Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE GORDON GOULD
Appeal No. 87-2028
December 23, 1987
HEARD: September 23, 1987
Application Serial Number 869,831 filed January 16, 1978, which is a division of application Serial No. 823,665, filed August 11, 1977, which is a division of application Serial No. 498,065 filed August 16, 1977, which, in turn, is a continuation of application Serial Nos. 644,035 filed March 6, 1967 and 804,540 filed April 6, 1959. Polarizing Apparatus Employing An Optical Element Inclined At Brewster's Angle.
Roy H. Wepner, Esq. of Lerner, David, Littenberg, Krumholz & Mentlik for appellant
By the Board:
Saul I. Serota, Ian A. Calvert, Paul J. Henon
Gordon Gould (Gould) appeals from the final rejection of claims 5, 10, and 11, all the claims remaining in the application. In his answer, the examiner dropped a number of rejections involving at least one of the claims on appeal and maintained five rejections. After consideration of appellant's position papers, the examiner's answer, and the references of record, and after having heard oral argument on September 23, 1987, we reverse each remaining ground of rejection.
THE CLAIMS ON APPEAL
The claimed subject matter relates to an apparatus for polarizing light by taking advantage of the polarization effects achieved by placing a surface of an optical element at Brewster's angle to a ray of light. Gould's invention utilizes interplay between a mechanism to pass light back and forth (such as a set of mirrors) and the surface placed at Brewster's angle. Although the use of an optical element positioned at Brewster's angle to a source of light results in the formation of completely polarized light in one direction and the formation of partially polarized light (containing unpolarized light) in another direction and the conventional wisdom in the art was to work with the completely polarized (but weak) light, Gould's invention is based on passing the partially polarized light (containing unpolarized light) back and forth between the set of mirrors or the like. As this light makes its traversals of the light path and keeps intersecting the optical element positioned at Brewster's angle, the light becomes more polarized. More particularly, the appealed claims read:
5. In combination:
a source of unpolarized light rays;
means for directing certain of said unpolarized light rays to multiply traverse a predetermined path;
an optical element having a first surface; and
means for mounting said optical element to intersect said unpolarized light rays with a line perpendicular to said first surface inclined to said path substantially at Brewster's angle thereby passing one polarization of said light rays and reflecting some of the light rays of the other polarization upon each traversal of said predetermined path.
10. The combination according to Claim 5 in which the directing means includes a pair of reflectors.
*2 11. In combination:
a walled enclosure containing a source of unpolarized light rays, said unpolarized light rays consisting of a first polarization and a second polarization; and
means including at least one pair of reflectors for directing certain of said unpolarized light rays to multiply traverse a predetermined path, at least one of said reflectors being outside of and spaced from said enclosure, a portion of said path being within said enclosure, said path intersecting said enclosure at an optical interface, a line perpendicular to said optical interface being inclined to said path substantially at Brewster's angle so that upon each traversal of said predetermined path said interface passes substantially all of said light rays having said first polarization and reflects a fraction of said light rays having said second polarization while passing the remainder of said light rays
having said second polarization.
The references relied on by the examiner are:
Martin 2,726,173 December 6, 1955
Dicke 2,851,652 September 9, 1958
Schawlow (et al.) 2,929,222 March 22, 1960
(filed July 30, 1958)
Adams (et al.) 3,073,168 January 15, 1963
(filed October 3, 1958)
U.K. Patent Spec. 319,869 Smith (et al.) October 3, 1929
Schawlow (et al.), Physical Review, Vol. 112, No. 6, pp. 1940 to 1949 (December 15, 1958).
Partington, An Advanced Treatise on Physical Chemistry, Vol. 4, 1953, Longmans, Green & Co., pp. 104 to 107.
Jenkins (et al.), Fundamentals of Optics, 1950, McGraw-Hill, pp. 225 to 228, 264 to 275, 444 to 448, and 494 to 498.
