Ex Parte Devota et al

Patent Trial and Appeal Board

Oct 25, 2018

14258366 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/258,366 04/22/2014
153508 7590 10/29/2018
Honigman Miller Schwartz and Cohn LLP/Magna
650 Trade Centre Way
Suite 200
KALAMAZOO, MI 49002-0402
Robert A. Devota
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. CONFIRMATION NO.
MAG04- P2266-423697 6968
EXAMINER
BECK,LERON
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
patent@honigman.com
tflory@honigman.com
asytsma@honigman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. DEVOTA, GARRET ACHENBACH,
DAVID F. OLSON, MATTHEW C. SESTI,
and JOHN R. GARCIA
Appeal2018-002865
Application 14/258,366
Technology Center 2400
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-002865
Application 14/258,366
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows ( emphasis added):
1. A vehicle vision system comprising:
a camera module comprising an image sensor array, a
circuit element, a lens holder and a lens, wherein said camera
module is configured to mount at a receiving structure at an
interior surface of a vehicle windshield of a vehicle equipped
with said vehicle vision system;
wherein, with said camera module mounted at the
receiving structure at the interior surface of the vehicle
windshield, said image sensor array views forward of the
equipped vehicle and through the vehicle windshield;
wherein said circuit element has a first surface and a
second surface opposite said first surface;
wherein said image sensor array is established at said
first surface of said circuit element;
wherein said lens holder comprises a lens holding portion
and an attaching portion;
wherein said lens holding portion of said lens holder
accommodates said lens;
wherein said attaching portion of said lens holder
comprises a mating surface that faces away from said lens
holding portion of said lens holder, and wherein said mating
surface is configured to mate with said first surface of said
circuit element when said attaching portion is attached at said
circuit element;
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wherein said attaching portion comprises a plurality of
pins extending longitudinally from said mating surface of said
attaching portion;
wherein individual pins of said plurality of pins are
configured to be received at least partially through respective
apertures of said circuit element;
wherein, with said mating surface of said attaching
portion of said lens holder mated with said first surface of said
circuit element, said pins are received at least partially through
said apertures;
wherein, as received at least partially through the
respective apertures of said circuit element, said pins locate
said lens holder at said circuit element; and
wherein, with said pins received at least partially through
said apertures of said circuit element, said pins are soldered at
said circuit element so as to fixedly attach said lens holder at
said circuit element.
App. Br. 46-47 (Claims Appendix).
Rejection on Appeal
The Examiner rejected claims 1-20 under 35 U.S.C. § 103 as being
unpatentable over DeWard et al. (US 7,480,149 B2; issued Jan. 20, 2009)
("De Ward"), Hayashimoto et al. (US 4,634,884; issued Jan. 6, 1987)
("Hayashimoto"), and Suda et al. (US 5,734,428 A; issued Mar. 31, 1998)
("Suda"). 1
1 The patentability of claims 2--4, 10-12, and 17 is not separately argued
from that of claims 1, 13, and 16. See App. Br. 29, 34, 38. Thus, with
respect to this rejection, except for our ultimate decision, claims 2--4, 10-12,
and 1 7 are not discussed further herein.
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Issue on Appeal
Did the Examiner err in rejecting claims 1, 5-9, 13-16, and 18-20 as
being obvious?
PRINCIPLES OF LAW
Claim Interpretation
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. See In re
American Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In the absence of an express definition of a claim term in the specification or
a clear disclaimer of scope, the claim term is interpreted as broadly as the
ordinary usage of the term by one of ordinary skill in the art would permit.
See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007); see also In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). Though understanding the claim language may be aided by
the explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004).
Obviousness
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
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the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413,425 (CCPA 1981).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
contention that the Examiner erred. Instead, we concur with the conclusions
reached by the Examiner. Except as noted below, we adopt as our own the
reasoning set forth by the Examiner in the Non-final Office Action and
Examiner's Answer.
A. Independent Claims 1, 13, and 16
Appellants contend the combination of De Ward, Hayashimoto, and
Suda does not teach or suggest "wherein individual pins of said plurality of
pins are configured to be received at least partially through respective
apertures of said circuit element," "wherein, as received at least partially
through the respective apertures of said circuit element, said pins locate said
lens holder at said circuit element," and "wherein, with said pins received at
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least partially through said apertures of said circuit element, said pins are
soldered at said circuit element so as to fixedly attach said lens holder at said
circuit element," as recited in claim 1 because:
The multi-pin electrical connector of De Ward simply is not used
in any way to locate or affix a lens or lens holder of a camera
module at a circuit element that has an image sensor array at
the side attached by the lens holder. Nor would it have been
obvious to modify De Ward's multi-pin electrical connector to be
used for a purpose that is contrary to its function of electrically
connecting the camera circuitry to a vehicle wire harness.
[W]hile DeWard's multi-pin electrical connector indeed has
pins, these pins do not extend from a lens holder, and moreover
De Ward does not disclose or suggest using these pins to fix or
locate the mated lens holder at a circuit element, as also set
forth in claim 1 [.]
While the carrier 12 of the accessory module of De Ward may be
integrally molded to include the multi-pin electrical connector 34
and the camera holding portion 24, the carrier 12 of DeWard,
whether it is integrally molded or not, is not exclusively a lens
holder[.] In stark contrast to the claimed lens holder, the carrier
12 of De Ward is described to have multiple accessory module
features, such as the connector and the camera holding portion
