Ex Parte Schneider et al

Patent Trial and Appeal Board

Nov 22, 2016

13105065 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/105,065 05/11/2011 John K. Schneider
79659 7590 11/25/2016
Weaver Austin Villeneuve & Sampson LLP - QUAL
Attn: QUAL
P.O. Box 70250
Oakland, CA 94612-0250
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.
013325.00228 2509
EXAMINER
GER OLEO, FRANCIS
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
USPTO@wavsip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN K. SCHNEIDER and JACK C. KITCHENS 1
Appeal 2016-001238
Application 13/105,065
Technology Center 2400
Before KRISTEN L. DROESCH, LARRY J. HUME, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-15, all of the pending claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The disclosed invention relates to an ultrasonic reflex imaging device
and method that may be used to gather fingerprint image data. See Spec.
i-fi-12-5, 15, 17; Abstract.
1 Appellants indicate the real party-in-interest is Qualcomm Inc. App. Br. 2.
Appeal 2016-001238
Application 13/105,065
Representative claim 1, reproduced from the Claims Appendix of the
Appeal Brief, reads as follows:
1. An ultrasonic reflex imaging device comprising:
a platen;
an insonification device capable of generating a
substantially planar ultrasonic wave; and,
an ultrasonic receiver array positioned between the platen
and the insonification device such that a substantially planar
ultrasonic wave emitted by the insonification device travels
via the receiver array before reaching the platen.
REJECTIONS
Claims 1, 6, 11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Biez (US 5,828,627 issued Oct. 27, 1998) and Grill (US
5,258,922 issued Nov. 2, 1993).
Claims 2, 7, 8, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Biez, Grill, and Schneider et al. (US 2008/0258580 Al,
published Oct. 23, 2008).
Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Biez, Grill, and Seyed-Bolorforosh (US 5,486,734, issued Jan. 23,
1996).
Claims 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Biez, Grill, and Nam (US 2005/0105784 Al, published
May 19, 2005).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Biez, Grill, and Applicants' Admitted Prior Art.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Appeal Brief, the Answer, and the arguments in the Reply
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Appeal 2016-001238
Application 13/105,065
Brief We do not agree with Appellants' arguments. We agree with and
adopt as our own the Examiner's findings and conclusions of law. We
highlight and address specific findings, conclusions, and arguments below
for emphasis.
The Examiner finds that Biez teaches or suggests "an ultrasonic
receiver array positioned between a platen and an insonification device such
that an ultrasonic wave emitted by the insonification device travels via the
receiver array before reaching the platen," as recited on claim 1.
Figure 3 of Biez is reproduced below:
?U LSt •
Gl:".~;:;:::q,i.;rc.::r•
FIG.3
49e
Figure 3 depicts ultrasonic transducer 48b, support 4 7, carrier 44, spherical
carrier surface 43, hole 42, and on surface 43 numerous receiving collectors
45 in a receiving collector ring or annual array 46. Biez 4: 12-35.
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Appeal 2016-001238
Application 13/105,065
Referring to Figure 3 of Biez reproduced above, the Examiner bases
the aforementioned finding on Bicz's disclosure of carrier 44, surface 43,
hole 42, collectors 45, and receiving collector ring or annular array 46
positioned between support 4 7 and transducer 48b such that an ultrasonic
wave emitted by the transducer 48b travels via carrier 44 that receives waves
from transducer 48b via hole 42 before reaching support 47. Final Act. 2-3
(citing Figs. 1-3; 2:63-3:6; 3:57---65; 4:12-35).
Appellants argue Biez teaches ultrasonic waves travel sequentially
from transducer 48b through hole 42 to the support 47 and then to collectors
45 positioned in an annular array 46. App. Br. 7 (citing Biez 1:25-34).
Appellants contend the words of the claim must be given their plain meaning
unless such meaning is inconsistent with the Specification and provide the
following dictionary definitions for via: "1: by way of, 2: through the
medium or agency of, also by means of." Id. (citing MERRIAM WEBSTER'S
COLLEGIATE DICTIONARY, 10th ed.). Appellants contend, without sufficient
explanation, the ultrasonic waves of Biez and Grill do not travel by way of
the receiver array, through the medium of the receiver array, through the
agency of the receiver array, and by means of the receiver array. Id. at 7, 10.
