Ex Parte Buchwald et al

Patent Trial and Appeal Board

Jul 10, 2017

12995424 (P.T.A.B. Jul. 10, 2017)

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.
12/995,424 03/07/2011 Carsten Buchwald 40047-018US1 1529
69713 7590 07/12/2017
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
EXAMINER
BELAI, NAOD W
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
07/12/2017 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):
INFO @ORP ATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARSTEN BUCHWALD and WOLFGANG SCHORN1
Appeal 2015-006347
Application 12/995,424
Technology Center 2400
Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and
MICHAEL M. BARRY, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was conducted on June 15, 2017.
We affirm-in-part.
1 Appellants identify the real party in interest as KHS GmbH, the assignee
of the instant application. Appeal Br. 1.
Appeal 2015-006347
Application 12/995,424
Invention
The disclosed and claimed invention on appeal is directed to a method
and device for detecting the edge profile of bottles or similar containers.
(Spec. 12.)2
Representative Claim
1. A method for detecting edge profiles of containers moved
past a measuring and/or recording region of a measuring
and/or recording system using at least one optoelectric
receiver on one side of the measuring and/or recording
region and at least one light-transmitting device located
opposite the optoelectric receiver in the measuring and/or
recording region, said method comprising:
using the at least one light transmitting device,
generating a parallel or substantially parallel light,
directing said light onto a container moved through
the measuring and/or recording region,
using at least one optoelectric receiver, generating
chronological line images of the container, and
forming the edge profile of the container from the
line images.
(Appeal Br. 27 (Claims App’x) (formatting modified for readability to
separate the method steps or acts recited in the body of claim 1 from
the preamble).
Rejections
A. Claims 1, 2, 8, 9, 17, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
2 We reference the Specification paragraphs as designated in US Patent
Application Publication US 2011/0149065 Al.
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Application 12/995,424
suggestions of Vala (EP 0 298 588 Al; pub. Jan. 11, 1989), in view of
Bonewitz et al. (US 5,917,602; iss. June 29, 1999) (hereinafter
(“Bonewitz”)).
B. Claims 3—7 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Baldwin (US
5,280,170; iss. Jan. 18, 1994), in view of Bonewitz.
C. Claims 10-16, 18, and 19 are rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Bonewitz, Vala, and further in view of Baldwin.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We address the separately argued claims, infra. To the extent
Appellants have not advanced separate, substantive arguments for particular
claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). We highlight and address specific findings and arguments
for emphasis in our analysis below.
Combinability under 35 U.S.C. § 103(a)
As a threshold issue, we decide the question of whether the Examiner
erred by improperly combining the cited references under 35 U.S.C. § 103.
Rejection A — the combinability of Vala and Bonewitz
Regarding the proffered combination of Vala and Bonewitz under
rejection A, Appellants contend, inter alia, that “Vala discloses a device for
detecting areas of shadows. Vala has no particular interest in detecting
edges. Thus, there would have been no reason to modify Vala to
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incorporate an advance in edge-detection technology.” (App. Br. 16
(emphasis added)).
However, Vala expressly describes “a method and apparatus designed
to accurately detect configurational or other dimension and surface
condition related information of an object or a stream of objects.” (Col. 5,
11. 37-41 (emphasis added)). Vala describes, in pertinent part:
passing an object or stream of objects between the collimating
lens and the array of photoresponsive elements so that the object
or stream of objects interrupts at least part of the light rays
directed from the light source toward the array. In this manner,
the information related to the configuration, the surface
condition or the dimensional outline of the shadow cast by said
objects is adapted for accurate detection by said array.
(Col. 5,11. 49—58 (emphasis added)).
We find Vala’s description of detecting “other dimension and
surface condition related information of an object or a stream of objects”
(col. 5,11. 37—41), at least suggests that the improved edge detection taught
by Bonewitz (col. 2,11. 12—15, 60-67; col. 3,11. 1—2), as found by the
Examiner (Final Act. 11), would have also improved the object dimension
and surface condition detection of Vala’s system (col. 5,11. 55—56), in
certain applications (emphasis added).3
Moreover, Vala addresses the specific advantages and disadvantages
of CCD cameras (of the type similarly used in Bonewitz, col. 5,11. 56—63,
for generating a line image). Vala describes:
3 “[T]he question under 35 U.S.C. [§] 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co. v. Biocraft
Labs., Inc., 874 F. 2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting
In reLamberti, 545 F.2d 747, 750 (CCPA 1976)).
