Ex Parte Weston et alDownload PDFPatent Trial and Appeal BoardJun 30, 201612311801 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/311,801 04/14/2009 25944 7590 07/05/2016 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 FIRST NAMED INVENTOR Nicholas John Weston 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. 141272 5658 EXAMINER CHAVEZ, RENEE D ART UNIT PAPER NUMBER 2878 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICHOLAS JOHN WESTON, ALEXANDER DAVID McKENDRICK, JOHN PETER CARR, MARC PHILIPPE YVES DESMULLIEZ, and GEOFFREY McFARLAND Appeal2014-005781 Application 12/311,801 Technology Center 2800 Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and MICHAEL M. BARRY, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3-28, 31, and 33. An oral hearing was conducted on June 14, 2016. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. Appeal2014-005781 Application 12/311,801 STATEMENT OF THE CASE Appellants' invention is directed to "to an opto-electronic encoder readhead used to detect[] displacement relative to a scale" (Spec. 1 :4--7). Independent claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A read head for a scale reading apparatus, the read head compnsmg: a light source for illuminating a scale, an array of photodetector elements configured to detect a light pattern and produce signals from which relative movement of the scale and readhead can be determined, and a substrate, wherein said light source and array of photodetector elements are fabricated in a lattice matched semiconductor compound provided on the substrate, the substrate is lattice matched to the semi-conductor compound in which the light source and photodetector elements are provided, and the light source is located on a side of the substrate that is adjacent to the scale. REFERENCES and REJECTIONS The Examiner rejected claims 1, 3-18, 31and33 under 35 U.S.C. § 103(a) based upon the teachings of Franz (US 6,528,779 Bl; Mar. 4, 2003) and Chan (US 4,879,250; Nov. 7, 1989). (Final Act. 2-9). The Examiner rejected claim 19 under 35 U.S.C. § 103(a) based upon the teachings ofWaltrich (US 5,450,392; Sept. 12, 1995). (Final Act. 9). The Examiner rejected claims 1and20-23 under 35 U.S.C. § 103(a) based upon the teachings of Henshaw (US 5,302,820; Apr. 12, 1994) and Chan. (Final Act. 9-11 ). 2 Appeal2014-005781 Application 12/311,801 The Examiner rejected claims 24--28 under 35 U.S.C. § 103(a) based upon the teachings of Franz, Chan, and Ng (US 2006/0092047 Al; May 4, 2006). (Final Act 11-14 ). ANALYSIS The Examiner finds Franz and Henshaw each disclose all the limitations of independent claim 1 except for the substrate being lattice matched to a semiconductor compound from which the light source and photodetector elements are fabricated, and finds Chan teaches this missing requirement because it discloses lattice matching LEDs was known in the art at the time of the invention (Final Act. 2-3, 9-10; Ans. 2-7, and 9). Appellants contend the Examiner erred because Franz's chip 6 (semiconductor substrate) (Franz col. 6, 11. 8-10) has been misconstrued as the substrate and Chan cannot be combined with Franz or Henshaw (App. Br. 5-11). We do not agree. Appellants argue that Franz's semiconductor substrate 6 cannot be the same as the claimed substrate because, in Franz, light must pass through an underfiller 16 and then through the substrate 2 (a transparent substrate that is made of glass; Franz col. 5, 11. 1-2) before being reflected by a scale 200, which is contrary to Appellants' claim 1 in which light passes only through substrate 4 to reach the scale (App. Br. 6). However, we note in Appellants' Specification, the light must also pass through a layer 10 (a protective glass layer; Figs. 1 and 2; Spec. 12: 10-20). Thus, we see no meaningful difference between the argued portion of Franz and Appellants' claim. We agree Henshaw also discloses these claim limitations (see Fig. 3). 3 Appeal2014-005781 Application 12/311,801 Appellants argue Chan cannot be combined with Franz or Henshaw because the Examiner engaged in impermissible hindsight and because the resultant device would fail to function (App. Br. 9-11). We do not agree. The Examiner cited Chan for disclosing lattice matching substrates for LEDs was known and used in the art before the time of Appellants' invention (Ans. 9). We further note Appellants are arguing the references separately and not as a combination. Appellants argue, for example, Chan discloses contacts on the front and back of the unit that would adversely affect generating and detecting interference fringes as well as windows that would interferes with the placement of Franz's grate (App. Br. 11). None of these argued features are claimed, nor are the relevant because, as mentioned above, Chan was merely cited for disclosing a lattice matched substrate (Ans. 7-10). Appellants' arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d413, 425(CCPA1981) (emphasis added) (citations omitted). As it was known in the art at the time of Appellants' invention that lattice matched substrates were used in fabricating LEDs, and Appellants have not provided persuasive argument or evidence why a lattice matched 4 Appeal2014-005781 Application 12/311,801 substrate could not be used as the substrate of Franz or Henshaw, we sustain the Examiner's rejection of independent claim 1 and dependent claims 3-28, 31, and 33, for which no additional arguments were presented. DECISION The Examiner's decision rejecting claims 1, 3-28, 31, and 33 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)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation