Gentex Corporation

Patent Trials and Appeals Board

Dec 1, 2021

2020005209 (P.T.A.B. Dec. 1, 2021)

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.
15/889,256 02/06/2018 Nigel T. Lock AUTO 02291US
GEN010 P971A
7458
28469 7590 12/01/2021
GENTEX CORPORATION
600 NORTH CENTENNIAL STREET
ZEELAND, MI 49464
EXAMINER
COLEMAN, STEPHEN P
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
ptomail@priceheneveld.com
uspto@gentex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIGEL T. LOCK
________________

Appeal 2020-005209
Application 15/889,256
Technology Center 2600
____________

Before ROBERT E. NAPPI, JENNIFER L. McKEOWN, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒3, 5‒10, and 12‒18.1 Claims 4, 11, and 19 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Gentex Corporation as the real party
in interest. Appeal Br. 1.
Appeal 2020-005209
Application 15/889,256

2

STATEMENT OF THE CASE
Introduction
Appellant’s application relates to a door-mounted scanning apparatus
that may include iris identification. Spec. ¶ 2. Claim 1 is illustrative of the
appealed subject matter and reads as follows:
1. A scanning apparatus disposed on a vehicle comprising:
an external rearview assembly comprising:
a housing;
an electro-optic element comprising:
a first substrate comprising a first surface
and a second surface;
a second substrate comprising a third surface
and a fourth surface, wherein the first substrate and
the second substrate define a cavity;
an electro-optic medium contained in the
cavity; and
an image sensor disposed on the housing and directed
outward, the image sensor configured to capture biometric data
from an individual that is processed by a controller to unlock a
door of said vehicle, the image sensor including a lens disposed
on a sail panel of the housing.

The Examiner’s Rejections
Claims 1‒3, 5, 6, 10, 12, 15, and 16 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Biemer (US 2015/0009010 A1; Jan. 8, 2015),
Tonar (US 2010/0020380 A1; Jan. 28, 2010), and Assinder (US 6,572,250
B1; June 3, 2003). Final Act. 3‒10.
Claims 7, 13, and 17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Biemer, Tonar, Assinder, and Kerzabi (US 2016/0211397
A1; July 21, 2016). Final Act. 5–6, 10, 11.
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Application 15/889,256

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Claims 8, 14, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Biemer, Tonar, Assinder, and Pena Casimiro (US
9,707,912 B1; July 18, 2017). Final Act. 6, 11.
Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over
Biemer, Tonar, Assinder, and Bae (US 2017/0152698 A1; June 1, 2017).
Final Act. 6‒7.
ANALYSIS
Appellant argues the Examiner errs in rejecting claim 1 because
Assinder teaches away from the claimed invention. Appeal Br. 8‒10; Reply
Br. 1‒5. In particular, Appellant argues Assinder teaches an approach light
that projects light through a lens to illuminate an area near a vehicle. Appeal
Br. 8. Appellant argues Assinder’s lens, therefore, disperses light. Id. at 9.
Appellant argues claim 1 recites a “lens” of an “image sensor” where the
image sensor is “configured to capture biometric data from an individual.”
Id. at 9. Appellant argues the claimed lens must focus light onto the image
sensor, not disperse light. Id. Appellant argues an ordinarily skilled artisan
would not have looked to Assinder’s lens because of this teaching away. Id.
Appellant has not persuaded us of Examiner error. A teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”) Appellant argues Assinder teaches away from the claimed
invention because the alleged purpose of Assinder’s lens (dispersion of
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Application 15/889,256

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light) is different than the alleged purpose of the claimed lens (focus of light
on an image sensor). See Appeal Br. 8‒9. We disagree.
First, “[a] finding that two inventions were designed to resolve
different problems . . . is insufficient to demonstrate that one invention
teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry.,
Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). That is, even if Assinder taught a
different use of a lens, Assinder’s teachings do not criticize, discredit, or
otherwise discourage using a lens in a different manner.
Second, the Examiner relies on the disposition of Assinder’s lens, not
on its functional qualities. Although the reference must be read as a whole,
“[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Further,
Appellant has not asserted that the proposed modification would have been
beyond the capabilities of a person of ordinary skill in the art. Absent such
an assertion, we “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ,” and find a person of
ordinary skill in the art would overcome those difficulties within their level
of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id.
at 421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
Third, Appellant argues that Assinder’s lens is used for a different
purpose than the claimed invention, but nothing in the claim precludes the
claimed lens from being disposed in front of a light emitting element.
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Indeed, the Specification contemplates exactly such a scenario. See Spec.
¶ 20 (“It is generally contemplated that the light source 50 may be disposed
proximate the image sensor 36 behind a lens 56. . . . Optionally, the light
source 50 may include a light emitter disposed behind the electro-optic
element 18 and another light emitter disposed in or on the housing 16 or a
sail panel 54.”).
Appellant also argues an ordinarily skilled artisan would not have
combined Assinder with Biemer and Tonar because modifying Biemer with
Assinder’s lens would render Biemer’s imaging system unsatisfactory for its
intended purpose. Appeal Br. 10‒13; Reply Br. 9‒10. In particular,
Appellant argues Assinder’s lens is for dispersing light out over an area for
illumination, while Biemer’s lens is for focusing light on an image sensor.
Appeal Br. 11‒12 (citing Assinder 8:24‒28, Biemer ¶¶ 4, 9). Appellant
argues that incorporating Assinder’s lens would prevent Biemer’s image
sensor from capturing and processing light as taught. Id. at 12.
Appellant has not persuaded us of Examiner error. Appellant’s
arguments regarding rendering Biemer unsatisfactory for its intended
purpose rely on similar rationale to Appellant’s teaching away arguments
and area unpersuasive for the same reasons.
For these reasons, we sustain the obviousness rejection of claim 1. We
also sustain the obviousness rejection of independent claims 10 and 15,
which Appellant argues are patentable for the same reasons. See Appeal
Br. 7‒13. We also sustain the rejections of dependent claims 2, 3, 5‒9, 12‒
14, and 16‒18, which Appellant argues are patentable for the same reasons.
See id.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1‒3, 5, 6,
10, 12, 15,
16
103 Biemer, Tonar,
Assinder
1‒3, 5, 6,
10, 12, 15,
16

7, 13, 17 103 Biemer, Tonar,
Assinder, Kerzabi
7, 13, 17
8, 14, 18 103 Biemer, Tonar,
Assinder,
Pena Casimiro
8, 14, 18
9 103 Biemer, Tonar,
Assinder, Bae
9
Overall
Outcome
1‒3, 5‒10,
12‒18

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)(1)(iv) (2019).

AFFIRMED