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While CCDs are known to provide a high degree of
photosensitivity and resolution, they are relatively small in
size, the typical 2-dimensional matrix being approximately 1 cm
square, and the largest 1-dimensional array being approximately
3 to 4 inches in length. These size constraints impose
significant limitations on the utility of CCDs in those
applications wherein large areas must be scanned.
(Col. 2,11. 4—12 (emphasis added)).
Vala further describes: “It thus becomes apparent that while CCDs
provide high quality resolution, limitations associated with their relatively
small size, cost of fabrication and complex manufacturing processes render
them unsuitable for the optical scanning and replication of large area
objects.” (Col. 2,11. 43^18).
Thus, Vala acknowledges that although CCDs provide high quality
resolution and are suitable for small object scanning, a different type of
sensor (e.g., photoresponsive elements 18, Vala, Figs. 1, 2) is preferred for
providing high resolution scanning of large objects.
Given these descriptions, we find nothing that would preclude the
Examiner’s proffered combination (Final Act. 11), or even the parallel use of
two different types of sensors or cameras in a complementary, hybrid
fashion.4 Vala’s system uses photoresponsive elements 18 (Figs. 1, 2) as the
sensor, and Bonewitz uses a CCD camera (col. 5,11. 56—63). We find both
types of sensors (Vala’s elements 18 and Bonewitz’s CCD) could be
4 Regarding rejection A over the combination of Vala and Bonewitz, the
Examiner finds an artisan would have been motivated “to modify Vala’s
shadow detecting optical micrometer by incorporating generating
chronological line images of a container, and forming the edge profile of the
container from the line images as suggested by Bonewitz so as to detect
edges in the image for inspecting a container as it moves on a conveyor belt
(Bonewitz, abstract, col. 3 lines 1-2).” (Final Act. 11).
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interchanged with predictable results, or could be implemented in successive
physical scan positions along the moving conveyor belt, to obtain more data,
as needed for specific applications, as pertaining to the types and sizes of the
objects to be scanned. Therefore, we find such a substituted combination (or
hybrid combination) of the respective sensors of both systems (Vala’s
photoresponsive array 18 and Bonewitz’s CCD), as operatively configured
along a moving conveyor belt object transport, would have merely realized a
predictable result.5,6
Regarding the use of collimated (i.e., parallel) light, we find Vala
expressly describes some of the advantages of using collimated light:5 6 7
Regardless of the type of downstream processing, due to the use
of collimated light and the concommitant [sic] minimalization
of parasitic diffraction, the size of the shadow detected by the
array of photoresponsive elements is substantially the same as
the size of the object to be scanned. Thus the optical image
scanning device of the instant invention provides information
related to a precisely measured condition of the interposed
object. It is important to note that due to the collimated nature
of the light beams, a precise measurement of the object may
5 Buttressing the Examiner’s findings (Final Act. 11), we find a hybrid
system using both types of sensors in a serial arrangement along a single
conveyor belt would have been capable of handling both large and small
objects with high resolution.
6 See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[A]
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
7 Appellants’ representative indicated during the oral hearing that “parallel
light” (claim 1) is the same as collimated light: “[T]he examiner says, oh,
we should take the collimated light — sorry. I keep saying that. It’s called
parallel in the specification but they are the same thing.” (Transcript of
June 15, 2017 oral hearing, page 3, lines 17—19 (emphases added)).
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be obtained, regardless of the relative position of the object
between the collimating lens and the photoresponsive elements.
(Vala, col. 6,1. 50-col. 7,1. 5 (emphases added)).
Turning to Bonewitz (Fig. 2), we note lighting assembly 160 and the
“one or more optical layers 164 for altering the characteristics of the light”
are described in column 5, lines 37—55 (emphases added):
Preferably, lighting assembly 160 has a fluorescent light source
162 which provides relatively constant and even illumination of
container 114. Depending on whether dimensional or defect
imaging is desired, lighting assembly 160 may include one or
more optical layers 164 for altering the characteristics of the
light. For example, a diffuser mask focuses the illumination in
a smaller area and/or a layer of diffusion material more
evenly distributes the light over the inspection area. In
addition, a light control filter may be used to reduce glare.
Preferably, lighting assembly 160 illuminates container 114 with
more diffuse light when detecting defects so that the defects will
appear dark in the acquired image and illuminates container 114
with less diffuse, more direct light when inspecting the profile
to cause higher contrast edges in the acquired image.
Thus, Bonewitz describes a preferred embodiment that uses “less
diffuse, more direct light when inspecting the profile to cause higher
contrast edges in the acquired image.” (col. 5,11. 49—51). Therefore, we
find the collimated light used in Vala (col. 5,11. 43—57) for accurately
detecting “the surface condition or the dimensional outline of the shadow
cast by said object” (Vala, col. 5,11. 55—56) would have provided a “less
diffuse, more direct light when inspecting the profile to cause higher
contrast edges in the acquired image,” in accordance with the edge
detection embodiment described in Bonewitz (col. 5,11. 49-51).
To the extent the Examiner proffers that the edge detection taught by
Bonewitz (Abstract, col. 3 lines 1—2; Final Act. 11) would have improved
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the detection of “the surface condition or the dimensional outline of the
shadow cast by said object” (Vala, col. 5,11. 55—56), we also find the
collimated light used by Vala (col. 6,1. 8) would have improved the edge
detection taught by Bonewitz, by providing a less diffuse, more direct light
(emphases added). See n.4, supra (reproducing the Examiner’s motivation
statement for improving Vala’s shadow detecting optical micrometer with
the edge detection of Bonewitz (see Final Act. 11)).
Although an exemplary embodiment of Vala describes “determining,
in an industrial setting, the quality of the bottle cap fastening operation” (col.
8,11. 29-31), we emphasize that Vala expressly contemplates many
different types of applications: “It should be apparent that the system of
the instant inventions finds further response and utility in countless other
industrial settings.” (Vala, col. 8,11. 31—34 (emphases added)).
On this record, we are of the view that the Examiner’s proffered
combination of Vala and Bonewitz would have been useful to an artisan in
an industrial setting where the capability of detecting both object size
(Vala, col. 6,1. 41) and object flaws (using Bonewitz’s improvement of edge
detection, col. 3,11. 1—2; col 6,11. 1—3)) would have been advantageous.
(See Final Act. 11). 8,9
8 Bonewitz uses edge detection (col. 3,11. 1—2) “to inspect empty containers
114 to detect the presence of production defects, contamination and/or
damage or to inspect the container's profile.” (Col. 6,11. 1—3).
9 Vala describes: “The independent processing means then reads the
photogenerated signals emanating from the shadowed as well as non-
shadowed pixel elements and compares the result with the configuration,
dimension or surface condition previously set into memory so as to
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Appellants further contend:
The Bonewitz apparatus is particularly useful for fast-moving
objects on a conveyor belt. But this advantage would be
meaningless in Vala’s application. In Vala, the container is not
a moving target. It stands still while its shadow is acquired.
In contrast, Vala’s apparatus detects certain information about an
object that is “at least momentarily positioned between
projecting means ... and a photo responsive array.”
(App. Br. 17 (citing to Vala’s claim 1 in support, see footnote 26 on page 17
of the Appeal Brief) (emphasis added)).
However, we find Appellants’ statement that Vala’s container
“stands still while its shadow is acquired” is based on mere attorney
conjecture regarding the scope of Vala’s claim 1 (emphasis added).10
Contrary to Appellants’ speculation that Vala’s container “stands still
while its shadow is acquired” (App. Br. 17), Vala expressly describes “the
object 20 is illustrated in Figure 1 as operatively disposed on a moving
conveyor belt 47 . . ..” (Col. 8,11. 26-29 (emphases added)).
Moreover, we find even on a moving conveyor belt (Vala 47, col. 8,1.
29 — with movement depicted in Vala’s Figures 1 and 2 by the large arrows
pointing in the direction of belt movement), an object or stream of objects is
at least momentarily positioned between the projecting means 12 and the
photoresponsive array (sensor) 18, as described by Vala’s claim 1. Contrary
precisely determine the size, configuration or surface condition of the
object or its shadow.” (Col. 6,11. 36-43 (emphases added)).
10 Vala’s claim 1, in pertinent part, recites: “Apparatus (10) for accurately
detecting surface, configurational or other dimension related information of
an object (20) or stream of objects (20a) at least momentarily positioned
between projecting means (12a) and a photoresponsive array (18);” (Vala,
col. 11,11. 53—58 (emphasis added)).
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to Appellants’ contention (App. Br. 17), we find Vala is silent regarding any
specific mention “the container is not a moving target. It stands still
while its shadow is acquired.” (emphasis added).
As pointed out during the oral hearing (Transcript, page 11, lines 7—
10), Judge Barry noted that in describing Figure 3, Vala refers to flaws in the
surface condition, of an object “moving therepast.” See Vala, col. 11,11. 27—
29 (“By employing an embodiment of the micrometer 40a such as that
depicted in Figure 3, assembly line personnel can be alerted to defects, i.e.,
flaws in the surface condition, of an object (such an elongated web) moving
therepast.” (emphasis added)).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, we find unpersuasive Appellants’
contentions (App. Br. 13—18) that the Examiner has improperly combined
Vala and Bonewitz under rejection A.