Claims 5, 10, and 11
There is one rejection involving all of claims 5, 10, and 11. These claims stand rejected under 35 U.S.C. § 112, first paragraph, on the ground that the disclosure is enabling "only for claims limited to the inclusion of an amplifier or a population inversion in the medium, between the reflectors."
The apparent basis for the rejection is that appellant presented arguments in (at one time) copending application 05/823,665 (application Serial No 823,665 filed August 11, 1977) that "appear inconsistent with statements in the present case." These statements relate to the source of unpolarized light called for in the claims.
*3 The examiner cited MPEP 706.03(n) and MPEP 706.03(z) in support of his rejection. MPEP 706.03(n) is titled "Correspondence of Claim and Disclosure" and contains the statement, "It must be kept in mind that an original claim is part of the disclosure and might adequately set forth subject matter which is completely absent from the specification." MPEP 706.03(z) relates to "Undue Breadth" and the topic is discussed in terms of arts where results are predictable and arts where results are unpredictable. We believe that the subject matter as claimed in this case, which subject matter we regard in its broadest sense as directed to optics and not laser oscillators or amplifiers, is in a predictable art.
We commence our analysis with a review of the application as filed to determine if the application itself is enabling; that review includes a consideration of both the specification and the original claims constituting part of the original disclosure. In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973), reh'g denied, 480 F.2d 879, 178 USPQ 149 (CCPA 1973). The sentence quoted above from MPEP 706.03(n) relates to this requirement without citation to case law. We make our evaluation as of the filing date of this application, January 16, 1978. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.Cir.1986), cert. denied, 107 S.Ct. 1606 (1987).
Portions in the specification discussing the polarization effect include page 13, lines 4 to 8; page 13, line 24 to page 14, line 1; page 15, lines 4 to 8; page 36, line 1 to page 39, line 12; page 47, line 25 to page 48, line 13; and page 87, line 15 to page 91, line 23. Original claim 5 in the application on appeal called for, in combination,
"a source of light rays;
means for directing certain of said light rays to multiply traverse a predetermined path;
an optical element having a first surface; and
means for mounting said optical element with said first surface inclined to said path substantially at Brewster's angle."
From a review of the specification and the claims as filed, we are satisfied that the person of ordinary skill in the art would be able, from a review of the specification and claims alone (and without benefit of additional disclosure), to practice the claimed invention. Our review was conducted in accordance with the analysis given in In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971). There, the court stated that an initial inquiry "is merely to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity." 439 F.2d at 1235, 169 USPQ at 238. The court then stated, "Once having determined that the subject matter defined by the claims is particular and definite, the analysis then turns to the first paragraph of section 112 to determine whether the scope of protection sought is supported and justified by the specification disclosure." Id. We believe that each of claims 5, 10, and 11 "set out and circumscribe a particular area with a reasonable degree of precision and particularity." Nowhere in the above-indicated portions of the specification, which we reviewed, do we find any indication that it is necessary for an amplifier or population inversion to be present between the reflectors for the device to operate. We are convinced that the disclosure is enabling for the claims on appeal, which are more restricted than the claims originally filed. Accordingly, it is unnecessary for us to consider whether the copending application contained arguments "that appear inconsistent with statements in the present case." We do note that we had previously disapproved of reliance on statements in other applications as grounds for rejection without using the statements directly as justification for the rejection. See Ex parte Gould, 231 USPQ 949, 954-55 (PTO Bd.Pat.App. & Int.1986). Lastly, we note that the subject matter claimed in this application and the subject matter claimed in Gould's application Serial No. 823,665 are different.
*4 Three art rejections have been made with respect to these claims; the first rejection is made under 35 U.S.C. § 102 and the remaining rejections are under 35 U.S.C. § 103.
a. The rejection under 35 U.S.C. § 102
Claims 5 and 10 are deemed by the Examiner to be anticipated under 35 U.S.C. § 102(b) by Partington. The examiner refers to the polarizer depicted in Fig. 7.XB. at page 106 and considers optical element AB positioned at Brewster's angle and movable about a horizontal axis to be the claimed "means for mounting." The examiner regards the "means for directing" to read on mirrors C and S and states, "Partington thus shows the claimed structure and, [sic] this structure is capable of functioning in the manner recited in the claims."
