Ex Parte Wu et al

Board of Patent Appeals and Interferences

Feb 26, 2010

11176028 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANGUS WU, ANURAG GUPTA, P. GUY HOWARD,
and JOHN M. KOEGLER, III
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Appeal 2009-002044
Application 11/176,028
Technology Center 2800
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Decided: February 26, 2010
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-36. We have jurisdiction under 35 U.S.C. § 6. 1

1 In rendering this decision we have considered the Appellants’ arguments
presented in the Appeal Brief dated April 10, 2008, and the Reply Brief
dated July 8, 2008.
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Application 11/176,028

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Appellants’ claimed invention is directed to a reflector suitable for
use with optical devices. Independent claim 1 is reproduced below.
1. A reflector, comprising:
a metal reflector defining an optical surface;
an absorptive surface disposed on the optical surface;
a layer of germanium disposed on the absorptive surface; and
a band-pass reflective surface disposed on the layer of
germanium.

Appellants appeal the following rejections:
I. Claims 1-4, 6-15, 17-23, 25-29, and 31-36 were rejected as
unpatentable under 35 U.S.C. §103(a) over the combined teachings of
McLintic, U.S. Patent No. 3,944,320 issued March 16, 1976 and Laou,
U.S. Patent No. 6,198,098 issued March 6, 2001.
II. Claims 5 and 24 were rejected under 35 U.S.C. §103(a) as
unpatentable over the combined teachings of McLintic, Laou, and
Reichert2, WO 99/26088 published May 27, 1999.
III. Claims 16 and 30 were rejected under 35 U.S.C. §103(a) as
unpatentable over McLintic, Laou, and Sulzbach, U.S. Patent No.
5,342,681 issued August 30, 1994.

ISSUE
The dispositive issue before us is whether Appellants have identified
an error in the Examiner’s rejections on the basis that the Examiner erred

2 U.S. Patent No. 6,627,307 has been utilized as an English-language
translation of the WO reference.
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in relying on McLintic and Laou as suggesting a reflector comprising a
layer of germanium disposed on the absorptive surface as required by the
independent claims?
We answer this question in the affirmative and we reverse the stated
rejections.
PRINCIPLES OF LAW
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “Rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]he
analysis that ‘should be made explicit’ refers not to the teachings in the
prior art of a motivation to combine, but to the court’s analysis.” Ball
Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009).

FINDINGS OF FACT
The Examiner has found that McLintic describes a metal reflector
defining an optical surface comprising an absorptive layer and a band pass
filter deposited on the dielectric layer. According to the Examiner
McLintic lacks specific reference to the use of germanium as the dielectric.
The Examiner found that Laou teaches the use of a germanium layer in an
infrared absorption system. Thus, the Examiner is of the position that “[i]t
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would have been obvious to one of ordinary skill in the art at the time the
invention was made to have McLintic’s dielectric layer be made of
germanium as taught by Laou for the purpose of removing a large amount
of non visible light.” (Ans. 4). 3
ANALYSIS
We reverse the stated rejections.
Appellants argue that the Examiner fail to provide a reasonable
explanation as to why one of ordinary skill in the art would have been
motivated to combine the teachings of McLintic and Laou. (Reply Br. 5).
Appellants argue that contrary to the Examiner’s determination, Laou does
not teach the germanium layer as providing the property of “removing a
large amount of non visible light.” (App. Br. 15; Reply Br. 4).
The Examiner has failed to adequately address Appellants’ argument
regarding the failure of Laou to describe the use of a germanium layer as
removing large amounts of non-visible light. The Examiner, in response
to Appellants arguments, contends that Laou teaches the layers of
germanium can absorb infrared light citing Laou, column 7, ll. 3-15. (Ans.
8). The portion of Laou relied upon by the Examiner does not support the
stated conclusion. Laou discloses the Ni layer serves as the infrared
absorbing material and the variation of resistance of the germanium layer
caused by infrared radiation is interpreted as electrical signals that are
collected by an integrated circuit. (Laou, col. 7, ll. 5-15). Laou also

3 The Examiner has grouped the findings required to support a
determination as to the patentability of independent claims 1, 17, 19, 21,
23, 32, and 34 together. (Ans. 4).
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discloses that most of the IR is not absorbed by germanium. (Laou, col. 7,
ll. 20-25). The Examiner also has not explained what properties described
in Laou would have been achieved by adding the germanium layer
described therein to the invention of McLintic. It is our opinion that this
disclosure would not have led a person of ordinary skill in the art to select
a germanium layer as the dielectric utilized in McLintic.
The Examiner is correct that the reasons for combining the
references do not have to be explicitly taught therein. (Ans. 7). However,
the Examiner must provide an explanation as to why a person of ordinary
skill in the art would have sought to combine the teachings of the cited
references.
Appellants have identified reversible error in the Examiner’s
rejection by showing error in the Examiner’s reliance on Laou to describe
or suggest use of germanium as a dielectric layer in the invention of
McLintic to render obvious the subject matter of the independent claims.
Because all of the appealed rejections are based on the Examiner’s
unsupported finding, we do not sustain any rejections presented in this
appeal.
ORDER
The decision of the Examiner rejecting claims 1-36 is reversed.

REVERSED

Appeal 2009-002044
Application 11/176,028

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PL Initial:
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