Rejection B — the combinability of Baldwin and Bonewitz
Regarding the Examiner’s proffered combination of Baldwin and
Bonewitz under rejection B, Appellants merely assert: “The [Examiner’s]
proposed reasoning does not make sense because Baldwin [col. 2,1. 9, Fig.
2, fin 34] is directed to detecting the presence of a stray fin that is sometimes
formed at the seam of a bottle. Detecting the edge of a bottle as disclosed
by Baldwin [col. 2,11. 6—7] does not help with this function.” (App. Br.
22 (emphases added)).
However, Appellants do not provide any evidence to support this
assertion. (Id. ). It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
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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). Therefore, we find unpersuasive
Appellants’ contention (App. Br. 22) the Examiner has improperly combined
Baldwin with Bonewitz under rejection B.
Rejection C—the combinability of Bonewitz, Vala, and Baldwin
Regarding rejection C, the Examiner combines Bonewitz and Vala
with Baldwin. (Final Act. 17). Appellants attack the Examiner’s proffered
combination, by principally urging: (1) “Parallel light rays would make no
difference to Bonewitz edge detection” (App. Br. 5), and (2) “No reason [is]
given for how placing [the] camera behind [the] screen helps edge detection”
{id. at 6).
Regarding Appellants’ first contention, we find both Vala and
Baldwin describe known advantages of collimated light:
Vala — col. 9, l. 52 —col. 10, l. 5:
Due to the fact that the light rays projected from the source 12
have been collimated, the array of photoresponsive elements 18
are able to photogenerate signals which are very accurately
determinative of the actual surface configuration or
dimensions of the object to be scanned. By comparing the
dimensions of that object relative to said known values, it is
possible to precisely determine those objects which are
defective or the degree to which they deviate from preset limits
of acceptability. (Emphases added).
Baldwin — col. 1, //. 49—58:
The conveyor moves continuously and during its displacement
the container becomes located at the illustrated inspection
location where collimated light 16 passes vertically downwardly
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over the container. A Fresnel lens 20 receives light 19 dispersing
from a short arc flash tube 18 to form the collimated light beam
16. As shown in FIGS. 2 and 3 the footprint of the collimated
beam on the conveyor is selected so that for any conveyed
bottle, an annular band of light will surround bottle.
(Emphases added).
Baldwin — col. 2, //. 1—58:
A two-dimensional camera 30 viewing vertically upwardly
views the bottom of the container through the diffuser plate and
sees the collimated light footprint. The sensed image is
evaluated by an image processing computer 32. Such an image
processing computer will evaluate the circumference (or outline,
perimeter, out-side edge, edge) of the image of the bottle as cast
onto the diffusing surface by the collimated beam as shown in
FIG. 2 and determine the presence of a fin 34 (FIG. 2) or an
unacceptable out of round shape using conventional technology.
(Emphases added).
Because the aforementioned evidence indicates that an artisan would
have known that collimated light generates more precise shadow or line
edge images, we find Appellants’ first contention unavailing.
Regarding Appellants’ second contention, we find when the shadow
of an object is projected on a diffusion screen, a camera behind the screen
can detect the edges of the shadow. As discussed above, we find collimated
light generates sharper shadow images, which can be projected on a
diffusion screen. According to one disclosed embodiment relied on by the
Examiner (Final Act. 18), Bonewitz expressly teaches the use of “less
diffuse, more direct light when inspecting the profile to cause higher contrast
edges in the acquired image.” (Col. 5,11. 49—51). We find the use of
collimated light, as described above in both Vala and Baldwin, would have
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further improved Bonewitz by providing the “less diffuse, more direct
light” discussed in Bonewitz (emphasis added). (Col. 5,11. 49-51).
Therefore, we find unpersuasive Appellants’ contentions (App. Br. 5—
8) that the Examiner has improperly combined Bonewitz, Vala, and
Baldwin, under rejection C.
Contested Limitations under § 103
Having first addressed the combinability of the cited references relied
on by the Examiner, we now address specific limitations for specific claims,
to the extent the limitations are substantively contested by Appellants.
Limitations Contested under Rejection A
for claims 1, 2, 8, 9, 17, and 20
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
Claims 1, 8, 17, and 20
Regarding rejection A of independent claim 1, and dependent claims
17 and 20, Appellants advance no arguments contesting specific limitations.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
To the extent Appellants contest the “line imaging means” recited in
independent claim 8, Appellants merely restate that Vala and Bonewitz have
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been improperly combined by the Examiner, an argument we have fully
addressed supra.
Accordingly, because Appellants have not persuaded us the Examiner
erred, and based upon a preponderance of the evidence, we sustain the
Examiner’s rejection A of claims 1, 8, 17, and 20.
Claim 2
Regarding rejection A of claim 2, Appellants contest the recited
limitation “generating the line images from the image on the display screen.”
(App. Br. 18—19). We find a preponderance of the evidence supports
Appellants’ contention “[tjhere is no teaching of the idea that a camera 158
would use whatever image happens to be on the monitor 150 to generate a
line image. In fact, camera 158 is not even pointing at the display monitor
150.” (App. Br. 19, referring to Bonewitz, Figures 1 and 2). Therefore, we
reverse the Examiner’s rejection A of dependent claim 2. (See Final Act.
12).
Claim 9
Similar to the limitation contested regarding dependent claim 2,
dependent claim 9 recites in pertinent part: “wherein the line imaging means
is located in a beam path following the display screen” (emphasis added).
For essentially the same reasons argued by Appellants on page 21 of the
Appeal Brief, we reverse the Examiner’s rejection A of dependent claim 9.
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Limitations Contested under Rejection B for claims 3—7
Claim 3
Regarding rejection B of independent claim 3, Appellants contend:
“Baldwin fails to teach claim 3’s limitation of ‘using the parallel light of the
at least one light-transmitting device, generating an image of the container
on a display screen.’” (App. Br. 22 (emphasis added)).
However, we find a preponderance of the evidence supports the
Examiner’s findings and legal conclusion of obviousness. In particular, we
agree with the Examiner’s broad but reasonable reading of the “display
screen” of claim 3 on Baldwin’s diffuser plate (col. 2 lines 1—3), wherein
Baldwin’s two dimensional camera views the bottom of the container
through the diffuser plate and sees the collimated light footprint:
Baldwin specifically discloses, using the parallel light
(collimated light 16, fig[. 1]) of the at least one light-
transmitting [source (i.e., flash tube 18)], generating an
image of the container on a display screen (casting an image of
the bottle on the diffusing surface, col. 2 lines 1-10, fig. 1).
Appellant’s argument that a diffuser plate cannot be used to
display an image flies against the facts disclosed by Baldwin.
Baldwin clearly teaches a two dimensional camera “views the
container through the diffuser plate and sees the collimated
light foot print.” (col. 2 lines 1-3). Using the collimated beam,
an image of the bottle is cast on the diffusing surface (col. 2 11.
7-8). The image processing computer evaluates said image of
the bottle and evaluates said image of the bottle to determine the
circumference, (or outline, perimeter, outside edge, edge) of the
image of the [bottle] cast on the diffusing surface (Baldwin, col.
2 11. 1-10). Thus, Appellant’s argument that the diffuser plate
[28, Fig. 1] does cannot correspond to the claimed display
screen lack[s] factual correctness as Baldwin clearly shows the
diffuser plate displaying [the] image of the bottle.
(Ans. 29-30).
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Thus, as the Examiner finds (id.), the “display screen” of claim 3 is
taught or suggested by Baldwin’s diffuser plate 28 (Fig. 1, col. 1,1. 63),
wherein the collimated light beam 16 casts an image of the bottle on
diffusing surface 28. (See Baldwin, col. 2,11. 7—8). Because Appellants have
not persuaded us the Examiner erred, we sustain the Examiner’s rejection B
of independent claim 3.
Claim 4
Regarding rejection B of dependent claim 4, Appellants contend, inter
Claim 4 requires “recording without color and gray scale
values.”
The examiner has taken the position that Baldwin’s
references to shadows of the container implies the absence of
color and gray scale values.
Because of the wave nature of light, a shadow has a
penumbra and an umbra. The umbra is black. But the penumbra
fades across the gray scale from white to black. Therefore, the
fact that a shadow is involved in Baldwin does not necessarily
preclude the use of gray scale values because inherent in a
shadow is a gray scale that represents the penumbra.
(App. Br. 23).
Irrespective that a shadow may contain a gray scale region, Appellants
do not persuade us the Examiner erred. Baldwin teaches inspecting the
circumference “or outline, perimeter, outside edge, [or] edge” of a container
(see col. 2), and does not require, teach, or suggest any use of color or gray
scale. Appellants provide no persuasive argument or evidence explaining
why, when color or grayscale is of no importance to (or mentioned by)
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Baldwin, an ordinarily skilled artisan would have understood Baldwin to
require it.
