Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung c.V.

Patent Trials and Appeals Board

May 17, 2021

2020004535 (P.T.A.B. May. 17, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/395,424 10/17/2014 Frank Fuchs FG-015-EH 6013
25962 7590 05/17/2021
SLATER MATSIL, LLP
17950 PRESTON RD, SUITE 1000
DALLAS, TX 75252-5793
EXAMINER
OESTREICH, MITCHELL T
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK FUCHS and UWE D. ZEITNER
Appeal 2020-004535
Application 14/395,424
Technology Center 2800

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–32, 34, and 36. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “FRAUNHOFER-
GESELLSCHAFT ZUR FORDERUNG DERANGEWANDTEN
FORSCHUNG E.V.” Appeal Br. 2.
Appeal 2020-004535
Application 14/395,424

2
CLAIMED SUBJECT MATTER
The claims are directed to a reflective diffraction grating and method
for the production thereof. Claim 16, reproduced below, is illustrative of the
claimed subject matter:
16. A reflective diffraction grating comprising:
a substrate;
a reflection-enhancing interference layer system, which
has alternating low refractive index dielectric layers having a
refractive index m and high refractive index dielectric layers
having a refractive index n2, where n2 > n1;
a grating comprising a grating structure, which is formed
in a topmost low refractive index layer on a side of the
interference layer system facing away from the substrate; and
a cover layer conformally covering the grating structure,
wherein the cover layer has a refractive index n3, where n3 > n1,
wherein the grating comprises interspaces formed by the grating
structure, and wherein the cover layer covers the grating structure
and the interspaces.

Independent claim 30 recites a method for producing a reflective
diffraction grating essentially corresponding to that of claim 16 (Claims
App. 10).
Appeal 2020-004535
Application 14/395,424

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Perry US 5,907,436 May 25, 1999
Wolfe US 7,054,065 B2 May 30, 2006
Maula US 2004/0197527 A1 Oct. 7, 2004
Knapp US 2009/0128939 A1 May 21, 2009
Shore Design of high-efficiency dielectric
reflection gratings, 14 J. Optical
Society of America 1124–1136
May 1997

REJECTIONS
Claims 16–18, 20–23, 25, 27–30, 34, and 36 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Shore and Wolfe. Final Act. 3.
Claims 19, 24, and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shore, Wolfe, and Knapp. Final Act. 9.
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Shore, Wolfe, and Maula. Final Act. 10–11.
Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Shore, Wolfe, and Perry. Final Act. 11.

OPINION
We review the appealed § 103(a) rejections for error based upon the
issues Appellant identifies, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
Appeal 2020-004535
Application 14/395,424

4
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner’s § 103(a) rejections for the reasons expressed
in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992).
Appellant argues that there is no reason to apply the protective cover
layer of Wolfe’s reflective diffraction grating to Shore’s reflective
diffraction grating since Wolfe’s cover layer of silicon nitride is taught to
protect the silver layer of Wolfe and Shore has no such silver layer (Appeal
Br. 5–6). Appellant also argues that a silicon nitride layer would not work
with high peak power pulses of Shore, and would significantly change the
optical properties of Shore (Appeal Br. 6). Finally, Appellant argues that the
Shore/Wolfe combination does not teach that the cover layer directly covers
the grating structure and a topmost high refractive index layer as recited in
dependent claims 34 and 36 (Appeal Br. 7). These arguments are not
persuasive of error in the Examiner’s rejections for reasons well stated by
the Examiner (Ans. 4–9). Appellant’s arguments fail to consider the breadth
Appeal 2020-004535
Application 14/395,424

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of the claim language, the applied prior art as a whole, and the inferences
that one of ordinary skill in the art would have made therefrom.
As discussed by the Examiner, Wolfe exemplifies the usefulness of a
durability (cover) layer on a reflective diffraction grating not only to protect
the silver layer but also to generally provide a barrier to contaminants (Ans.
5, 6). As also noted by the Examiner, “[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. . . . Rather, the test is what the
combined teachings of [those] references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See
Ans. 6. See also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
Appellant has also not provided a sufficient response to the
Examiner’s finding that, contrary to Appellant’s argument, one of ordinary
skill would have appreciated or readily inferred that Wolfe’s cover layer
would work even with the use of high energy pulses as taught in Shore, since
Wolfe indeed describes the use of high energy, short pulses (Ans. 7) (no
reply brief has been filed).
It is well settled that the reason for combining references does not
have to be identical to that of the applicant in order to establish
obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). “As
long as some motivation or suggestion to combine the references is provided
by the prior art taken as a whole, the law does not require that the references
be combined for the reasons contemplated by the inventor.” In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992).
Appeal 2020-004535
Application 14/395,424

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In light of the Examiner’s detailed explanations, Appellant has not
shown reversible error in the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art, using no more than ordinary
creativity, to have used a durable protective cover layer (of high refractive
index material) as exemplified in Wolfe’s reflective diffraction grating on
the reflective diffractive gratings exemplified in, e.g., Figure 16 of Shore
(Ans. 4–8; see also, Final Act. 3–6).
Furthermore, with respect to dependent claims 34 and 36, Shore
discusses that the grooves of the top (low refractive index) layer may reach
the hafnia (high refractive index) layer. Accordingly, one of ordinary skill
in the art would have readily appreciated or inferred that a cover (durable
protective) layer would cover both the grating structure and the topmost high
refractive index layer of the Shore/Wolfe combination.
Appellant does not provide any further arguments for the other
dependent claims, even those separately rejected. Accordingly, we affirm all
of the Examiner’s § 103(a) rejections on appeal.

CONCLUSION
The Examiner’s rejections are AFFIRMED.

Appeal 2020-004535
Application 14/395,424

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–18, 20–
23, 25, 27–
30, 34, 36
103(a) Shore, Wolfe 16–18, 20–
23, 25, 27–
30, 34, 36

19, 24, 26 103(a) Shore, Wolfe,
Knapp
19, 24, 26
31 103(a) Shore, Wolfe,
Maula
31
32 103(a) Shore, Wolfe,
Perry
32
Overall
Outcome
16–32, 34,
36

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED