14877610 (P.T.A.B. Dec. 6, 2018)

Ex Parte Bohn et al

Patent Trial and Appeal BoardDec 6, 2018

14877610 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/877,610 10/07/2015 145266 7590 12/10/2018 NovoTechIP International PLLC 1717 Pennsylvania Ave. NW, Suite #1025 Washington, DC 20006 FIRST NAMED INVENTOR David D. Bohn 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. 331826-US-CNT / 170101-02 CONFIRMATION NO. 8984 EXAMINER SEGURA, CYNTHIA ART UNIT PAPER NUMBER 2662 NOTIFICATION DATE DELIVERY MODE 12/10/2018 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): akhlaghi@novotechip.com shiflett@novotechip.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID D. BOHN and FRANK PREISS Appeal2018-005237 Application 14/877,610 1 Technology Center 2600 Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-7, 9-11, 13-19, and 21-23, which are all of the claims pending in the application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify Microsoft Technology Licensing, LLC as the real party in interest. See Br. 3. 2 Claims 8, 12, and 20 have been cancelled. Appeal2018-005237 Application 14/877,610 STATEMENT OF THE CASE According to Appellants, the claims are directed to a camera lens module that includes a liquid lens or a liquid crystal lens that can be tilted for optical image stabilization. Spec. ,r 11, Abstract. 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device, comprising: a camera lens module configured to focus an image that is received as reflected light, the camera lens module comprising an imaging lens implemented as a liquid lens or as a liquid crystal lens configured to tilt for optical image stabilization; an image sensor configured to capture the image from the reflected light that is directed at the image sensor; and one or more optics configured to fold the reflected light of the image once along an imaging path directed through the camera lens module, the imaging path after the fold of the reflected light being approximately perpendicular to an axis along which the reflected light of the image is received via an aperture in the device. (Br., Claims Appendix, 26.) REFERENCES AND REJECTI0NS 4 Claims 1, 3, and 5-7 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Kuroda et al., (US 2007 /0031134 Al; published Feb. 8, 3 This Decision refers to: (1) Appellants' Specification filed October 7, 2015 ("Spec."); (2) the Final Office Action ("Final Act.") mailed February 2, 2017; (3) the Appeal Brief ("Br.") filed November 17, 2017; and ( 4) the Examiner's Answer ("Ans.") mailed January 26, 2018. 4 The Examiner withdraws the rejection of claim 9 under 35 U.S.C. Â§ 112, 2nd paragraph and the non-statutory double patenting rejection of claims 1 and 9 in view of the terminal disclaimer filed August 2, 2017. See Ans. 3--4. 2 Appeal2018-005237 Application 14/877,610 2007 ("Kuroda")), Mihara (US 2004/0141086 Al; published July 22, 2004), and Honjo (JP 2005-345520 A; published Dec. 15, 2005). 5 Final Act. 10- 15. Claim 2 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Kuroda, Mihara, Honjo, and Freeman (US 7,420,592 B2; issued Sept. 2, 2008). Id. at 15-17. Claim 4 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Kuroda, Mihara, Honjo, and Konno (US 2006/0092524 Al; published May 4, 2006). Id. at 17-19. Claims 9-11, 13, and 22 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Shyu et al., (US 2008/0019684 Al; published Jan. 24, 2008 ("Shyu")), Kuroda, and Honjo. Id. at 19-24. Claim 14 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Shyu, Kuroda, Honjo, and Konno. Id. at 24--25. Claims 15-19 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Saari et al., (US 6,532,035 B 1; issued Mar. 11, 2003 ("Saari")), Kuroda, and Honjo. Id. at 25-30. Claim 21 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Shyu, Kuroda, Honjo, and Freeman. Id. at 30-32. Claim 23 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Saari, Kuroda, Honjo, and Freeman. Id. at 32-33. Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. Arguments not made are waived. See MPEP Â§ 1205.02; 37 C.F.R. Â§Â§ 4I.37(c)(l)(iv) and 4I.39(a)(l). 5 We refer to the Machine Translation of Honjo provided by the Examiner on August 5, 2016. 3 Appeal2018-005237 Application 14/877,610 ANALYSIS Appellants argue the Examiner improperly combined Kuroda and Honjo in rejecting independent claims 1, 9, and 15. Br. 14--25. Specifically, Appellants argue, in each independent claim, "incorporating Honjo's liquid crystal lens into Kuroda' s imaging apparatus would result in the liquid crystal lens being unable to function as a lens element and consequently unable to perform image stabilization." Id. at 14, 18, 22 (underlining omitted.) We are not persuaded. The Examiner relies on (Final Act. 11; Ans. 4-- 5) Kuroda's "imaging apparatus 10" which "move[s] [a] shake correction lens group Le to a position" to "compensat[ e] for ... hand-shake" (Kuroda Fig. 7, ,r,r 71, 7 4) to teach a "camera lens module comprising an imaging lens ... configured to tilt for optical image stabilization." The Examiner relies on (Final Act. 12; Ans. 7-8) Honjo's "liquid crystal lens" which "can perform image blur correction [in] an imaging optical system" (Honjo ,r,r 57-58, 61; see Honjo ,r 45) to teach "a liquid crystal lens configured to tilt for optical image stabilization." We agree with the Examiner's finding that the combination of Kuroda's teachings and Honjo's teachings teach a "camera lens module comprising an imaging lens implemented as a liquid lens or as a liquid crystal lens configured to tilt for optical image stabilization." Final Act. 12-13; Ans. 5. Appellants' argument that "incorporating the liquid crystal lens of Honjo into Kuroda's imaging apparatus would result in Honjo's liquid crystal lens unable to function as a lens element, thereby rendering Kuroda unable to correct for shake using the modified lens group" (Br. 16-17, 20- 4 Appeal2018-005237 Application 14/877,610 21, 24) is premised on an embodiment in Honjo that is not relied upon by the Examiner. Specifically, Appellants' arguments are based on the embodiment "when no voltage is applied to the electrodes of the liquid crystal lens," such that the liquid crystal lens "does not function as a lens element." Br. 16 (citing Honjo ,r 56) (emphasis omitted). The Examiner's rejection, however, relies on the embodiment in which voltage is applied to the electrodes of the liquid crystal lens, and so, the liquid crystal lens functions as a lens. Ans. 9 ("Honjo ... was not used to provide a liquid crystal lens 1 when no voltage is applied."); see Ans. 7-8 ( citing Honjo ,r,r 31, 57-58, 61); see also Final Act. 12 (citing Honjo ,r,r 31, 57-58, 61). Furthermore, we are not persuaded by Appellants' argument that "Kuroda does not describe any aspect of its drive unit configured to move the lens group that would be useable to apply voltage to the two electrodes ofHonjo's liquid crystal lens." Br. 16-17. Appellants present no persuasive evidence or argument that an ordinarily skilled artisan would have found it difficult to modify Kuroda's system to incorporate the liquid crystal lens features of Honjo. Further, Honjo details the requisite application of voltages to a liquid crystal lens in an imaging system. Honjo Fig. 4, ,r,r 50, 57----61. As such, we determine that it would not have been "uniquely challenging or difficult for one of ordinary skill in the art" to incorporate Honjo's liquid crystal lens into Kuroda's imaging apparatus. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) ( citation omitted). Accordingly, we are not persuaded the Examiner improperly combined Kuroda and Honjo in rejecting independent claims 1, 9, and 15. We, therefore, sustain the 35 U.S.C. Â§ 103(a) rejection of independent 5 Appeal2018-005237 Application 14/877,610 claims 1, 9, and 15, as well as the 35 U.S.C. Â§ 103(a) rejections of dependent claims 2-7, 10, 11, 13, 14, 16-19, and 21-23, which are not argued separately. See Br. 17, 21, 25. DECISION For the reasons above, we affirm the Examiner's decision rejecting claims 1-7, 9-11, 13-19, and 21-23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 6