We agree with the Examiner that, in the context of Baldwin, a shadow
is simply “a dark shape” or “an area of darkness” (Ans. 31), and that the
artisan would have understood Baldwin’s recording of these for the purpose
of edge detection (col. 2,1. 7) teaches or suggests “recording without color
and gray scale values,” within the meaning of the negative limitation of
claim 4. Accordingly, we sustain the Examiner’s rejection B of dependent
claim 4.
Claims 5—7
After reviewing the record, however, we reverse the Examiner’s
rejection B of dependent claim 5 for essentially the same reasons argued by
Appellants in the Appeal Brief (24—25), regarding the meaning of the claim
term “spectrum.” Specifically, Appellants contend:
The [Ejxaminer states that the optical layer 164 from
Bonewitz can modify the spectrum of light.
The factual finding that optical layer 164 can modify the
spectrum of light does not appear to be based on any evidence
of record.
The optical layer 164 can change characteristics that
affect diffusion and glare. These do not involve modifying the
spectrum of light.
The rejection may be based on a misunderstanding of
what “spectrum” means. In general, the spectrum of light is the
set of colors, i.e. wavelengths that are used to make it.
Therefore modifying a spectrum involves changing the
colors.
(App. Br. 24—25 (emphases added)).
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The Examiner disagrees: “Bonewitz discloses one or more optical
layers 164 for altering characteristics of light (col. 5,11. 40-42).” (Ans. 32)
We note Bonewitz describes that optical layers 164 may be used to
alter the characteristics of light, and also that “a light control filter may be
used to reduce glare.” (Col. 5,11. 41—46). However, in reviewing the
evidence, we agree with Appellants that the pertinent section of Bonewitz
(id.) is silent regarding any specific mention of using optical layers 164 to
change or filter colors, and thus modify the spectrum of the light, as
required by the language of dependent claim 5.
We reverse rejection B of claim 6 because it depends directly from
claim 5. We also reverse the Examiner’s rejection B of dependent claim 7
for essentially the same reasons argued by Appellants in the Appeal Brief
(25—26). However, see our discussion infra of similar claim 14, considered
under a different ground of rejection (rejection C).
Limitations Contested under Rejection C
for Claims 10—16, 18, and 19
Independent Claim 10
Regarding rejection C of Claim 10, Appellants note claim 10 recites
“wherein the at least one optoelectric receiver comprises a camera located in
the path of the beam following the display screen.” (App. Br. 8).
Appellants contend, inter alia:
Reference numeral “150” designates a computer monitor 150
shown in FIG. 1. However, this monitor 150 is part of an
electronic control system 136 that controls the inspection station
126 via a data link 142. The monitor 150 is not part of the system
shown in FIG. 2. Thus, it is not clear what it means physically
for the monitor 150 shown in Bonewitz FIG. 1 to either “follow”
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camera 158 or to “precede” the camera 158 shown in FIG. 2.
(Id.).
The Examiner turns to Baldwin to address the deficiency:
In this case the Examiner acknowledges that the claimed
invention, interpreted in light of appellant’s disclosure,
distinguishes over Bonewitz because Bonewitz does not
explicitly disclose the camera 158 (fig.2) as being placed
“following” monitor 150; however, the claimed invention is
rendered obvious when viewed [over] Bonewitz in view of
Baldwin because the distinguishing feature “a camera
located in the path of the beam following the display screen”
is clearly taught by Baldwin. In particular, Baldwin, in a
similar field of endeavor, discloses a camera 30 located in the
path of the beam following the diffusing surface [28], wherein
the image of the bottle is cast onto the diffusing surface by the
collimating beam (Baldwin, col. 1, line 67, col. 2, lines 1-10, fig.
1). A person of ordinary skill in the art having the disclosures
of Bonewitz and Baldwin would have found it obvious to modify
Bonewitz by placing Baldwin’s diffuser plate 28 before
Bonewitz’s camera in order to detect [a] fin or any other
[unacceptable shapes (Baldwin, col. 2 lines 1-12).
(Ans. 25 (emphasis added)).
In the Reply Brief 13—14, Appellants respond, inter alia:
As the examiner has previously stated (see page 6, last
paragraph of Answer), Bonewitz already carries out edge
detection. Bonewitz manages to do this even though it lacks “a
camera located in the path of the beam following the display
screen.” Obviously, since Bonewitz can already do edge
detection, even without “a camera located in the path of the beam
following the display screen,” having “a camera located in the
path of the beam following the display screen” would have made
absolutely no difference to the ability to carry out edge detection.
