Ex Parte Makino

Board of Patent Appeals and Interferences

Jun 28, 2012

10508019 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASAMI MAKINO
____________

Appeal 2009-015351
Application 10/508,019
Technology Center 2600
____________

Before KRISTEN L. DROESCH, MICHAEL R. ZECHER and
MICHAEL J. STRAUSS, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-015351
Application 10/508,019
2
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
Appellant’s disclosed invention relates to a portable telephone
integrally equipped with a camera. Spec. 1, ll. 6-8.
Claim 1 is illustrative and is reproduced below (disputed limitations in
italics):
A portable telephone having a camera mounted as
opposed to a camera window provided on a casing, the portable
telephone with camera being characterized in that the casing is
provided with an auxiliary light window adjacent to the camera
window, an auxiliary light source being disposed in the rear of
the auxiliary light window and emitting light in photographing
with the camera, the camera window being covered with a main
optical cover, the auxiliary light window being covered with an
auxiliary optical cover, the main optical cover and the auxiliary
optical cover being arranged close to each other, a light-shield
surface being formed between the two optical covers.

Rejections
Claims 1-3 stand rejected on the basis of nonstatutory obviousness-
type double patenting as unpatentable over claims 1 and 2 of Makino (US
7,117,011 B2), and Kobayashi (US 2001/0053703 A1).
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Kobayashi.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kobayashi and Fuke (US 6,011,929).
Appeal 2009-015351
Application 10/508,019
3
ISSUES
Did the Examiner err in determining that the claims are rendered
obvious by the combination of Makino’s claims 1 and 2, and Kobayashi?
Did the Examiner err in finding that Kobayashi describes “a light-
shield surface being formed between the two optical covers,” as recited in
claim 1?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”). We disagree with Appellant’s conclusions and highlight
and address specific findings and arguments for emphasis as follows.
Nonstatutory Obviousness-Type Double Patenting
Appellant does not address the teachings of Makino’s claims 1 and 2.
Br. 10-11. Instead, Appellant asserts that the Examiner alleges that
Kobayashi’s component 30 corresponds to the claimed auxiliary optical
cover, component 32 corresponds to the claimed main optical cover, and
component 86B corresponds to the claimed light shield surface. Br. 10
(citing Kobayashi Fig. 4). On this basis, Appellant argues that Kobayashi’s
main optical cover 32 and auxiliary optical cover 30 are disposed in front of
a planar surface defined by front surfaces of rectangular walls of containers
86A and 86B and, therefore, it is impossible for any portion of the light
shield surface 86B to be disposed between the main optical cover 32 and
auxiliary optical cover 30. Br. 11.
Appellant’s arguments are misplaced because the Examiner does not
rely on Kobayashi’s arrangement of the main optical cover 30 and the
auxiliary optical cover 32 for meeting the disputed claim limitations.
Appeal 2009-015351
Application 10/508,019
4
Instead, the Examiner relies on the combination of Makino’s claims and
Kobayashi for meeting the claim limitations. Ans. 3-4; FOA 2-3. In
particular, the Examiner relies on Makino’s claims 1 and 2 for teaching the
arrangement of the camera window optical cover and the auxiliary window
optical cover, and only relies on Kobayashi for teaching a container 86B that
is part of the electromagnetic shield frame 86 made of copper or steel. Id.
The Examiner further finds that, as combined, Makino’s claimed optical
cover would fit into Kobayashi’s container 86B, and the periphery of the
Makino’s optical cover would be surrounded by the light shield surface of
the container 86B. Ans. 4; FOA 2-3.
Appellant further argues that since Kobayashi’s containers 86A and
86B are provided to prevent electromagnetic waves generated by electronic
flash 22 disposed in container 86B from reaching an electronic circuit board
located behind electromagnetic shield frame 86, Kobayashi does not teach
that components 86A, 86B, and 86 solve the same problem and function the
same way as the components of the claimed invention. Br. 11. We are not
persuaded by Appellant’s argument. In determining whether the subject
matter of a claim is obvious, there is no requirement to look only to the
problem that the applicant was trying to solve. KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007). “One of ordinary skill in the art need not see the
identical problem addressed in a prior art reference to be motivated to apply
its teachings.” Cross Medical Products, Inc. v. Medtronic Sofamor Danek,
Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005). Appellant further does not direct
us to objective evidence to demonstrate that Kobayashi’s components 86A,
86B, and 86 which block electromagnetic energy are incapable of also
functioning as a light shield by blocking electromagnetic energy in the
visible light spectrum.
Appeal 2009-015351
Application 10/508,019
5
For all these reasons, we sustain the Examiner’s rejection of claims 1-
3 as obvious over the combination of Makino’s claims 1 and 2, and
Kobayashi.
Anticipation
Appellant addresses the anticipation rejection by incorporating by
reference the arguments addressing the obviousness-type double patenting
rejection. Br. 11-12. We are unpersuaded by Appellant’s argument that
Kobayashi does not describe the claimed invention because Kobayashi’s
main optical cover 32 and auxiliary optical cover 30 are disposed in front of
a planar surface defined by front surfaces of rectangular walls of containers
86A and 86B and, therefore, it is it is impossible for any portion of the light
shield surface 86B to be disposed between the main optical cover 32 and
auxiliary optical cover 30. Br. 11. Appellant’s argument is incorrectly
premised on a particular structure that is required by claim 1. The structure
required by claim 1 is not so limited. Instead, claim 1 only requires “the
main optical cover and the auxiliary optical cover being arranged close to
each other,” and the “light shield surface being formed between the two
optical covers.” Accordingly, we agree with the Examiner’s finding that the
main optical cover 32 and auxiliary optical cover 30 are arranged close to
each other, and a light shield surface 86B is formed between the two optical
covers 30, 32. Ans. 6. As can be visualized from Kobayashi’s Figures 1 and
Figure 4 reproduced below, when Kobayashi’s portable phone with camera
is fully assembled, the container 86B (i.e., light shield surface) is in an
intermediate position or between the protector 30 (i.e., auxiliary optical
cover) and the cover panel 32 (i.e., main optical cover).
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Appeal 2009-015351
Application 10/508,019
7
We AFFIRM the rejection of claims 1 and 2 under 35 U.S.C. § 102(b)
as anticipated by Kobayashi.
We AFFIRM the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi and Fuke.
TIME PERIOD
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)(iv).
AFFIRMED

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