Ex Parte Pillman et alDownload PDFPatent Trial and Appeal BoardMar 29, 201613230960 (P.T.A.B. Mar. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/230,960 09/13/2011 Bruce Harold Pillman 23524 7590 03/31/2016 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 098888-9333 9713 EXAMINER REISNER, NOAM S ART UNIT PAPER NUMBER 2852 NOTIFICATION DATE DELIVERY MODE 03/31/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE HAROLD PILLMAN, JOHN NORVOLD BORDER, and JOSEPH RAYMOND BIETRY Appeal2014-008017 1 Application 13/230,960 Technology Center 2800 Before KAMRAN JIV ANI, MONICA S. ULLAGADDI, and SCOTT E. BAIN, Administrative Patent Judges. ULLAGADDI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-9, 11-19, and 22-30, which constitute all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants' Brief identifies the real party in interest as Intellectual Ventures Fund 83 LLC. Br. 2. 2 Claims 10, 20, and 21 are cancelled. Br. 20 and 21. Appeal2014-008017 Application 13/230,960 STATEMENT OF THE CASE Claim 1, reproduced below with the disputed limitation emphasized, is illustrative of the claimed subject matter: 1. An image capture system comprising: an image forming system including a selectable field-of- view configured to form an image of a scene onto an image plane; an electronic flash system comprising: an array of illumination lenses, wherein each illumination lens has an associated focal length, and wherein at least two of the illumination lenses have focal lengths that are different from one another; and one or more light emitters positioned relative to the array of illumination lenses to provide two or more different illumination angles onto the scene and a flash controller configured to selectively activate different subsets of the one or more light emitters responsive to the selected field-of-view of the image forming system. REFERENCES AND REJECTIONS Claims 28-30 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 4. Claims 20 and 21 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 5-7. Claim 3 was rejected under 35 U.S.C. § 112, second paragraph, as lacking sufficient antecedent basis. Final Act. 7. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Asakura Tenmyo Chua us 5,019,845 US 6,807,369 Bl US 7,679,672 B2 2 May 28, 1991 Oct. 19, 2004 Mar. 16, 2010 Appeal2014-008017 Application 13/230,960 Nub ling van V oorst Vader Wemersson Khuntia US 7 ,970,269 B2 US 2007/0091602 Al US 2009/0008530 Al US 2010/0322613 Al June 28, 2011 Apr. 26, 2007 Jan. 8,2009 Dec. 23, 2010 Claims 1, 3, 4, 7, 8, 11-13, 17-19, 23, 24, and 28 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Chua and van Voorst Vader. Final Act. 7-12. Claims 2, 5, 14, 25-27, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chua, van Voorst Vader, Asakura. Final Act. 12-16. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chua, van Voorst Vader, and Wemersson. Final Act. 16. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chua, van Voorst Vader, and Nubling. Final Act. 16-17. Claims 15 and 16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Chua, van Voorst Vader, and Tenmyo. Final Act. 17-18. ANALYSIS Rejectionsunder35 U.S.C. §§ 101, 112, fl, and§ll2, f2 In an Amendment under 37 C.F.R. § 1.116 filed on December 18, 2013, Appellants cancelled claims 20 and 21, amended claims 28-30 to recite a "non-transitory computer-readable medium," and amended claims 2 and 3 to replace "camera system" with "image capture system." The Advisory Action mailed December 31, 2013 indicated the amendments would be entered. Advisory Act. 1. However, the Examiner's Answer does not indicate these rejections to have been withdrawn. See Ans. 2. 3 Appeal2014-008017 Application 13/230,960 Appellants do not address the 35 U.S.C. § 101 rejection of claims 28- 30, the 35 U.S.C. § 112, first paragraph rejection of claims 20 and 21, nor the 35 U.S.C. § 112, second paragraph rejection of claim 3 in their Brief. See Br. 9. The cancellation of claims 20 and 21 renders moot the rejection of these claims under 35 U.S.C. § 112, first paragraph and thus, we vacate this rejection as moot. We do not reach the 35 U.S.C. § 112, second paragraph rejection of claim 3, nor the 35 U.S.C. § 101 rejection of claim 28-30, as our decision with respect to the 35 U.S.C. § 103(a) rejection of these claims is dispositive. Rejections under 35 U.S.C. § 103 The Examiner finds van Voorst Vader discloses "a controller for an array of light emitting units that can selectively illuminate subsets of the light emitting unit." Ans. 5. The Examiner further finds van Voorst Vader also teaches an "illumination pattern [that] maybe be particularly useful when using a flash under a 'normal' lens condition, i.e., neither telephoto nor wide angle is used" and another "illumination pattern [that] may be particularly advantages for, e.g., wide angle or macro performance." Id. at 6 citing van Voorst Vader i-fi-135 and 36; see also Final Act. 2-3. Based on these teachings, the Examiner finds the combination of Chua and van V oorst Vader teaches or suggests the elements of claim 1 and concludes that, even if Vader does not expressly state that the different patterns are utilized in response to different fields of view it would have been obvious to the ordinary workman in the art that the different illumination patterns should be utilized in response to different fields of view in order to achieve the advantageous 4 Appeal2014-008017 Application 13/230,960 illumination results of the different available illumination patterns taught by Vader. Final Act. 3. We agree