prima facie obviousness. See Sinclair & Carroll Co. v.
Interchemical Corp., 325 U.S. 327 (1945).
The Examiner further points out that Appellant's Specification does
not indicate that a specific selection for the material or materials with a
specifically selected refractive index for the light guide or optical thick layer
has an associated criticality. Id. The Examiner concludes that because it is
deemed obvious to select a known material on the basis of its suitability, the
selection of the refractive index as claimed in the instant application is
obvious, absent evidence of criticality (as in the instant case), and is
therefore not patentable over the selection of the refractive index of the light
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Appeal2013-009054
Application 11/691,769
guide plate or the optically thick layer disclosed in the combination of
applied references. Ans. 14.
Appellant argues that the combination of applied references does not
teach or suggest selecting the refractive index of the optically thick layer to
refract light incident from a grazing angle to about 8amax. Appeal Br. 5-8.
Appellant disagrees with the Examiner's position (Ans. 8) that the refractive
index is "implicit" in the design of any functioning combination of an
optically thick layer and a coupled reflective layer. Reply Br. 6-7.
However, the point being made by the Examiner is that selection of ni occurs
because it is associated with the specific optically thick layer being selected
and the specific light guide being selected, and we are thus not persuaded by
such argument for the reasons stated by the Examiner in the record.
Furthermore, and importantly, Appellant does not adequately address
the Examiner's rationale that the selection of a known material based on its
·~ 1 ·1·~ .. ·~ • ~ 1 1 """'" • ~1 ~ 1 • sunaouny ror us mienaea use surnc1enuy suppons an oov10usness
conclusion. See generally, Appeal Brief and Reply Brief. Because
Appellant has not convincingly addressed this aspect of the rejection, we are
unpersuaded of error in the rejection in this regard.
In view of the above, we affirm Rejection 1, for the reasons provided
by the Examiner in the record and as emphasized herein. We also affirm
Rejection 2 for similar reasons because Appellant relies upon similar
arguments. Appeal Br. 8.
DECISION
Each rejection is affirmed.
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Appeal2013-009054
Application 11/691,769
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a).
ORDER
AFFIRMED
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