OPTICA AMUKA (A.A.) LTD.

Patent Trials and Appeals Board

Feb 2, 2021

2020001065 (P.T.A.B. Feb. 2, 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.
15/120,529 08/22/2016 Yoav Yadin 1142-1007.2 7627
82253 7590 02/02/2021
KLIGLER & ASSOCIATES PATENT ATTORNEYS LTD.
P.O. Box 57651
Tel Aviv, 61576
ISRAEL
EXAMINER
JUNG, JONATHAN Y
ART UNIT PAPER NUMBER
2871
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
alon@dkpat.co.il
daniel@dkpat.co.il
info@dkpat.co.il
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOAV YADIN,
YARIV HADDAD, and ALEX ALON

Appeal 2020-001065
Application 15/120,529
Technology Center 2800
Before KAREN M. HASTINGS, GEORGE C. BEST, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

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Application 15/120,529

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–16, 31, 32, and 34.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
CLAIMED SUBJECT MATTER3
Appellant describes the invention as relating to electrically-tunable
lenses. Spec. 1:10–12. According to the Specification, “[t]unable lenses are
optical elements whose optical characteristics, such as the focal length
and/or the location of the optical axis, can be adjusted during use. Id. at
1:14–15. Tunable lenses can be used to define a grid of pixels for a liquid
display device. Id. at 1:27–28. Appellant’s Specification also refers to an
embodiment where its system is configured to function as an ophthalmic
lens which provides dynamic vision correction. Spec. 14:32–15:3, Fig. 1; see
also Appeal Br. 6–7.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Optica
Amuka (A.A.) Ltd. Appeal Br. 1.
2 In the Answer, the Examiner withdrew the rejection of claims 3 and 33.
Ans. 3.
3 In this Decision, we refer to the Final Office Action dated October 3, 2018
(“Final Act.”), the Appeal Brief filed April 1, 2019 (“Appeal Br.”), the
Examiner’s Answer dated October 7, 2019 (“Ans.”), and the Reply Brief
filed November 24, 2019 (“Reply Br.”).
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Claims 1 and 14 are illustrative, and we reproduce those claims below
while adding emphases to key recitations on appeal:
1. An optical device, comprising:
an electro-optical layer, having an effective local index of
refraction at any given location within an active area of the
electro-optical layer that is determined by a voltage waveform
applied across the electro-optical layer at the location;
conductive electrodes extending over opposing first and
second sides of the electro-optical layer, the conductive
electrodes comprising an array of excitation electrodes, wherein
the excitation electrodes extend along respective, mutually-
parallel axes in a predefined direction across the first side of the
electro-optical layer, and wherein the array of the excitation
electrodes comprises at least first and second electrodes having
different, respective widths in a transverse direction,
perpendicular to the axes; and
control circuitry, which is coupled to apply respective
control voltage waveforms to the excitation electrodes and
to modify the control voltage waveforms applied to each of
the excitation electrodes concurrently and independently so
as to generate a phase modulation profile in the electro-optical
layer.
Appeal Br. 18 (Claims App.)
14. An optical device, comprising:
an electro-optical layer, having an effective local index of
refraction at any given location within an active area of the
electro-optical layer that is determined by a voltage waveform
applied across the electro-optical layer at the location, the
electro-optical layer having opposing first and second sides and
a layer thickness equal to a distance between the first and
second sides;
conductive electrodes extending over the first and second
sides of the electro-optical layer, the conductive electrodes
comprising an array of excitation electrodes comprising parallel
stripes of a transparent conductive material having gaps
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between the stripes of a gap width that is no greater than 2
μm and is less than the layer thickness of the electro-optical
layer; and
control circuitry, which is coupled to apply respective
control voltage waveforms to the excitation electrodes so as to
generate a phase modulation profile in the electro-optical layer.
Id. at 21. The third independent claim on appeal, claim 31, is similar to
claim 1 in requiring “coupling control circuitry . . . to modify the control
voltage waveforms applied to each of the excitation electrodes concurrently
and independently.” Id. at 21–22 (emphasis added).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Hikmet et al. (“Hikmet”) US 2010/0149444 A1 June 14, 2010
Takahashi US 2010/0157181 A1 June 24, 2010
REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1, 2, 4, 5, 8–13, 31, 32, and 34 under 35 U.S.C. § 102 as
anticipated by Takahashi. Final Act. 5.
B. Claims 6 and 7 under 35 U.S.C. § 103 as obvious over Takahashi in
view of Hikmet. Id. at 10.
C. Claims 14–16 under 35 U.S.C. § 103 as obvious over Takahashi. Id.
at 12.
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OPINION
Rejections A and B. The Examiner rejects claims 1, 2, 4, 5, 8–13, 31,
32, and 34 under 35 U.S.C. § 102 as anticipated by Takahashi and rejects
claims 6 and 7 under 35 U.S.C. § 103 as obvious over Takahashi in view of
Hikmet. Final Act. 6, 10. The Examiner finds that Takahashi teaches control
circuitry coupled to modify the control voltage waveforms applied to each of
the excitation electrodes concurrently and independently. Id. at 6 (citing
Takahashi Fig. 6, ¶ 75). The Examiner finds that Takahashi teaches two
different external drive circuits to enable providing voltages concurrently
and independently. Id. (citing Takahashi Figs. 7–10).
Appellant argues that Takahashi does not teach circuitry configured to
control voltage waveforms applied to each of the excitation electrodes
concurrently and independently. Appeal Br. 7. Appellant’s argument
persuades us of Examiner error. The Specification defines the word
