Ex Parte Clauss et al

Board of Patent Appeals and Interferences

Jun 29, 2012

10590257 (B.P.A.I. Jun. 29, 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.
10/590,257 08/22/2006 Stefan Clauss 3753 6037
7590 06/29/2012
Striker Striker & Stenby
103 East Neck Road
Huntington, NY 11743
EXAMINER
SAHLE, MAHIDERE S
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
06/29/2012 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 STEFAN CLAUSS and GUNTER FLINSPACH
____________

Appeal 2009-015281
Application 10/590,257
Technology Center 2800
____________

Before SCOTT R. BOALICK, DENISE M. POTHIER, and
JEFFREY S. SMITH, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015281
Application 10/590,257

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11.
1
We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

INVENTION
Appellants’ invention relates to an optical marking device to perform
various leveling, aligning, and marking tasks. See Spec. 1:3-12. Claim 1 is
reproduced below:
1. An optical marking device having at least one light source (20, 22,
24; 32, 34, 36), and having means for generating a first optical
projection line (26) on a reference face (10), as well as means for
generating a second optical projection line (30) on the same reference
face (10), and the second optical projection line (30) forms an angle of
90° with the first projection line (26), characterized in that means (20,
22, 24; 32, 34, 36) are present which generate a third projection line
(28), and the third projection line assumes an angle of 45° to the first
optical projection line (26) and an angle of 45° to the second optical
projection line (30).

The Examiner relies on the following as evidence of unpatentability:
Murray US 2007/0175054 A1 Aug. 2, 2007
(effectively filed Oct.
10, 2003)

1
We presume, as has the Examiner (see Ans. 2-3), the claims filed with the
Appeal Brief are incorrect and the actual claims on appeals are those filed
with the August 22, 2007 Amendment.
Appeal 2009-015281
Application 10/590,257

3
THE REJECTION
The Examiner rejected claims 1-11 under 35 U.S.C. § 102(e) as
anticipated by Murray. Ans. 3-5.

THE CONTENTIONS
Regarding representative claim 1, Appellants argue that Murray does
not disclose – nor is there a possibility of –simultaneously displaying the
three recited optical projection lines on a reference surface that are formed at
a forty-five degree angle relative to one another. Br. 4-5. Appellants assert
that Murray can display a single optical projection line (Figure 1) or two
optical lines ninety degree apart (Figure 2) but neither embodiment shows
three projection lines in a plane which are offset by forty-five degrees. Id.
The Examiner states that claim 1 does not require that the projection
lines be displayed simultaneously. Ans. 5. The Examiner finds that Murray
discloses generating an optical projection line at zero, forty-five, and ninety
degrees from a reference point and meets the limitations of claim 1.
Ans. 3-5. The Examiner further finds Murray discloses using multiple light
sources to project two or more lines at predetermined angles with respect to
one another and discloses what is recited in claim 1. Ans. 5.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that claim 1 does not require simultaneously generating three optical
projection lines?

Appeal 2009-015281
Application 10/590,257

4
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of representative claim 1. Contrary to Appellants’ arguments
(Br. 5), we agree with the Examiner that claim 1 does not require
simultaneously generating the recited projection lines, and this argument is
not commensurate in scope with the claim. Also, the Examiner
demonstrates how Murray discloses in the Figure 1 embodiment generating
all three recited projection lines (i.e., 0, 45, and 90 degrees). See Ans. 5
(citing ¶ 0058). Specifically, Murray discloses that a laser light source 16
may be used to project a line and how the light projecting housing 62 is
movable to enable the angle or direction of the projected line be adjusted at
forty-five degree increments. ¶¶ 0024, 0033-34, 0038-39, 0058; Fig. 2.
Additionally, Murray discloses an optional mechanism for adjusting the
orientation of the light beam, including mirrors, lens, a prism mechanism, or
a beam splitter. ¶¶ 0036, 0039.
Murray thus discloses an optical marking device embodiment that
generates a first optical projection line on a reference face, a second optical
projection line at a ninety degree angle with the first optical projection line,
and a third optical projection line at an angle of forty-five degrees to the first
and second optical projection lines. While these lines may not be projected
simultaneously but rather at different moments in time, Murray discloses a
mechanism for generating each line at the specified angle as broadly as
recited.
Also, as cited by the Examiner (Ans. 4-5), Murray further discusses
providing two or more simultaneous lines on a surface using multiple light
sources or a single light source that splits the light beam. ¶ 0059. Murray
Appeal 2009-015281
Application 10/590,257

5
states the lines are at predetermined or adjustable angular orientations with
respect to each other (id.), and Murray teaches forty-five degree increments
are being used (¶¶ 0039, 0058). Thus, Murray teaches yet another
embodiment that has a mechanism for generated the three recited optical
projection lines.
Neither Appellants nor the Examiner indicates whether the “means
for” language found in claim 1 invokes 35 U.S.C. § 112, sixth paragraph.
Even assuming that claim 1 invokes the sixth paragraph of §112, the
corresponding structure described in the Specification and its equivalents do
not require simultaneously projecting lines, as Appellants contend. Br. 5.
The Specification describes various mechanisms used to create the three
recited projection lines, including using light sources with a single switch
that make “it possible to switch back and forth among the individual partial
beams or to switch one or more partial beams on or off.” Spec. 9:8-9. By
switching the beam on and off, even one of Appellants’ own embodiments
does not generate the optical projection lines simultaneously as argued.
See Br. 5.
Other exemplary embodiments in the disclosure include a light source
in the form of a laser with (a) a holographic grating to split the light source
20 (Spec. 6:4-7) or (b) other suitable optical elements, such as a cylindrical
lens, for generating the optical projection lines (Spec. 6:11-15, 18-21,
8:16-18). As discussed above, Murray discloses a structure that corresponds
to or is equivalent to such structures (e.g., lens, prisms, mirrors, beam
splitters, multiple light sources) for generating projection lines at different
angle.
Appeal 2009-015281
Application 10/590,257

6
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-11 not separately
argued with particularity.

CONCLUSION
The Examiner did not err in rejecting claims 1-11 under § 102.

DECISION
The Examiner’s decision rejecting claims 1-11 is affirmed.
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).

AFFIRMED

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