Ex Parte DiCarlo et al

Patent Trial and Appeal Board

Feb 26, 2014

11054209 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JEFFREY M. DICARLO, STEVEN W. TROVINGER, and
ERIC MONTGOMERY
__________

Appeal 2011-012966
Application 11/054,209
Technology Center 2600
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
1. An imaging device analysis system comprising:
an emission assembly configured to emit light for use in analysis of an
imaging device configured to generate images from received light;
a light source configured to generate the light having a plurality of
spectral power distributions;
processing circuitry configured to control the generation of light by the
light source; and
wherein the emission assembly comprises an optical interface which
provides a plurality of light beams corresponding to the plurality of spectral
power distributions to the imaging device, and wherein the optical interface
emits the plurality of light beams at substantially the same intensity.

Cited References

Bawolek et al. US 6,205,244 B1 Mar. 20, 2001
Vogel et al. EP 1 349 432 A1 Oct. 1, 2003

Grounds of Rejection
Claims 1-14, 16-23, 25-29, and 31-42 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bawolek in view of Vogel.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
12. The following facts are highlighted:
1. Figure 5 of the Specification is reproduced below.
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Figure 2 shows the

[O]ptical interface 27 includes plural rows 60 of colored
regions and a single row 62 of white regions. More, less or
regions of other wavelengths and/or intensities may be provided
in other embodiments of optical interface 27.
Colored region rows 60 provide plural regions 28 of light
having different wavelengths. For example, in the depicted
embodiment, rows 60 include regions 28 sequentially
increasing in wavelength at increments of 25 nm from
ultraviolet light (375 nm) to infrared light (725 nm) providing
light which is spectrally and spatially separated. In the
illustrated example, row 62 comprises a plurality of regions Wl-
W5 of the same relative spectral power distribution and which
increase in intensity. . . .

(Spec., page 11 ¶ [0059] – [0060].)

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Discussion
ISSUE
The Examiner finds that Bawolek teaches each element claimed but

[F]ails to show controlling intensities using a [sic] optical
interface that emits the light.
Vogel '‘432 teaches a controller 200 that controls the
illuminator (plurality of light beams) output intensity depending
on user commands through a [sic] optional keypad or remotely
via a digital interface like for example a computer (See
Paragraphs 9-10 and 28-31).

(Ans. 4.) The Examiner concludes that

[I]t would have been obvious to one having ordinary skill in the
art at the time of the invention was made to modify the system
as suggested by the combination of Bawolek ‘244 with the
teachings of Vogel ‘432, adding an interface to the emission
assembly so the light emission can be controlled and
manipulated in order to obtained [sic] the desired results
depending on the type of calibration in order to improve the
systems accuracy and performance.

(Id.)

Appellants contend that the combination of references fails to teach
the optical interface, as claimed. In particular, Appellants argue that
Assuming arguendo that the Bawolek’s light source is the light
source recited in independent claim 1, Bawolek’s chamber
cannot be the optical interface recited in claim l. The optical
interface, e.g., the optical diffuser, presents substantially
uniform light having different wavelengths and intensities along
different regions of the optical interface. See Application, p. 6,
ll. 6-8; p. 11, ll. 5-7. The chamber of Bawolek is merely a
container with an aperture through which an imager device can
take a picture of the light from the light sources inside. See
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Bawolek col. 4, ll. 45-50. Accordingly, Bawolek’s chamber is
not the optical interface recited in independent claims 1, 16, 26,
and 29. . . .

Vogel does not remedy this deficiency of Bawolek. The
Examiner concedes that Bawolek fails to show “controlling
intensities using a optical interface that emits light.”
Final Office Action, p. 3. However, the Examiner asserts that
Vogel discloses “a controller 200 that controls the illuminator
(plurality of light beams) output intensity depending on user
commands.” Final Office Action, p. 3.

Respectfully, the controller is not the optical interface recited in
independent claims 1, 16, 26, and 29. The controller does not
present substantially uniform light having different wavelengths
and intensities along different regions. Rather, the controller
200 has a microprocessor, computer memory, and driver
circuits for LED driver circuit boards. See Vogel, p. 6, ll. 28-
30; Fig. 4. As such, the controller is not the optical interface
recited in independent claims 1, 19, 26, and 29.

(App. Br. 8-9.)

The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious?

PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
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burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
When a claim requires two separate elements, one element construed
as having two separate functions does not meet the claim’s terms. See
Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three
separate means not anticipated by structure containing only two means using
one element twice).

ANALYSIS
We do not find that the Examiner has provided evidence to support a
prima facie case of obviousness. The Examiner has failed to clearly and
particularly point out where in the cited combination of references an optical
interface that emits the plurality of light beams at substantially the same
intensity is disclosed.
Put another way, claim 1 requires both “processing circuitry” (a
computer/PC controller) and an “optical interface.” Apparently, the
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Examiner construes the “controller” of Vogel to be the “optical interface.”
(Ans. 5.) Both Bawolek (col. 4, l. 51) and Vogel (page 6 ¶¶ [0030]-[0032])
disclose a computer for controlling the LED’s. However, the same element,
the computer or PC (Vogel, page 6 ¶ [0030]), may not also be construed as
the “optical interface.” When a claim requires two separate elements, one
element construed as having two separate functions does not meet the
claim’s terms. See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed.
Cir. 1994).
In view of the above, the obviousness rejection is reversed.

CONCLUSION OF LAW
The preponderance of the evidence of record does not support the
Examiner’s obviousness rejection.

REVERSED

cdc