Gould has argued throughout the prosecution of this case that, while all the elements of his claimed device were known (and are shown in Partington), the elements were not arranged in the manner required by the claims. We agree. Claim 5 specifically requires "means for directing certain of said unpolarized light rays to multiply traverse a predetermined path." (Emphasis ours.) The arrangement shown in Partington has light ray ab strike optical element AB, which is set at Brewster's angle, in such a way that the completely polarized light (and not the partially polarized light containing some unpolarized light) will move from optical element AB to mirror C and then possibly pass back through the optical element and then to mirror S, which would cause the completely polarized light "to multiply traverse a predetermined path." Placement of the light source somewhere else in the polarizer depicted in Partington may accomplish Gould's desired (and claimed) objectives (multiple traversal of certain of the unpolarized light over a predetermined path), but Partington neither discloses nor suggests same. Partington does not anticipate the claimed invention and there is nothing in Partington that would give the artisan any reason to change the polarizer configuration in Fig. 7.XB. A predecessor to our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, pointed out that "to constitute an anticipation, all material elements recited in a claim must be found in one unit of prior art." In re Marshall, 578 F.2d 301, 304, 198 USPQ 344, 346 (CCPA 1978). It is apparent that not "all material elements recited in" claims 5 and 10 are found in Partington.
b. The first 35 U.S.C. § 103 rejection
*5 The primary reference is said to show a resonator as is the device shown in either the Schawlow patent or the Schawlow article "but with no mode discrimination." Dicke relates to masers (microwave amplification by the stimulated emission of radiation), predecessors to the development of lasers, and the reference itself is acknowledged as prior art by Gould in the application at page 8, line 19 and by Schawlow in the Schawlow article in the note at page 1945. The Dicke maser is configured as a resonator in order to propagate electromagnetic waves at a frequency that is characteristic of the transition of molecules from an upper energy state to a lower energy state. Fig. 10 of Dicke shows a form of cavity resonator for use at the near end of the infra-red spectrum. The cavity resonator is formed of plates made of layers of infra-red transparent, low loss materials having different indices of reflection. Dicke states that this resonator
works similarly to a so-called "etalon" in the visible light region. Infra-red waves between the two plates are partially passed through the plates and partially reflected from the different plate layers. The result is a standing wave pattern set up between the plates and an infra-red coherent signal output through one of the plates.
Column 10, lines 34 to 40.
The Schawlow patent describes a laser having a system that will allow a light beam to resonate and be polarized. The resonation and polarization functions are accomplished by using parallel sapphire plates having a gold plating thereon. The patentees describe the system thusly:
Each of the flat parallel assemblies 16 and 17 of the device shown in Fig. 2 advantageously includes as a component part thereof a material which reflects most of the energy incident thereupon. Thus, for example, an assembly comprising sapphire 16a, which material is characterized by good chemical inertness and excellent transmission properties, particularly for infrared wavelengths, and having a coating of gold 16b, typically about 500 angstrom units thick, on the outer surface of the sapphire member, may be included in specific embodiments of this invention. Such an assembly exhibits 97 percent reflectivity, 2 percent absorptivity, and 1 percent transmitivity to wavelengths in the infrared range.
The inner and outer parallel faces of each sapphire plate reflect a small portion of the radiation directed thereat. Therefore, the thickness of the sapphire plates should advantageously be chosen such that the reflections from the two faces of each plate add in phase.
It is noted that the phase angle between the reflections from the two faces or surfaces of each sapphire member depends on the thickness and the refractive index thereof. Since sapphire is crystalline and the refractive index is different for ordinary and extraordinary rays, the thickness may be chosen to give constructive interference for one polarization and destructive interference for the polarization perpendicular thereto, in that manner discriminating between modes traveling in the same direction but having different polarizations.