“independently,” as claims 1 and 31 recite, as follows: “The term
‘independently’ means that a different, data-dependent waveform may be
applied to each electrode, along both X- and Y-axes.” Spec. 14:3–5.
The Examiner finds that Takashi teaches that electrode 11x can
receive voltage Vx while 12x receives ground voltage. Ans. 5. Appellant
does not dispute this point. Reply Br. 2. As Appellant emphasizes, however,
electrodes 11x and 12x each form an array of electrodes extending in the x
direction. Reply Br. 2. The Examiner agrees with Appellant that, for
example, “all electrodes 11x . . . receive the voltage simultaneously.” Ans. 5.
Takahashi, thus, does not teach a circuit that enables a “different, data
dependent waveform” to be applied to each of the 11x electrodes along the
X-axis. In other words, Takahashi does not teach that waveforms may be
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applied to excitation electrodes “independently” within the meaning of the
claims’ use of the term “independently.”
The Examiner determines that claim 1, for example, identifies that
“the excitation electrodes comprises at least first and second electrodes” and
determines that claim 1 is satisfied so long as two electrodes exist that
receive control voltage waveforms independently from each other. Ans. 5.
We agree with the Examiner that the recited “each of the excitation
electrodes” refers back the previously recited “array of the excitation
electrodes [which] comprises at least first and second electrodes.” Claim 1,
however, requires that the control circuitry be capable of “modify[ing] the
control voltage waveforms applied to each of the excitation electrodes
concurrently and independently.” Appeal Br. 18 (Claims App.). Independent
control, in turn, requires that “a different, data-driven waveform may be
applied to each electrode, along both X- and Y-axes.” Spec. 14:3–5. The
Specification’s reference to “each electrode, along both X- and Y-axes” is
best understood as referring to every electrode along both the X-and Y-axes.
See, e.g., id. at 17:24–29. The Examiner has not established that the recited
control circuitry is capable of modifying the control voltage waveforms
applied to “at least first and second electrodes” in such a manner that a
different, data-driven waveform may be applied to every electrode along X-
and Y-axes.
The Examiner’s treatment of claims depending from independent
claims 1 and 31 does not cure the error we address above. We, thus, do not
sustain these rejections.
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Rejection C. The Examiner rejects claims 14–16 under 35 U.S.C.
§ 103(a) as obvious over Takahashi. Id. at 12. Independent claim 14 does not
include the “independent” recitation we address above.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. 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 considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error as to this rejection. Thus,
we affirm the rejection for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not separately argue claims 15 or 16. We,
therefore, limit our discussion to claim 14. Claims 15 and 16 stand or fall
with claim 14. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
The Examiner finds that Takahashi discloses most of the recitations of
claim 14. Final Act. 12–13 (citing Takahashi). The Examiner finds that
Takahashi teaches a gap width of 5 µm and does not necessarily discloses
gaps between stripes with a width no greater than 2 µm. Id. at 13. The
Examiner finds, however, that Takahashi teaches a relationship between
“voltage application state and the produced lens effect.” Id. (citing
Takahashi Tables 1 and 2). The Examiner determines that it would have
been obvious to a person having ordinary skill in the art to adjust gap width
as an optimization of a result effective variable for the purpose of having a
fast response rate. Id.
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Appellant argues that the Examiner’s determination is in error because
a person of skill in the art would understood from Takahashi that “there is no
connection whatsoever between the [gap width] and the “2D switching
response time.” Appeal Br. 13–14. Appellant emphasizes that Takahashi’s
Tables 1 and 2 indicate that “d,” distance between upper and lower
substates,” impacts switching response time rather than gap width “a.” Id. at
11–15; see also Reply Br. 3–4 (providing a plot indicating that response time
is correlated with d).
Appellant’s argument does not persuade us of error. Courts have long
held that “where the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.”).
Here, the Examiner finds that Takahashi teaches that when “the lens
array device is scaled down” response times are reduced and finds that
“Takahashi establishes the scaling down of both the ‘a’ and ‘d’ dimensions
with a correlated reduction of response time.” Ans. 6. The preponderance of
the evidence supports the Examiner’s position. As Appellant’s recognize
(Appeal Br. 13–14), Takahashi explicitly teaches that switching response
time depends on “d.” Appeal Br. 13–14 (citing Takahashi ¶ 90). But
Takahashi also suggests that “a” should be smaller than “d” and that
reducing both “a” and “d” provides advantageous response times. See
Takahashi Tables 1 and 2. Reading Takahashi as a whole, a person of
ordinary skill in the art would have understood Takahashi as teaching that
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scaling down its device’s size—including scaling down of the gap between
stripes “a”—will improve response time. The Examiner, thus, adequately
establishes that gap between stripes is a result effective variable.
Because Appellant does not establish error, we sustain this rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 8–
13, 31, 32,
34
102 Takahashi 1, 2, 4, 5,
8–13, 31,
32, 34
6, 7 103 Takahashi, Hikmet 6, 7
14–16 103 Takahashi 14–16
Overall
Outcome
14–16 1, 2, 4–13,
31, 32, 34
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).
AFFIRMED IN PART