Ex Parte GarinDownload PDFPatent Trial and Appeal BoardJun 23, 201712312032 (P.T.A.B. Jun. 23, 2017) 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. 12/312,032 02/04/2010 Jean-Francois Garin 71247-0110 4981 22902 7590 06/26/2017 TT ARK ^ RRODY EXAMINER 1700 Diagonal Road, Suite 510 Alexandria, VA 22314 TORRENTE, RICHARD T ART UNIT PAPER NUMBER 2485 MAIL DATE DELIVERY MODE 06/26/2017 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 PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-FRANCOIS GARIN Appeal 2015-006600 Application 12/312,032 Technology Center 2400 Before: CARLA M. KRIVAK, CAROLYN D. THOMAS, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from rejections of claims 1—16. We have jurisdiction under 35 U.S.C. § 6(b). Oral argument was held on April 6, 2017. We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). Appeal 2015-006600 Application 12/312,032 CLAIMED INVENTION According to Appellant, the disclosed invention “concerns the technical area of inspecting hollow, translucent or transparent objects or articles, such as bottles or jars, with a view to detecting any defects occurring in these objects and which have the characteristic of reflecting light.” Spec. 1. Claim 1, reproduced below with disputed limitations italicized, is illustrative of the claimed subject matter: 1. An optical inspection station to detect light-reflecting defects shown by a transparent or translucent hollow object driven in rotation about its axis of symmetry, the inspection station comprising: a lighting system able to supply a series of light beams illuminating one inspection area of the object at different angles of incidence, a camera equipped with a lens producing images of the inspection area during rotation of the object, the lens having a field angle, characterized in that the optical inspection station comprises a series of optical elements deflecting into air in a direction of the lens rays reflected by the one inspection area arranged between the one inspection area and the lens so as to divide the field angle of the lens into different areas, each area corresponding to a view of the one inspection area taken from different viewing angles, so as to form an image of the one inspection area, said image comprising a series of views of the one inspection area taken at different viewing angles. REFERENCES Juvinall Hirahara et al. US 6,175,107 B1 Jan. 16,2001 US 7,289,646 B2 Oct. 30, 2007 2 Appeal 2015-006600 Application 12/312,032 REJECTIONS Claims 1—5 and 7—16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Juvinall and Hirahara. Final Act. 3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Juvinall, Hirahara, and Applicant Admitted Prior Art. Final Act. 4. ANALYSIS Claims 1, 2, 4, 5, 7, 9, 11, and 12 The Examiner finds Juvinall teaches all elements of independent claim 1 with the exception of “the optical inspection station comprises a series of optical elements deflecting into air in a direction of the lens rays reflected by the one inspection area arranged between the one inspection area and the lens so as to divide the field angle of the lens into different areas, each area corresponding to a view of the one inspection area taken from different viewing angles, so as to form an image of the one inspection area, said image comprising a series of views of the one inspection area taken at different viewing angles.” Ans. 4. The Examiner finds the combination of Hirahara and Juvinall teaches or suggests this element. Id. at 4—5. Appellant argues Juvinall does not form a series of views of one inspection area taken at different angles because Juvinall produces its images using light sources that are alternatively energized. App. Br. 15; Reply Br. 1—2. The Examiner disagrees, finding lens 27 and lens 29 of Juvinall provide two views of an inspection area from different viewing angles and, therefore, Juvinall forms the requisite series of views. Ans. 8—9, citing Juvinall Figs. 1, 4A and 4B. Appellant responds that the images 3 Appeal 2015-006600 Application 12/312,032 produced by lens 27 and lens 29, shown in Juvinall’s Figures 4A and 4B, each constitute only one view at one viewing angle. Reply Br. 2. We, however, are not persuaded by this argument because although Figures 4A and 4B, each in isolation, may only show one view at one viewing angle, collectively they provide an image with two views at two different viewing angles. Juvinall Figs. 4A and 4B. Hirahara also teaches producing an image with a series of views at different viewing angles.1 Ans. 5; Hirahara Figs. 2 and 5. Appellant further argues Juvinall and Hirahara cannot be combined because Juvinall alternately energizes light sources, whereas Hirahara does not. App. Br. 19-20. We are not persuaded by this argument because it is directed to a bodily combination of the references, rather than the Examiner’s proposed combination of their teachings. Mouttet, 686 F.3d at 1332. The Examiner relies on Hirahara as teaching a series of views at more than two viewing angles. Ans. 10. Appellant provides no reason why alternately energizing the light sources in Juvinall would discourage an ordinarily skilled artisan from applying this cited teaching from Hirahara to Juvinall. Appellant further argues that Juvinall does not disclose a series of light beams illuminating one inspection area at different angles of incidence. App. Br. 23—24. The Examiner identifies laser 22 and LED 16 in Juvinall as 1 At the hearing, Appellant indicated the term “series of views” requires more than two views. April 6, 2017 Hearing Tr. 12, but see Tr. 7; Reply Br. 7. Even if we were to accept that argument, however, Hirahara shows three views, each taken at a different viewing angle. Hirahara Fig. 2. Although Appellant argues Hirahara’s three views are not of the same inspection area, Appellant provides no reason, and we decline, to construe the term “inspection area” so as to exclude Hirahara’s area of inspection. App. Br. 24. 