Ex Parte Pillman et al

Patent Trial and Appeal Board

Mar 29, 2016

13230960 (P.T.A.B. Mar. 29, 2016)

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.
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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
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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
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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
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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
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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
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