In Baldwin, the fact that camera 30 is located in the path
of the beam following the diffuser plate 28 is not what causes a
fin to be detected. The act of detection is carried out by an image-
processing computer 32 (see Baldwin, col. 2, lines 4-11).
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In fact, fin detection is just a special case of edge detection.
Baldwin and Bonewitz together provide evidence that having “a
camera located in the path of the beam following the display
screen” has nothing to do with edge detection. This is because
Bonewitz does edge detection without “a camera located in the
path of the beam following the display screen” and Baldwin does
edge detection with “a camera located in the path of the beam
following the display screen.”
To the extent that edge detection can be done using either
arrangement (as urged by Appellants (id.)), we nevertheless find Appellants
have not persuasively addressed the Examiner’s legal conclusion, “the
claimed invention is rendered obvious [over] Bonewitz in view of Baldwin
because the distinguishing feature [of] ‘a camera located in the path of the
beam following the display screen’ is clearly taught by Baldwin.” (Ans.
25).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection C of independent claim 10.
Claim 11
Claim 11 recites in pertinent part: “an additional measuring and/or
recording region through which containers are moved in a conveyor . . . .”
Regarding rejection C of dependent claim 11, Appellants note that
“claim 11 thus requires two measuring and/or recording regions, not just
one. It requires a first region as recited in claim 10, and a second region as
recited in claim 11.” (App. Br. 9). Appellants urge: “The examiner has not
identified two recording regions. The examiner has only identified one
recording region. Since the claim requires two recording regions, the
examiner is short one recording region. In order to properly reject this
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claim, the examiner needs to find a second recording region.” (App. Br. 9).
Additionally, “Claim 11 also requires either two light-transmitting devices
or two receivers. In each case, the examiner has only identified one.” (Id.).
However, we find the evidence supports the Examiner’s finding that
Bonewitz, in combination with Vala and Baldwin, teaches or suggests the
contested duplicate limitations: “Bonewitz discloses additional lighting
assembly 160a-160e and additional cameras 158-158e (Bonewitz, fig. 7).”
(Ans. 26 (emphases added)).
Moreover, we find claiming a mere plurality of prior art elements is
not an unobvious distinction over the prior art of record, because using
plural elements would have produced a predictable result under § 103. “A
mere duplication of parts is not invention.” In re Marcum, 47 F.2d 377, 378
(CCPA 1931) (citing Topliffv. Topliff, 145 U.S. 156, 163 (1892)). See also
Dunbar v. Myers, 94 U.S. 187, 195 (1876) (“for most purposes the machine
will operate as well and as successfully with one deflecting plate as with
two. Two deflecting plates may be better than one . . . .”). “It is true that in
the patent cited, there was but one detachable blade. However, the use of
two such blades would readily suggest itself to the mechanic. It is a mere
duplication of parts, and this has been uniformly held to be not patentable.”
In re Abrahamsen, 53 F.2d 893, 894 (CCPA 1931) (citations omitted). “It is
well settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced.” In re Harza, 274 F.2d
669, 671 (CCPA 1960). See also MPEP 2144.04(VI)(B)(“REVERSAF,
DUPFICATION, OR REARRANGEMENT OF PARTS”).
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This reasoning is applicable here regarding the duplication of the
contested claimed elements. Therefore, we sustain the Examiner’s rejection
C of dependent claim 11.
Claims 12, 18, and 19
Regarding rejection C of dependent claims 12, 18, and 19, Appellants
advance no arguments contesting specific limitations. Arguments not made
are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain the
Examiner’s rejection C of dependent claims 12, 18, and 19.
Claim 13
Claim 13 recites in pertinent part: “optical filters located in a beam
path of the light generated by the at least one light-transmitting device, the
optical characteristics of said optical filters being adaptable to modify the
light spectrum of the light-transmitting device.” (Emphasis added).
Regarding rejection C of dependent claim 13, and similar to our
discussion of dependent claim 5 above, we find a preponderance of the
evidence supports Appellants’ broad but reasonable interpretation of the
claim term “spectrum.” (App. Br. 10). Therefore, we agree with
Appellants that, as taught by Bonewitz (optical layers 164 for altering the
characteristics of the light, Fig. 2), “Layers 164 do not alter the spectrum of
light. They only alter focus of the light and carry out tasks related to glare
reduction. This is not the same thing as altering a light spectrum.” (App.
