11263592 (B.P.A.I. Jun. 22, 2012)

Ex Parte Abnet et al

Board of Patent Appeals and InterferencesJun 22, 2012

11263592 (B.P.A.I. Jun. 22, 2012)

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. 11/263,592 10/31/2005 Charles Cameron Abnet CMI 3E3 1560 12080 7590 06/25/2012 CASCADE MICROTECH, INC c/o Dascenzo Intellectual Property Law, P.C. 522 SW 5th Avenue, Suite 925 Portland, OR 97204 EXAMINER ALLEN, STEPHONE B ART UNIT PAPER NUMBER 2872 MAIL DATE DELIVERY MODE 06/25/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CHARLES CAMERON ABNET, DANIEL LEIBOVICH FELDKHUN, and MICHAEL STEPHEN MERMELSTEIN ____________ Appeal 2010-003465 Application 11/263,592 Technology Center 2800 ____________ Before JOSEPH L. DIXON, CAROLYN D. THOMAS, and GREGORY J. GONSALVES, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003465 Application 11/263,592 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-15 and 18. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to multi-path optical magnification for continuous zooming between digital images. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An imaging system for imaging an object, said system comprising: (a) a zooming imager including a first digital imaging device and a second digital imaging device; (b) a first optical path extending from said object through an objective lens to said first digital imaging device, and which projects a first image upon said first digital imaging device at a first magnification; and (c) a second optical path extending from said object to said second digital imaging device spaced apart from said first digital imaging device, and which projects a second image upon said second digital imaging device at a second magnification different from said first magnification, wherein said zooming imager enables continuously zooming between said first image at said first magnification and said second image at said second magnification by presenting a succession of images digitally zoomed between said first magnification and a third magnification and by presenting a succession of images digitally zoomed between said third magnification and said second magnification, said zooming proceeding without temporal interruption when presentation of an image from said first imaging device is succeeded by presentation of an image from said second imaging device. Appeal 2010-003465 Application 11/263,592 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Suzuki Ledley Maeda US 2002/0176160 A1 US 2003/0076585 A1 US 2004/0075837 A1 Nov. 28, 2002 Apr. 24, 2003 Apr. 22, 2004 REJECTIONS Claims 1-10, 13-15, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Maeda and Suzuki. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Maeda, Suzuki, and Ledley. ANALYSIS Appellants contend that Suzuki does not disclose extending a zoom range without temporal interruption, but rather Suzuki requires physically moving objective lenses to change the optical magnification of an image (App. Br. 5-6). Appellants also contend that the combination of Maeda and Suzuki fails to disclose presenting an image from one optical path, and without temporal interruption, presenting an image from another optical path (App. Br. 6-7). Appellants further argue that Maeda teaches away from presenting a sequence of images from different image sensors in different optical paths because Maeda’s two image sensors capture images that differ in optical character, and presenting successive images from these image sensors would be distracting and undesirable (App. Br. 7). Finally, Appeal 2010-003465 Application 11/263,592 4 Appellants contend that there is no motivation to combine Suzuki’s two levels of optical magnification with Maeda’s capability to concurrently capture images from two optical paths (App. Br. 7-8). We disagree. The Examiner relies on Maeda, not Suzuki, for presenting two successive images without temporal interruption (see Ans. 8). That is, Maeda discloses two image sensors 12a and 12b that capture images from two optical paths, and Maeda’s system is capable of presenting images from one sensor and then the other (see Ans. 8; Maeda, Fig. 1). Appellants argue in the Reply Brief that Maeda does not disclose the relative magnification of images captured by the two image sensors 12a and 12b, and thus Maeda is not necessarily capable of continuous zooming (Reply Br. 2-3). However, the Examiner relies on Suzuki for the continuous zooming feature (Ans. 4; Suzuki, Fig. 2). The Examiner finds that it would have been obvious to modify Maeda’s two image sensors and two optical paths in view of Suzuki, such that the magnification ranges of the two optical paths would provide continuous zooming between images provided by the two image sensors (see Ans. 5, 8). As the Examiner’s rejection is based on the collective teachings of Maeda and Suzuki, we are not persuaded by Appellants’ arguments (App. Br. 5-6; Reply Br. 2-3) that either Maeda or Suzuki alone fails to disclose certain features. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Further, Appellants’ argument that there is no motivation to combine Maeda and Suzuki (App. Br. 7-8; Reply Br. 4-5) is not persuasive because Appellants do not explain why the Examiner’s stated motivation for Appeal 2010-003465 Application 11/263,592 5 modifying Maeda—for “obtaining views of the sample between the captured magnifications,” or in other words, “increasing the number of magnifications available for the user to view the sample without having to add additional optical elements” (Ans. 5; 9)—is insufficient. Appellants argue that Maeda does not disclose the relative magnification of images captured by the image sensors 12a and 12b, and thus, increasing the number of magnifications as proposed by the Examiner is speculative (Reply Br. 4). However, Appellants do not explain why modifying the magnification of these images so as to provide continuous zooming would not have been within the level of ordinary skill in the art. Appellants also argue that the Examiner’s motivation for combining the references does not explain why one would have modified Suzuki’s single image sensor and multiple objective lenses (Reply Br. 4-5). But this argument is not responsive to the Examiner’s combination, which is to modify Maeda based on Suzuki’s disclosure of continuous zooming (see Ans. 5, 8). Regarding Appellants’ teaching away argument, even if Maeda’s image sensors capture images of differing character, this does not show that Maeda teaches away from using the image sensors to provide successive images at different magnifications. Teaching away requires that the prior art “criticize, discredit, or otherwise discourage the solution claimed,” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); that is, it requires more than a mere showing that the Examiner’s combination may be inferior to the claimed invention. We therefore are not persuaded that the Examiner erred in rejecting claim 1, or claims 2-15 and 18 not separately argued with specificity. Appeal 2010-003465 Application 11/263,592 6 CONCLUSIONS OF LAW The Examiner did not err in rejecting claims 1-15 and 18 under 35 U.S.C. § 103(a). DECISION For the above reasons, we affirm the rejections of claims 1-15 and 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED tkl