Further, Appellants choose, without explanation, the "through the medium"
definition for "via," and argue Biez does not disclose or suggest the
ultrasonic waves travel through the medium of carrier 44, surface 43,
collectors 45, or annular array 46 before reaching support 47. Id. at 8-9;
Reply Br. 3, 6. Appellants contend Biez requires a hole 42 in carrier 44,
(characterized by Appellants as an absence of a medium), so that the
ultrasonic waves can reach the support without traveling through the
medium of any system components. Id. at 9, 10.
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Appeal 2016-001238
Application 13/105,065
We are not persuaded by Appellants suggestion that the plain meaning
of "via" is limited to "through the medium of," while excluding other
ordinary and customary meanings for the term. Appellants' Specification
discloses an ultrasonic pulse travels through the ultrasonic receiver array
which includes piezoelectric detectors and an associated insulating substrate.
Spec. i-fi-f 17, 18, 21; Fig 3. The "by way of," plain meaning of via while
broader than "through the medium of," is consistent with Appellants'
Specification. Appellants do not provide persuasive argument for
discounting the inclusion of "by way of," in the plain and ordinary meaning
of "via." We further decline Appellants' invitation to limit the plain
meaning of the term "via" based on the Specification's use of the term
"through" when discussing the ultrasonic pulse traveling through the
receiver array. See Spec. i-fi-f 14, 17, 21. Having established that the plain
meaning of "via" includes "by way of," we are not persuaded by Appellants
argument that Biez does not disclose the disputed limitation of claim 1.
Consistent with the Examiner's findings, Biez teaches the ultrasonic wave
travels via (i.e., by way of) hole 42 in carrier 44 of numerous receiving
collectors 45 in collector ring or annular array 46.
In regard to the structure taught by Biez, Appellants argue carrier 44,
surface 43, and hole 42 are separate and distinct elements from any
component in Biez that could be fairly characterized as a receiver array.
App. Br. 10. Appellants contend in Biez, the ultrasonic receiver array
corresponds to annular array 46 having numerous small receiving collectors
45. Id. at 10; see Reply Br. 3. Appellants further assert Biez does not
characterize carrier 44, surface 43, and hole 42 as being part of an ultrasonic
receiver array. App. Br. 1 O; see Reply Br. 4. Appellants contend the
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Appeal 2016-001238
Application 13/105,065
annular array 46 is capable of detecting ultrasonic energy without carrier 44,
surface 43, and hole 42 and, therefore, the carrier 44, surface 43, and hole 42
do not comprise the ultrasonic receiver array. App. Br. 10; see Reply Br. 5.
Appellants' arguments are not persuasive as they are premised on a
narrow meaning of the claimed "receiver array" that includes only elements
that perform the function of receiving, while excluding support structure for
those elements. Appellants do not direct us to objective evidence to support
this implicit narrow construction of "receiver array." See App. Br. 1 O; Reply
Br. 5.
Appellants' Figure 1 is reproduced below:
c .._. '-'"-''-""-""-" .. , .._, .._ ...................... ,_,, ___ '"'-''-"''-"""""""'-' '-'-"-"""""'"'-" .._ ..... __ ...... ··-- ... ····:
~ _../·,-- _,,.:..:.,...-.... 5 ;
~ ~-:!:~~:~~ .......... ·.·.·.··'-'-'-'-'-'·'·'·"·"·'-'-'-'-'·'·'·'·'·"'-......... f ·1
~ _ .... -·-'' --~~_,....--•"' ·6 i /
i .... - -'*~ r ....
l ~~:~ ...... ~...._~:::-~~.f· .. :.. !
l ,,. . -~-._,_,...._......,_. I
l_~::::~:~~~~~~~~~~::::-~:::::~~~·~:-~--~------------j
Figure 1 depicts an exploded perspective view of platen 3, receiver array 2,
ultrasonic plane wave generator 1, and backer 4. Spec. i-fi-f 16, 17.
