Ex Parte Reigneau

Patent Trial and Appeal Board

May 26, 2017

12973539 (P.T.A.B. May. 26, 2017)

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.
12/973,539 12/20/2010 Mathieu Reigneau ST-09-EDI-476US01 2030
102473 7590 05/31/2017
Slater Matsil, LLP/ST- EP
17950 Preston Road, Suite 1000
Dallas, TX 75252
EXAMINER
ELNAFIA, SAIFELDIN E
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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):
docketing @ slatermatsil. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIEU REIGNEAU
Appeal 2016-0017131
Application 12/973,539
Technology Center 2600
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 20-49, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is STMicroelectronics
(Research & Development) Limited. (App. Br. 1.)
Appeal 2017-001713
Application 12/973,539
STATEMENT OF THE CASE
Introduction
Appellant’s invention “relates to an input navigation device for
computers, mobile phones, and the like, which is operated in a scrolling
manner by moving a finger on its surface, sometimes referred to as a
fmgermouse.” (Dec. 20, 2012 Specification (“Spec.”) 11.) Claim 20 is
illustrative, and is reproduced below (with minor reformatting):
20. An input device comprising:
an image sensor having an imaging surface
comprising an array of pixels;
an optical waveguide layer carried by said imaging
surface and having an exposed contact surface and a first
refractive index associated therewith;
a substrate between said optical waveguide layer
and said image sensor and having a second refractive
index associated therewith that is lower than the first
refractive index;
a collimation layer between and in contact with said
image sensor and said substrate; and
a light source configured to transmit light into said
optical waveguide so that the light therein undergoes total
internal reflection;
said optical waveguide being positioned relative to
the imaging surface so that an object brought into contact
with the exposed contact surface disturbs the total internal
reflection resulting in an image pattern on the imaging
surface.
Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Izumi et al.
(“Izumi”) US 5,657,056 Aug. 12, 1997
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Application 12/973,539
Fujieda et al.
(“Fujieda”) US 6,011,860 Jan. 4, 2000
Kimura US 7,001,060 B1 Feb. 21,2006
Ostergaard
Chung et al
(“Chung”)
US 2008/0007540 Al Jan. 10, 2008
US 2008/0150848 Al June 26, 2008
Chen et al. US 2010/0060578 Al Mar. 11, 2010(“Chen”)
Claims 20—26, 28, 29, and 42-44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chung, in view of Ostergaard, and
further in view of Chen. (See Final Office Action (mailed Feb. 11, 2015)
(“Final Act.”) 2-10.)
Claims 31—37, 39-41, 48, and 49 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chung, in view of Ostergaard, and
further in view of Kimura. (See Final Act. 7—16.)
Claims 27, 30, and 45 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chung, in view of Ostergaard and Chen, and further
in view of Fujieda. (See Final Act. 16—18.)
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chung, in view of Ostergaard and Kimura, and further in
view of Fujieda. (See Final Act. 18—19.)
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Application 12/973,539
Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chung, in view of Ostergaard and Chen, and further in
view of Izumi.2 (See Final Act. 19—20.)
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
Claim 20 recites, in part, “a collimation layer between and in contact
with said image sensor and said substrate.” (Emphasis added.) The
Examiner finds Chen, in Figures 1 and 2 and paragraphs 13 through 15,
teaches or suggests this limitation. (Final Act. 4—5.) Specifically, according
to the Examiner, Chen teaches or suggests a “guiding light 56 [that] includes
a condensing part 562 ha[ving] a prism structure [corresponding to the
‘Jcollimation layer as claimedf,]’ which is condensing and guiding the
reflection light to the sensing component 53.” (Id.)
Figures 1 and 2 are reproduced below.
ra /
FIG- I
2 The Examiner refers to “Izumi” as “Lzumi” by mistake in the Final
Action. (Id.)
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Application 12/973,539
FIG. 2
Figure 1 depicts “a functional block diagram of an electronic apparatus
according to a preferred embodiment of the present invention.” (Chen 110.)
Figure 2 depicts “an inner structure diagram of an optical pointing device
according to the preferred embodiment of the present invention.” {Id. at
111.) The Examiner further finds that “a collimator is a device that narrows
a beam of particles or waves [and t]o ‘narrow’ can mean either to cause the
directions of motion to become more aligned in a specific direction.”
(Advisory Action (mailed April 6, 2015) 2; see also Ans. 2—3.) Appellant
disagrees with the Examiner’s construction of “collimation layer,”
contending that “the claimed collimation layer can not [sic] simply narrow
light or changes is [sic] direction.” (App. Br. 9.) According to Appellant, to
“collimate” is “to make parallel.” {Id. at 10.)
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Application 12/973,539
Appellant has persuaded us of Examiner error. The ordinary meaning
of “collimation” in claim 20 is unambiguous. See Phillips v. A WII
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“In some cases, the
ordinary meaning of claim language as understood by a person of skill in the
art may be readily apparent even to lay judges, and claim construction in
such cases involves little more than the application of the widely accepted
meaning of commonly understood words.”). A person of ordinary skill in
the art, at the time of the invention, would understand that the plain and
ordinary meaning of “collimate” is “to make parallel.” (See Merriam-
Webster’s Intermediate Dictionary (2008) (defining “collimate” as “to make
(as rays of light) parallel”); McGraw-Hill Dictionary of Scientific and
Technical Terms (2003) (defining “collimate” as “[t]o render parallel to a
certain line or direction”); Webster’s New World Dictionary (1994) (defining
“collimate” as “to make (light rays, etc.) parallel”); The World Book
Dictionary (1983) (defining “collimate” as “to bring into line; make parallel,
as a lens or the rays of light passing through it”); see also Phillips, 415 F.3d
at 1314 (“In [cases in which the ordinary meaning of claim language may be
readily apparent even to lay judges], general purpose dictionaries may be
helpful.”).) There is nothing in the language of claim 20 or the
Specification, to indicate that the Applicant intended the definition of the
term “collimation” (the noun for the verb “collimate”) to extend beyond its
ordinary meaning to the Examiner’s proposed construction. The Examiner’s
construction of the term is, therefore, unreasonably broad.3 Based on the
3 In its Reply Brief, Appellant cites to a textbook to further support its
contention that the Examiner’s construction of the term is incorrect. (Reply
2-4.) This evidence is not timely and Appellant does not provide good
cause explaining why the evidence could not have been presented earlier.
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Application 12/973,539
proper construction of the term, we agree with Appellant that the cited
portions of Chen do not teach or suggest “a collimation layer.” For example,
Figure 2 of Chen neither teaches nor suggests condensing part 562 making
any of the light rays parallel.
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 20 and do not sustain the 35 U.S.C. § 103 rejection of
claim 20.* * * 4 Independent claims 42 and 44 contain a similar limitation at issue
and the Examiner cites to the same passages of Chen for this limitation.
(Final Act. 8—9.) Thus, for the same reason, we do not sustain the 35 U.S.C.
§103 rejections of independent claims 42 and 44, and of claims 21—41, 43,
and 45 49, which depend from either independent claim 20, 42, or 44.
DECISION
The decision of the Examiner to reject claims 20-49 is reversed.
REVERSED
Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (explaining that
arguments and evidence not timely presented in the Principal Brief, will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument and/or evidence could not have been presented
in the Principal Brief).
4 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellant’s further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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