Br. 10; see also Final Act. 21—21). Accordingly, we reverse the Examiner’s
rejection C of dependent claim 13.
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Claim 14
Claim 14 recites in pertinent part: “wherein the display screen has a
transmission characteristic such that said display screen is only transparent
to light incident from a pre-determined direction.”
Although we have reversed above the Examiner’s rejection B of claim
7, which recites commensurate limitations to claim 14, we note rejection B
does not rely on the Vala reference. Regarding rejection C of claim 14
over the combination of Bonewitz, Vala, and Baldwin, the Examiner maps
the contested limitation to “Vala, polarizing lens 49, col. 11 lines 10-20.”
(Final Act. 21).
Appellants contend, inter alia: “Vala discloses the idea of using
polarizing lenses 49 to control the polarization state of light incident on the
array 18. This does not mean that array 18 will let some of this light
through. In fact, based on what array 18 is made of, it is opaque to light
coming from all directions regardless of polarization.” (App. Br. 11).
However, Appellants appear to misunderstand the Examiner’s
rejection, which maps the “display screen” of claim 14 to Vala’s polarizing
lens 49, and not to Vala’s sensor array 18. (Vala, Fig. 2).
In the Answer, the Examiner explains that “Vala discloses polarizing
lens 49, and one of the functions of polarizing lenses is to selectively
transmit light.” (Ans. 27).
In the Reply Brief, Appellants respond: “A polarizing lens selectively
transmits light based on its polarization. It does not selectively transmit
light based on its angle of incidence. Therefore, a polarizing lens does not
amount to a display screen that is ‘only transparent to light incident from a
predetermined direction.’” (Reply Br. 15 (emphasis added)).
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However, Appellants could have advanced this argument in the
Appeal Brief, therefore we find the argument in the Reply Brief (15) is
untimely. See 37 C.F.R. § 41.41(b)(2).
After reviewing the record, we sustain the Examiner’s rejection
because we find the cited evidence (Vala’s polarizing lens 49, Fig. 2), at
least suggests the contested “display screen” limitation of dependent claim
14. Seen3, supra.
Claim 15
Claim 15 recites in pertinent part: “wherein the at least one light
source comprises a plurality of individual light sources, and a lens for
pooling the light provided by the individual light sources to form a
punctiform light source.”
Appellants contend Vala’s “FIG. 1 shows one light source 12. The
claim requires ‘aplurality of individual light sources. ’ This means that there
should be two or more individual light sources. The lone light source 12 is
not a ‘plurality of individual light sources.’” (App. Br. 11).
However, we find claiming a mere plurality of prior art elements is
not an unobvious distinction over the prior art of record, because using
plural elements would have produced a predictable result under § 103. See
our discussion of claim 11, supra. See also, n.6, supra.
Appellants further contend “the [EJxaminer has not demonstrated that
[Vala’s] lens 16 will pool the light provided by the individual light sources
to form a punctiform light source.” (App. Br. 12 (emphasis added)).
Turning to Appellants’ Specification for context, we find a punctiform
light source is described as being formed “by a plurality of individual light
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sources with associated lenses for trapping the light. The light source 7.1
and the individual light sources of the light source 8.1 are produced in each
case, for example, by an LED or by a plurality of LEDs.” (Spec. 120).
Given that Vala describes a light that “may be either a point source or
distributed source” (col. 6,11. 4—5), on this record, we are not persuaded that
the claimed “lens for pooling the light provided by the individual light
sources to form a punctiform light source” would have been anything more
than a predictable result. See n.6, supra. Therefore, we sustain the
Examiner’s rejection C of dependent claim 15.
Claim 16
Claim 16 recites a contested negative limitation: “wherein the
optoelectric receiver comprises a line camera configured to receive light
directly, without the light having passed through a lens” (emphases
added).
The Examiner finds Bonewitz’s Figure 2 teaches the contested line
camera that is configured to perform the recited function. (Final Act. 21).
The Examiner further explains: “the receiver compris[ing] a camera is not
limited by ‘configured to receive light directly, without the light having
passed through a lens’ because any camera is capable [of] receiving incident
light despite the incident light’s past history of its interaction with a lens.”
(Ans. 28-29).
Regarding the line camera and the contested negative limitation, we
reverse the Examiner’s rejection C of claim 16 for essentially the same
reasons argued on pages 12—13 of the Appeal Brief.
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Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s rejections of claims 1,3,4, 8, 10-12, 14,
15, and 17—20 under pre-AIA 35 U.S.C. § 103(a).
We reverse the Examiner’s rejections of claims 2, 5—7, 9, 13, and 16
under pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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