Referring to Figure 1 reproduced above, Appellants' Specification
discloses receiver array 2 includes array 7 of piezoelectric detectors 11 and
associated substrate 8. Consistent with Appellants' Specification, the
broadest reasonable interpretation of the claimed "receiver array" includes
supporting structure for the receiver elements. Based on the broadest
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Appeal 2016-001238
Application 13/105,065
reasonable interpretation of "receiver array," we agree with the Examiner's
finding that the claimed "receiver" array is taught by Biez' s carrier 44,
carrier surface 43, hole 42, and receiving collectors 45 in collector ring or
annular array 46. See Final Act. 2-3.
We also are not persuaded by Appellants' arguments that neither Biez
nor Grill teach or suggest a substantially planar ultrasonic wave that travels
via the receiver array before reaching a platen. See App. Br. 11.
Appellants' arguments address the teachings of Biez alone, and do not
address the combined teachings of Biez and Grill. See id. (citing
Biez 4: 17-19); Reply Br. 6. One cannot show non-obviousness "by
attacking references individually where the rejection is based on the
combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Lastly, Appellants argue the combination of Biez and Grill is
improper. App. Br. 11-12. Specifically, Appellants contend, because Biez
teaches perfectly spherical waves, Biez teaches away from using the
transducer techniques of Grill. Id. at 12; Reply Br. 7. Appellants contend
"any attempt to alter Biez by substitution a planar wave for Bicz's spherical
wave to cause substantially planar waves to reach the platen ... would
create a device with significantly diminished capability with regard to
precision and reliability for determining the surface structure of the object,"
and "a substantially planar wave would not be an optimum wave type for the
fingerprint determination application in Biez." Id. at 12; Reply Br. 8.
We are not persuaded that Biez teaches away from the claimed
invention because Biez teaches spherical ultrasonic waves. "Under the
proper legal standard, a reference will teach away when it suggests that the
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Appeal 2016-001238
Application 13/105,065
developments flowing from its disclosures are unlikely to produce the
objective of the applicant's invention." Syntex (US.A.) v. Apotex, Inc., 407
F.3d 1371, 1380 (Fed. Cir. 2005), citing In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Although Biez teaches spherical ultrasonic waves, the
Examiner proposes substituting planar waves, as taught by Grill, for Bicz's
teaching of spherical ultrasonic waves. See Final Act. 2--4. Appellants do
not direct us to objective evidence sufficient to demonstrate that Biez
suggests that the use of planar ultrasonic waves in place of spherical
ultrasonic waves is unlikely to produce the objective of Appellants'
invention. The teaching of something different does not constitute a
teaching away. For similar reasons, we also are not persuaded by
Appellants' argument that "any combination involving Biez necessarily
removes the plane wave aspect of transmitter, thereby rendering the resulting
device outside the scope of the pending claims," and "lacks a substantially
planar ultrasonic wave that travels via the receiver array before reaching the
platen." App. Br. 12-13; see Reply Br. 8.
We also not persuaded by Appellants' arguments that substituting a
planar wave for Bicz's spherical wave would not be optimum and would
result in diminished capability regarding precision and reliability because
they are not supported by objective evidence of record. It is well settled that
attorney argument, unsupported by factual evidence, is entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is
not evidence).
For all of the foregoing reasons, Appellants do not persuade us of
error in the Examiner's rejection of claim 1. Appellants do not present
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Application 13/105,065
substantive arguments addressing independent claim 14, which recites
limitations similar to claim 1, and dependent claims 6, 11, and 15. See App.
Br. 13. Therefore, for the same reasons as claim 1, Appellants do not
persuade us of error in the rejection of claims 6, 11, 14 and 15. Appellants
also do not present substantive arguments addressing the rejections of
dependent claims 2-5, 7-10, 12, and 13. See App. Br. 13-14. Accordingly,
for the same reasons as claim 1, Appellants do not persuade us of error in the
rejection of claims 2----5, 7----10, 12, and 13.
DECISION
We AFFIRM the rejection of claims 1-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
9