4 Appeal 2015-006600 Application 12/312,032 providing the requisite series of light beams, finding a light beam is light from any source. Ans. 11. Although Appellant argues LED 16 does not provide a light beam, Appellant does not challenge the Examiner’s finding that a light beam is light from any source. App. Br. 23—24; Ans. 11. In view of this unchallenged finding, we agree with the Examiner that LED 16 produces a light beam and Juvinall discloses a series of light beams illuminating one inspection area at different angles of incidence. Ans. 11. Therefore, we sustain the rejection of claim 1, and of claims 2, 4, 5, 7, 9, 11, and 12, not separately argued. App. Br. 10-26. Claim 3 Appellant argues Hirahara does not suggest symmetrically arranging optical deflection elements relative to the optical viewing axis of a camera.2 App. Br. 24; Reply Br. 11. We are not persuaded by this argument because Hirahara’s Figure 2 shows reflecting surfaces 14 and 16 (optical deflection elements) are symmetrically aligned with the opposite comers of the camera’s image plane. Hirahara Fig. 2. The Examiner finds, and we agree, with this arrangement, reflecting surfaces 14 and 16 are symmetrically arranged relative to the optical viewing axis of the camera. Ans. 5, 11—12. Further, Appellant provides no reason why the reflecting surfaces are not symmetrically arranged with respect to the optical viewing axis. App. Br. 24; Reply Br. 11. Therefore, we sustain the rejection of claim 3. 2 In the Reply Brief, Appellant corrects a typographical error where the Appeal Brief refers to “optical viewing axis” as “optical viewing area.” Reply Br. 11. We accept that correction. 5 Appeal 2015-006600 Application 12/312,032 Claim 6 Appellant does not separately address claim 6. App. Br. 10—26. Therefore, we sustain the rejection of claim 6 for the same reasons as for base claims 1 and 5. Claims 8 and 13—16 The Examiner finds reflecting surfaces 14 and 16 in Hirahara teach or suggest optical deflection elements arranged side by side in a horizontal direction, as recited directly or indirectly by claims 8, 13, and 14, and teach or suggest at least two optical elements arranged side by side in a vertical direction, as recited directly or indirectly by claims 15 and 16. Ans. 12. Appellant disagrees. App. Br. 25—26. As discussed below, we determine the term “side by side” is indefinite and, therefore, reverse pro forma the standing prior-art rejection of these claims. In re Steele, 305 F.3d 859, 862— 63 (CCPA 1962). We note this is a procedural reversal, rather than one based upon the merits of the section 103 rejection. Claim 10 The Examiner finds reflecting surfaces 14 and 16 in Hirahara teach or suggest the optical deflection elements superimposed in a vertical direction, as recited directly or indirectly by claim 10. Ans. 12. Appellant disagrees. App. Br. 25; Reply Br. 12—13. Both the Examiner and Appellant indicate the figures of Hirahara demonstrate the requisite superimposition or lack thereof. App. Br. 25; Ans. 12; Reply Br. 12—13. We construe “superimposed in a vertical direction” to mean to place or lay over or above an axis parallel to the longitudinal symmetry of the object under inspection. The Specification does not define the term “superimposed,” but an ordinary definition is “to place or lay over or above something.” Merriam Webster, https://www.merriam- 6 Appeal 2015-006600 Application 12/312,032 webster.com/dictionary/ superimpose, last accessed June 12, 2017. The Specification defines “substantially vertical” as “substantially parallel to the axis of longitudinal symmetry of the object [under inspection].” Spec. 1. Therefore, vertical is parallel to the axis of longitudinal symmetry of the object under inspection. Reflecting surfaces 14 and 16 in Hirahara are not superimposed in a vertical direction. In the Hirahara figures, the vertical direction is the longitudinal axis of embryo 10 under inspection, which is the horizontal axis of the figures. See Hirahara Figs. 2 and 6. Reflecting surfaces 14 and 16 are not placed above or lay above one another along this axis, but rather are, respectively, behind and to the side of embryo 10. Hirahara Fig. 6. The Examiner also finds mirror 31 in Juvinall is arranged in a vertical manner and would still have that alignment if an additional lens and mirror were added to Juvinall. Ans. 12. Even if we were to accept that finding, however, that would not satisfy the limitation-at-issue, which requires that the optical deflection elements be superimposed in a vertical direction. The Examiner does not explain why reflecting surfaces 14 and 16 in Hirahara or mirror 31 in Juvinall would nevertheless suggest optical deflection elements superimposed in a vertical direction. Ans. 12. Accordingly, we do not sustain the rejection of claim 10. Claims 14 and 16 Appellant argues for the first time in the Reply Brief that claims 14 and 16 are separately patentable. Reply Br. 13. In light of our disposition of these claims on other grounds, this argument is moot, and we do not address its timeliness. 37 C.F.R. § 41.41(b)(2). 7 Appeal 2015-006600 Application 12/312,032 NEW GROUND OF REJECTION Claims 8 and 13—16 Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject claims 8 and 13—16 under 35 U.S.C. § 112 12 as indefinite because each claim directly or indirectly recites the term “side by side.” The Specification does not define “side by side” and does not use the term in accordance with any clear ordinary meaning. In particular, the Specification teaches optical deflection elements 11 in Figure 2 are side by side. Spec. 9. An ordinary definition of “side by side” is “beside one another.” Merriam-Webster, https://www.merriam-webster.com/dictionary/side%20by%20sideWebster’s, last accessed June 12, 2017. Optical deflection elements 11 in Figure 2, however, are not beside one another, but rather are separated so that light can pass between them to form view V2. Spec. 7. Accordingly, we determine the term “side by side” is unclear and claims 8 and 13—16 are indefinite. In re Packard, 751 F.3d 1307, 1310-1315 (Fed. Cir. 2014). DECISION We affirm the rejections of claims 1—7, 9, 11, and 12. We reverse pro forma the rejection of claims 8 and 13—16. We reverse the rejection of claim 10. Pursuant to our authority under 37 C.F.R. § 41.50(b), as a new ground of rejection, we reject claims 8 and 13—16 under 35 U.S.C. § 112 12. This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: 8 Appeal 2015-006600 Application 12/312,032 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART/37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation