Ex Parte MakinoDownload PDFBoard of Patent Appeals and InterferencesJun 28, 201210508019 (B.P.A.I. Jun. 28, 2012) Copy Citation 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). App App F antic argu obvi Mak eal 2009-0 lication 10 Figure 1 igure 4 de For all th ipated by ed (Br. 12 We AFF ousness-ty ino, and K 15351 /508,019 Kobaya depicts a Kobaya picts a per ese reason Kobayashi ), as obvio IRM the r pe double obayashi. shi’s Figur front view shi’s Figur spective v s, we sust , and claim us over Ko DE ejection of patenting 6 e 1 is repr of a porta e 4 is repr iew of a po ain the rej 3, not se bayashi a CISION claims 1- as unpaten oduced be ble phone oduced be rtable pho ections of parately an nd Fuke. 3 on the b table over low: with a cam low: ne with a claims 1 a d substan asis of non claims 1 era. camera. nd 2 as tively statutory and 2 of 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 msc Copy with citationCopy as parenthetical citation