with and adopt as our own the Examiner's findings and conclusion, which we highlight below. Appellants attempt to distinguish the claimed invention from van Voorst Vader's teaching of illumination patterns that are particularly useful for different lens conditions by arguing van Voorst Vader fails to teach "'selectively activat[ing]' such illumination patterns 'responsive to [a] selected field-of-view."' Br. 13. Appellants argue (i.) "the Examiner has not established, and indeed has not provided any evidence, that the acknowledged omissions in Vader are 'well known in the art' and/or are 'within the purview of the ordinary workman,' as alleged by the Examiner." Id. at 13-14. Appellants further argue (ii.) "Vader fails to enable such an element as required for a prima facie case of obviousness" and "fails to provide any indication of how such a system would be configured or how such a 'flash controller' would operate." Id. citing MPEP § 2121. Neither of Appellants' first and second arguments persuades us the Examiner's findings regarding the disputed limitation are in error, for the reasons discussed below. As to argument (i. ), a determination of obviousness does not require the claimed invention to be expressly suggested by any one or all of the references. See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner can rely on the explicit, implicit, and inherent disclosures of a reference, and may take into account the knowledge of one of ordinary skill in the art in an obviousness rejection. Appellants characterize the Examiner's stated position as taking Official Notice that must be supported by an affidavit in accordance with 37 5 Appeal2014-008017 Application 13/230,960 C.F.R. § 1.104(d)(2). Br. 13-14. We disagree with this characterization; the Examiner does not take Official Notice (see Ans. 8-9), but rather articulates a finding regarding the knowledge of one of ordinary skill in the art and the teachings of van Voorst Vader (see Final Act. 3). In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner's citations to specific portions of Chua and van Voorst Vader identifying where each limitation of the rejected claims is taught or suggested, along with articulated reasoning supporting the conclusion of obviousness, meets the notice requirement of 35 U.S.C. § 132 and therefore, establishes a prima facie case of obviousness. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011 ); see Final Act. 2-3; see also Ans. 5---6. As this initial burden is met by the Examiner, the burden of coming forward with evidence or argument is shifted to the Appellants. See Oetiker, 977 F.2d at 1445. However, Appellants do not overcome this burden by persuasively rebutting the Examiner's findings or conclusion. Appellants concede van V oorst Vader teaches 'control circuit 164 may detect the state of another element, such as a lens 170 in a camera, and in response provides the appropriate signals to the control elements 166, 167, and 168 to adjust the amount of current flowing through the LEDs.' (Paragraph [0030].) Vader further describes controlling the distribution of LED's by changing the LED's optics [see paragraph [0027], having individually addressable LEDs (see paragraph [0028]), or changing the LED's light intensity (see paragraph [0034]). Id. at 12; see also Ans. 5. In light of Appellants' concession and in light of the Examiner's findings regarding the cited teachings of van Voorst Vader in 6 Appeal2014-008017 Application 13/230,960 paragraphs 35 and 36, we are not persuaded that the Examiner's proffered combination would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). As to argument (ii.), "[ e ]ven if a reference discloses an inoperative device, it is prior art for all that it teaches." Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Therefore, "a non- enabling reference may qualify as prior art for the purpose of determining obviousness" pursuant to 35 U.S.C. § 103. Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). Even if Appellants' assertion concerning van Voorst Vader's lack of discussion on "how such a system would be configured or how such a 'flash controller' would operate" was supported by evidence, such argument would not be persuasive to show the Examiner erred in concluding the combination of Chua and van Voorst Vader renders obvious the subject matter of claim 1. For the foregoing reasons, we are not persuaded the Examiner erred in finding the combination of over Chua and van Voorst Vader teaches or suggests the disputed limitation of claim 1 and commensurate limitations of claims 17 and 19, as well as the limitations of claims 3, 4, 7, 8, 11-13, 18, 23, 24, and 28, which are not separately argued. Therefore, we sustain the rejection of claims 1, 3, 4, 7, 8, 11-13, 17-19, 23, 24, and 28 under 35 U.S.C. §103(a) as being unpatentable over Chua and van Voorst Vader. Claims 2, 5, 6, 12, 14--16, 25-27, 29, and 30 stand rejected over various combinations of Chua, van Voorst Vader, Asakura, W emersson, Nubling, and Tenmyo. As these claims are not separately argued, we reach 7 Appeal2014-008017 Application 13/230,960 the same conclusion with respect to claims 2, 5, 6, 12, 14--16, 25-27, 29, and 30 as we reach with respect to claims 1, 17, and 19, from which they depend, for substantially similar reasons. DECISION The Examiner's rejection of claims 1-9, 11-19, and 22-30 under 35 U.S.C. § 103(a) is affirmed. The Examiner's rejection of claims 20 and 21 under 35 U.S.C. § 112, first paragraph is vacated as moot. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation