Ex Parte Barrett et alDownload PDFBoard of Patent Appeals and InterferencesJun 21, 201211150478 (B.P.A.I. Jun. 21, 2012) Copy Citation 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. 11/150,478 06/11/2005 Steven F. Barrett UWYO.02USU1 1976 27479 7590 06/22/2012 COCHRAN FREUND & YOUNG LLC 2026 CARIBOU DR SUITE 201 FORT COLLINS, CO 80525 EXAMINER SOHN, SEUNG C ART UNIT PAPER NUMBER 2878 MAIL DATE DELIVERY MODE 06/22/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEVEN F. BARRETT, MICHAEL J. WILCOX, DONALD C. THELEN, JR., and DAVID F. COX ____________ Appeal 2009-015073 Application 11/150,478 Technology Center 2800 ____________ Before DENISE M. POTHIER, BRUCE R. WINSOR, and ANDREW CALDWELL, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015073 Application 11/150,478 2 Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 4-9, and 11-15, which constitute all the claims pending in this application. Claims 2, 3, and 10 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants’ invention relates to “optical sensors and, more particularly, to combining the analog outputs from a plurality of photosensors adapted for viewing an object, whereby image parameters, such as edge magnitude, edge orientation, and edge polarity, as examples, can be extracted.” (Spec. 2:16-19). Claims 1 and 9, which are illustrative of the invention, read as follows: 1. An optical-imaging apparatus comprising: at least two optical sensors disposed in a chosen spatial configuration such that neighboring optical sensors included in said at least two optical sensors have overlapping fields of view, for receiving optical signals from an object illuminated solely by ambient light at least a portion of said object being located within the field of view of said at least two optical sensors, said at least two optical sensors having analog outputs; means for simultaneously receiving the analog outputs of said at least two optical sensors in response to the optical signals; and means for processing the analog outputs in parallel to generate image features of the object. 9. A method for obtaining image features from an object illuminated solely by ambient light, comprising the steps of: receiving optical signals from the object on at least two optical sensors having overlapping fields of view within which Appeal 2009-015073 Application 11/150,478 3 at least a portion of the object is located, and from which analog outputs are generated; simultaneously receiving the analog outputs from the at least two optical sensors responsive to the optical signals; and processing the analog outputs in parallel to generate image features. Claims 1, 4-6, 9, 12, and 13 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hardin (US 5,642,299; June 24, 1997) (Ans. 3-5). Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hardin. (Ans. 5). Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hardin in view of Sick (US 4,181,398; Jan. 1, 1980). (Id.). Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hardin in view of Chen (US 6,215,113 B1; Apr. 10, 2001). (Ans. 6). Rather than repeat the arguments here, we refer to the Briefs (Substitute App. Br. filed Feb. 27, 2009; Reply Br. filed Jan. 16, 2008)1 and the Answer (Ans. mailed Nov. 16, 2007) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). 1 The Appeal Brief filed September 4, 2007, has not been considered as it is deemed to have been superseded by the Substitute Appeal Brief filed February 27, 2009. Appeal 2009-015073 Application 11/150,478 4 ISSUES Did the Examiner err in rejecting claim 1 as anticipated by Hardin? More particularly, does Hardin disclose a “means for processing the analog outputs in parallel to generate image features of the object” (hereinafter the “means for processing”)?2 Did the Examiner err in rejecting claim 9 as anticipated by Hardin? Did the Examiner err in rejecting claim 11 as unpatentable over Hardin? Did the Examiner err in rejecting claim 14 as unpatentable over Hardin in view of Sick? Did the Examiner err in rejecting claim 15 as unpatentable over Hardin in view of Chen? ANALYSIS CLAIM 1 At the outset we note that although the Examiner and Appellants discuss claims 1 and 9 together (Ans. 4, 6-9; App. Br. 4-8; Reply Br. 2-11), we consider the Examiner’s and Appellants’ positions in light of the language of each claim. Our analysis here relates only to claim 1, which is an apparatus claim with limitations drafted in means-plus-function format. Claim 9, a method claim, is discussed infra. 2 Appellants’ contentions raise additional issues regarding claim 1. As we find the identified issue to be persuasive of Examiner error and dispositive of the rejection of claim 1, we do not reach the additional issues. Appeal 2009-015073 Application 11/150,478 5 The Examiner finds that Hardin’s analog-to-digital converters 302, 308 (Hardin Fig. 18; col. 1, l. 60 – col. 2, l. 16; col. 12, ll. 27-38) disclose the means for processing (Ans. 4). The Examiner explains as follows: Although Hardin might not display the image or manipulate the image, the image data is generated via analog to digital conversion and computation to determine position information of the object, all of which is reasonably considered “processing.” The limitation “to generate image features of the object” also does not require displaying an image or manipulating an image. The system of Hardin converts the signals to digital format for computation thus “generat[ing] image features of the object.” That is, the signals represent the entire image. Therefore, the signals inherently contain “image features.” Hardin discloses processing the image signals so that the images are ready for the rest of the system to calculate information regarding the object. See e.g., column 9, lines 1- 19. The claim language does not require a more specific reading that would preclude this kind of system. (Ans. 8). Appellants contend that Hardin does not disclose the means for processing because: [a]s Hardin et al. indicates in Col. 2, lines 38-40, all processing is done in the host computer using digital data processing techniques. Furthermore, the algorithms described by Hardin et al. are performed in a sequential manner . . . . Therefore, Hardin et al. does not describe a system . . . using analog information processing via operational amplifiers to extract image features. . . . . Clearly, Hardin et al. is using digital processing techniques to extract image primitives versus analog processing as claimed in the present claims. (Reply Br. 11). We agree with Appellants. The means for processing is recited in means-plus-function form as provided for by statute: Appeal 2009-015073 Application 11/150,478 6 An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112, ¶ 6 (emphasis added). The plain and unambiguous meaning of paragraph six is that one construing means-plus-function language in a claim must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure. . . . [P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court. In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). The Examiner’s findings and explanations do not persuade us that the Examiner construed the claim “to cover the corresponding structure, material, or acts described in the [S]pecification and equivalents thereof.” Appellants contend that the structure disclosed in the Specification corresponding to the means for processing is analog electronics 42 which comprises analog operational amplifiers to extract image parameters such as edge magnitude, orientation, polarity, and their derivatives. (App. Br. 3; see Spec. 5:15-23; 11:7-13; Fig. 5A). Although neither Appellants nor the Examiner expressly addresses the range of equivalents of the disclosed structure, the overall thrust of Appellants’ argument (App. Br. 7-8; Reply Br. 14) is that the structure disclosed by Hardin (see Hardin Fig. 18) is not the same as, or equivalent to, the disclosed structure. We agree. Hardin’s processing structure comprises parallel analog-to-digital converters 302 and Appeal 2009-015073 Application 11/150,478 7 308 (Hardin Fig. 18), which do no more than change the form of the data. Further processing of data is performed by digital processing and memory elements 304, 312, 314, 316, and 318 and a digital computer accessed through computer data and control buses. Such a digital processing structure, which is inherently sequential, is not equivalent to the primarily parallel analog processing structure disclosed in the Specification, as it functions in a substantially different way. We conclude that the Examiner erred in rejecting claim 1 as anticipated by Hardin. Also, concerning the rejections of claims 7 and 8, the Examiner has not relied upon Sick or Chan to teach the means for processing or cure the above-noted deficiency. See Ans. 5-6. Therefore, we will not sustain the rejection of claim 1 or the rejections of claims 4-8, which depend from claim 1. CLAIM 9 As noted supra, although Appellants and the Examiner have discussed claims 1 and 9 together, we analyze the arguments based on the language of each claim separately. Unlike claim 1, claim 9 is a method claim that does not recite limitations in a means-plus or step-plus-function format. We conclude that claim 9 does not invoke the provisions of 35 U.S.C § 112, 6th paragraph. We have reviewed Appellants’ arguments (App. Br. 4-8; Reply Br. 2- 11) in light of the Examiner’s findings (Ans. 4) and explanations (Ans. 6-9). We agree with the Examiner’s findings and explanations (Ans. 4, 6-9) as they apply to claim 9, and adopt them as our own. We provide the following analysis and comments for emphasis. Appeal 2009-015073 Application 11/150,478 8 During prosecution a claim is to be given its broadest reasonable interpretation as it would have been understood by one of ordinary skill in the art in light of the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), without importing limitations from the Specification into the claim, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).3 We conclude that the Examiner properly construed claim 9 and find that the Examiner articulated a reasonable mapping of the elements of the claim onto Hardin’s disclosure. We are not persuaded of error in the Examiners’ mapping. By way of example, the Examiner has found that the conversion performed by Hardin’s analog-to-digital converters 302 and 308 (Hardin Fig. 18; col. 1, l. 60 – col. 2, l. 16; col. 12, ll. 27-38) discloses “processing the analog outputs in parallel to generate image features” (hereinafter the “processing step”). (Ans. 4). See also the Examiner’s explanation (Ans. 8) quoted supra. Note the use of the open ended transition word “comprising” in the preamble of claim 9. We conclude that the processing step of claim 9 does not require that the entire generation of image features is performed by 3 Appellants have cited (Reply Br. 8-10) case law pertaining to claim interpretation. However, during prosecution it is error to: appl[y] the mode of claim interpretation that is used by courts in litigation, when interpreting the claims of issued patents in connection with determinations of infringement or validity. This is not the mode of claim interpretation that is applicable during prosecution of a pending application before the PTO. During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. . . . The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (citations omitted). Appeal 2009-015073 Application 11/150,478 9 parallel processing of the analog signal, merely that the generation of image features must include (i.e., comprise) parallel processing of analog signals. Appellants’ argument regarding Hardin’s failure to disclose “using analog information processing via operational amplifiers to extract image features” (Reply Br. 11) is unpersuasive because it argues limitations not found in the claim. See SuperGuide, 358 F.3d at 875. We find, as did the Examiner, that Hardin’s parallel processing of analog signals that convert the signals to digital signals and which is part of the generation of image features meets the processing step limitation of claim 9. To the extent that Appellants argue that Hardin teaches away from the invention of claim 9 (App. Br. 8; Reply Br. 11) “the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.” Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Appellants have not persuaded us of error in the Examiner’s rejection of claim 9 as anticipated by Hardin. We will, therefore, sustain the rejection of claim 9 and of dependent claims 12 and 13, which were not separately argued. CLAIMS 11, 14, AND 15 Common Arguments Appellants contend, “[s]ince the Examiner has not asserted that subject claim 9 is obvious over Hardin et al., [A]ppellants believe that claim 11, which depends from claim 9, is nonobvious.” (App. Br. 8 (citing In re Fine, 837 F.2d 1071 (Fed. Cir. 1988))). This contention is unpersuasive as the Examiner has asserted, and we agree supra, that claim 9 is anticipated by Hardin and “[i]t is well settled that anticipation is the epitome of Appeal 2009-015073 Application 11/150,478 10 obviousness,” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (citation omitted) (internal quotation marks omitted). For the same reason, Appellants’ similar contentions regarding claims 14 and 15 (App. Br. 9) are also unpersuasive. To the extent that Appellants are contending that Hardin teaches away from the use of operational amplifiers in the processing step (App. Br. 8-9), we are unpersuaded. Although Appellants assert that “Hardin et al. indeed teaches away from the present claimed invention [as] clearly set forth” in Appellants’ Briefs (Reply Br. 12), at most Appellants have shown that Hardin discloses a different structure from that disclosed by Appellants’ Specification. Appellants do not identify any specific persuasive teaching in Hardin that criticizes, discredits, or otherwise discourages the use of operational amplifiers as recited in claim 11, or as articulated by the Examiner in the grounds for rejection (Ans. 5). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). It is well settled that mere attorney’s arguments and conclusory statements, which are unsupported by factual evidence in the record, are entitled to little probative value. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellants’ similar contentions that Hardin teaches away from the inventions recited in claims 14 and 15 (App. 8-9; Reply Br. 11-12) are unpersuasive for the same reason. Claim 11 The Examiner finds that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to make an operational amplifier part of the structure of Hardin in order to amplify the signals sent from the sensors.” (Ans. 5). The Examiner explains that “it is well known in the art to use operational amplifiers for a variety of purposes. Appeal 2009-015073 Application 11/150,478 11 Operational amplifiers are often used in image processing because they are inexpensive and extremely versatile in function.” (Ans. 10). Appellants contend that “Hardin et al. does not mention operational amplifiers because such apparatus is not used to process digital signals.” Reply Br. 13. This contention is unpersuasive because the Examiner’s articulated grounds of rejection states that it would have been obvious to use operational amplifiers to amplify the output of Hardin’s optical sensors (Ans. 5), which Hardin discloses as an analog signal (Hardin Fig. 18: video input to 8-bit analog-to-digital converters 302 and 308). Appellants further contend that “[o]perational amplifiers are used in the present claimed invention to extract image primitives, not merely to amplify the analog signals from the sensors.” (Reply Br. 13). However, these limitations are not recited in claim 11. See SuperGuide, 358 F.3d at 875. Finally, Appellants contend, for the first time in the Reply Brief, with no explanation as to why the contention was not earlier presented, that: Appellants believe that the Examiner has not properly supported the assertion that it would have been obvious to one of ordinary skill in the art at the time of the invention was made to make an operational amplifier part of the structure of Hardin et al. in order to amplify the signals sent from the sensors. (Reply Br. 13 (citing 37 C.F.R. § 1.104(d)(2)); compare Fin. Rej.4 4). Such an argument is untimely and waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). 4 Final Rejection mailed Mar. 14, 2007. Appeal 2009-015073 Application 11/150,478 12 Claim 14 Appellants contend, for the first time in the Reply Brief, with no explanation as to why the contention was not earlier presented, that: FIG. 2 of Sick shows sensors arranged in a circular configuration with a sensor in the center. Further, the sensors are spaced apart and do not show the close hexagonal packing suggested by the Examiner. . . . [T]he Examiner has not provided any teaching, suggestion or motivation for a practitioner to combine Sick with Hardin et al. in the manner proposed by the Examiner, and that the Examiner has failed to make a proper prima facie case of obviousness as is required under 35 U.S.C. 103(a). (Reply Br. 12; compare Fin. Rej. 4). Such an argument is untimely and waived. See Borden, 93 USPQ2d at 1474. Claim 15 Appellants’ contentions regarding claim 15 are discussed supra under the heading “Common Arguments.” Summary for the Rejections of Claims 11, 14, and 15. Appellants have not persuaded us of error in the Examiner’s rejection of (1) claim 11 as unpatentable over Hardin; (2) claim14 as unpatentable over Hardin and Sick; (3) and claim 15 as unpatentable over Hardin and Chen. We will, therefore, sustain the rejections of claims 11, 14, and 15. ORDER The decision of the Examiner to reject claims 9 and 11-15 is affirmed. The decision of the Examiner to reject claims 1 and 4-8 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). Appeal 2009-015073 Application 11/150,478 13 AFFIRMED-IN-PART babc Copy with citationCopy as parenthetical citation