*6 Thus, Schawlow can control resonance and polarization by paying attention to the thickness of the sapphire plates. The specific purpose of the gold coating is not disclosed.
Martin, Smith, and Jenkins were all cited to show the conventional knowledge "that a transparent plate positioned at Brewster's angle to light will act as a polarization discriminator."
The examiner concluded that
"[i]t would have been obvious to modify Dicke by using the sapphire plate system of either Schawlow ... reference to obtain mode discrimination via polarization discrimination and the advantages thereof. It would have been obvious to modify Dicke further by using instead of the Schawlow ... sapphire plate system, the Smith ... or Martin system of an optical element inclined at Brewster's angle (see the Jenkins ... discussion of Brewster's angle) between or on the Dicke resonator end plates, as both of the Schawlow ... plate system and the Smith ... and Martin systems are known to perform the same function."
We disagree with the examiner's reasoning and the conclusions reached thereby.
A vital assumption that must be made to support the rejection is that the Schawlow references disclose a way in which the end plates can be dissected to carry out each of the described functions of resonation and polarization separately. Neither Schawlow reference contains such disclosure. Lacking such disclosure, it is impossible for the rejection to stand. While Schawlow does indicate that plate thickness determines resonance and polarization both, there is no contemplation, where resonance and polarization are both to be present, of achieving same with anything other than a parallel plate arrangement. Dicke's device, which accomplishes resonance only, can not and does not provide the requisite motivation to the artisan to segregate and separate the resonation and polarization functions provided by the parallel end plates in the Schawlow device. Moreover, even if Dicke provided the necessary motivation and suggestion to do so, we see nothing in the Schawlow articles that would indicate that the device could be so modified. We believe that the only way the pieces of prior art disclosure could have been fitted into the figurative puzzle that depicts Gould's invention is to use Gould's specification as a guide, a practice not permitted by law. The motivation to undertake the change must come from the art and not from Gould's disclosure. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed.Cir.1984).
Claims 5 and 10 lastly stand rejected under 35 U.S.C. § 103 as unpatentable over the Schawlow patent or the Schawlow article in view of either Smith or Martin taken with Jenkins. The examiner states that the "use of the Smith ... or Martin type of Brewster angle polarization discriminator to replace the Schawlow ... references' interference type of discriminator is [sic: would have been] obvious as such amounts to the substitution of one known polarization means for another." This rejection must fall also. The Schawlow references give no suggestion whatsoever that one would want to or could break up the resonator-polarization element to utilize only the polarization portion. The existence of apparatus containing Brewster angle plates, whether alone or in stacks, as shown in Smith, Martin, and Jenkins simply cannot provide the necessary suggestion to the artisan to modify so drastically the arrangement depicted in Schawlow.
*7 Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable over Dicke in view of either the Schawlow patent or the Schawlow article and either Smith or Martin taken with Jenkins "as applied to claims 5 and 10" further in view of either Falconi or Adams. The latter two patents were cited to show that "it is conventionally known that in systems involving a pair of reflectors, one of the reflectors could be outside the enclosure as long as the wall of the enclosure has an optical window in the optical path between the two reflectors." Neither Falconi nor Adams supply what is necessary to overcome any of the deficiencies in the other references in the rejection regarding the break up (as it were) of the resonator and polarization functions of the Schawlow device. Lacking such a suggestion, this rejection, as the previously discussed rejections, cannot stand.
We acknowledge that affidavits were submitted in support of the patentability of the claims. There is no need to address those documents in view of our disposition of the rejections.
We recognize that a previous board panel had affirmed a rejection under 35 U.S.C. § 103 of claim 5 in a form different from the claim considered by us. The prior panel was not presented with the claims in the form as they appear before us nor did that panel have the benefit of the more greatly developed record as we have. We therefore believe that the prior decision is not controlling.
The examiner's decision refusing to allow the claims on appeal is reversed.
Saul I. Serota
Ian A. Calvert
Paul J. Henon