Ex Parte Goldbach

Patent Trial and Appeal Board

Nov 30, 2012

11244662 (P.T.A.B. Nov. 30, 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.
11/244,662 10/05/2005 Gunter Goldbach SCHWP0224USA 2107
7590 12/03/2012
RENNER, OTTO, BOISSELLE & SKLAR, LLP
Nineteenth Floor
1621 Euclid Avenue
Cleveland, OH 44115-2191
EXAMINER
CHEN, CHIA WEI A
ART UNIT PAPER NUMBER
2664
MAIL DATE DELIVERY MODE
12/03/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUNTER GOLDBACH
____________

Appeal 2011-002383
Application 11/244,662
Technology Center 2600
____________

Before, JAMES R. HUGHES, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-7, 13-20, 22, and 23, which are all the
claims remaining in the application. Claims 8-12 were withdrawn from
consideration and claim 21 was canceled. (App. Br. 2.) We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2011-002383
Application 11/244,662

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Appellant’s Invention
The invention at issue on appeal concerns image generating device
and method for determining a position of a recorded image point in an
optical tracking system. (Spec. 1:10-13; 4:8-22; Abstract.)1
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. An image generating device for determining a
position of a recorded image point in an optical tracking
system, comprising:
a light scattering effect generating device for creating a
light scattering effect;
at least one camera operatively coupled to said light
scattering effect generating device and configured to capture
image data corresponding to the light scattering effect created
by the light scattering effect generating device; and
an image processing unit operatively coupled to said
camera and configured to receive said image data, said image
processing unit configured to determine the position of the
image point based on a) the light scattering effect and b) a
brightness gradient of the light scattering effect.

Rejections on Appeal
1. The Examiner rejects claims 1-3, 6, 7, 13-17, 22, and 23 under
35 U.S.C. § 102(b) as being anticipated by US 5,642,164, issued Jun. 24,
1997 (“Ogawa”).

1 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed Apr. 29, 2010; and Reply Brief (“Reply Br.”) filed September 7, 2010.
We also refer to the Examiner’s Answer (“Ans.”) mailed July 23, 2010.
Appeal 2011-002383
Application 11/244,662

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2. The Examiner rejects claims 4, 5, and 18-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Ogawa.

ISSUE
Based upon our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that Ogawa discloses “an image
processing unit operatively coupled to said camera and configured to receive
said image data, said image processing unit configured to determine the
position of the image point based on . . . a brightness gradient of the light
scattering effect” (claim 1), within the meaning of Appellant’s claim 1 and
commensurate limitations of claim 13?

ANALYSIS
We agree with Appellant that the portions of Ogawa identified by the
Examiner do not explicitly or inherently disclose the disputed features of
claim 1, in particular, determining an image point position based on a
brightness gradient. (App. Br. 8-15; Reply Br. 1-3.) Specifically, we agree
with Appellant that Ogawa’s disclosure of cylindrical lens and image pickup
device histogram (Ans. 5, 9-12) fails to disclose the recited brightness
gradient of the light scattering effect. (App. Br. 10-13.) The portions of
Ogawa cited by the Examiner (Ogawa, col. 4, ll. 10-12; col. 5, ll. 35-49; Fig.
5B) separately describe a cylindrical lens, which is a light condensing device
as opposed to a light scattering device (see Ogawa col. 4, ll. 20-22
(“cylindrical lens 5 collects and condenses a light emitted from the light spot
Appeal 2011-002383
Application 11/244,662

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3 and converts the same into a plurality of linear images intersecting each
other”)) and a histogram illustrating the area of an image pickup device
along an x-axis (see Ogawa col. 5, ll. 30-49; Fig. 5B). We find no disclosure
in Ogawa of determining an image point position based on a brightness
gradient. Rather, the image point location determined by Ogawa is based on
the area of an image on an image pickup device, not based on brightness or
light intensity. (App. Br. 10-13; Reply Br. 1-3.)
Consequently, we are constrained by the record before us to conclude
that Ogawa fails to disclose the recited features of Appellant’s claim 1, and
the rejection of claim 1 fails to establish a prima facie case of anticipation.
Appellant’s independent claim 13 includes limitations of commensurate
scope, and dependent claims 2-7, 14-20, 22, and 23 depend on and stand
with their respective base claims. Accordingly, we reverse the Examiner’s
anticipation rejection of claims 1-3, 6, 7, 13-17, 22, and 23.
Appellant’s claims 4, 5, and 18-20, rejected under 35 U.S.C. § 103,
also depend on and stands with claims 1 and 13 respectively. Accordingly,
we also reverse the Examiner’s obviousness rejection of claims 4, 5, and
18-20 for the same reasons discussed with respect to claim 1 (supra).

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in rejecting claims 1-3,
6, 7, 13-17, 22, and 23 under 35 U.S.C. 102(b).
Appellant has shown that the Examiner erred in rejecting claims 4, 5,
and 18-20 under 35 U.S.C. 103(a).

Appeal 2011-002383
Application 11/244,662

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DECISION
We reverse the Examiner’s rejections of claims 1-3, 6, 7, 13-17, 22,
and 23 under 35 U.S.C. 102(b).
We reverse the Examiner’s rejections of claims 4, 5, and 18-20 under
35 U.S.C. 103(a).

REVERSED

pc