Ex Parte Barrett et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11150478 (B.P.A.I. Jun. 21, 2012)

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

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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
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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.
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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.
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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:
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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
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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.
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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).
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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
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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.
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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.
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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).
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AFFIRMED-IN-PART

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