Ex Parte ReigneauDownload PDFPatent Trial and Appeal BoardMay 26, 201712973539 (P.T.A.B. May. 26, 2017) Copy Citation 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 2 Appeal 2017-001713 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.) 3 Appeal 2017-001713 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.) 4 Appeal 2017-001713 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.) 5 Appeal 2017-001713 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. 6 Appeal 2017-001713 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”). 7 Copy with citationCopy as parenthetical citation