and supports for other accessories, molded together to ease the
assembly of the accessory module due to the overall reduction in
the number of components. Further, De Ward discloses that the
camera holding portion 24 has a recess 28 for a lens mounting
portion 26, such as shown in FIG. 1. Thus, the Examiner's
allegation that the entire carrier 12 of DeWard's accessory
module is a lens holder ignores the fact that the carrier of
De Ward incorporates many different components and it
already specifies an equivalent feature to a lens holder, the lens
mounting portion 26. As such, the Examiner is extending the
ordinary meaning of lens holder beyond its reasonable limits so
as to construe DeWard's multi-pin electrical connector 34 (for
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connecting an external wire harness) as part of a lens holder.
Thus, Appellant submits that not only does DeWard fail to
disclose or suggest all the features alleged by the Examiner, but
the Examiner's interpretation of the carrier is unreasonably
broad and the Examiner also misapplies the multi-pin electrical
connector of De Ward to the claim features, as identified above.
Hayashimoto merely discloses soldering a film connector 60 to
pins 26, such as at Figure 1 and column 5, lines 1-10. There is no
disclosure or suggestion in Hayashimoto of the pins 26 being
at least partially received through respective apertures of a
circuit element, as claimed[.] Nor is there any disclosure or
suggestion in Hayashimoto of a lens holder having pins
extending therefrom, as claimed[.] In stark contrast to the
claimed pins being soldered to the circuit element (so as to
fixedly attach said lens holder at said circuit element),
Hayashimoto's pins 26 are soldered to the film connector 60 to
receive the voltage for causing the vibration, not to provide a
fixed or located attachment point. Thus, not only does
Hayashimoto not disclose or suggest the claim elements, but one
of ordinary skill in the art, armed with the likes of De Ward and
Hayashimoto, would not be led to combine the soldering of
Hayashimoto's film connector and pins with the lens holder
that is integrally formed with the carrier of De Ward's accessory
module. Clearly, the Examiner is merely using Hayashimoto for
its disclosure or use of the term "solder" and ignoring the vast
differences between DeWard and Hayashimoto. And clearly,
such a combination is being made using hindsight
reconstruction and using the present claims as a template.
Suda merely discloses a handheld single-lens reflex (SLR)
camera that has a lens holder that is attached to a prism pressing
member by fixing screws. Specifically, as shown in FIG. 14, the
lens holder 55 holds the camera's projection lens 19 that reflects
and focuses light on a display portion of a reflection plate. This
lens holder 55 is simply attached to a prism pressing member 53
with fixing screws 56. These screws mechanically fasten [on]
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the lens holder of Suda; however, this is not what is claimed.
There is clearly no disclosure or suggestion in Suda of using
pins to locate a lens holder at a circuit element, as claimed[.]
Moreover, the Examiner ignores that the imaging sensor of
De Ward is described at column 4, lines 42-50 to be positioned at
the lens holder by the imaging sensor itself being positioned
within a sensor receiving portion 30 of the camera mounting
portion 24, certainly not by using the pin elements 36 of the
multi-pin electrical connector to locate the lens holder at the
circuit element, as the Examiner incorrectly alleges would be
obvious when taken in view of Hayashimoto and Suda. Thus,
for this additional reason, Appellant submits that there would
be no motivation to modify the multi-pin electrical connector of
DeWard with Suda to provide a locating function, since
positioning is already performed by the imaging sensor of
DeWard.
De Ward's teaching to integrally form the lens holder with other
portions of the accessory module is in direct opposition to using
pins on an attaching portion of a lens holder to locate and attach
the lens holder at the circuit element having the image sensor
array, as set forth in the vehicle vision system of the present
invention.
In making the rejection, the Examiner asserts that it would have
been obvious to combine Hayashimoto with De Ward "for high
reliability" and that it would have been obvious to combine Suda
with DeWard and Hayashimoto "for high compatibility and
marketability of an improved camera." Appellant submits that
such reasons are merely conclusory statements and do not have
rational underpinning. There is no reason for one of ordinary
skill in the art to feel that De Ward's camera module needs better
reliability. Nor is there any reason for one of ordinary skill in the
art to feel that the camera module needs to have high
compatibility and marketability. Plainly, such conclusory
statements fall well short of the requirements to establish a prima
facie case of obviousness of the presently claimed invention.
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App. Br. 19, 21-27 (Appellants' emphasis and citations omitted; panel's
emphasis added); see also Reply Br. 2-10.
We are not persuaded that the Examiner erred. Regarding De Ward,
we agree with the Examiner that it is reasonable to interpret the claimed
"lens holder" as reading on the carrier portion disclosed in De Ward. See
Non-final Act. 5; see also Ans. 10-11. This is because DeWard teaches the
carrier portion is a unitarily or integrally modeled element that receives and
holds a lens, and further teaches the carrier portion includes a multi-pin
connector that includes electrically conducting pins that extend from the
multi-pin connector and are positioned to insert through a circuit board
positioned at a surface of a mounting portion. See De Ward 3:23-26; 6:7-17.
As further taught by De Ward, the carrier portion provides for both holding
of the lens and connecting to a circuit board. See DeWard 6:21-26. As
claim 1 merely recites that the claimed lens holder "comprises a lens holding
portion and an attaching portion," the aforementioned portion of De Ward
teaches the aforementioned claim element. Appellants' argument that the
claimed lens holder is patentably distinct from De Ward's carrier portion
because the carrier portion is not exclusively a lens holder is not persuasive,
as there is no language in claim 1 that restricts the claimed "lens holder"
from including other components.
With respect to Hayashimoto, we are not persuaded by Appellants'
argument, as the argument fails to address the rationale of the Examiner's
rejection. More specifically, the Examiner did not rely solely upon
Hayashimoto to teach "wherein, with said pins received at least partially
through said apertures of said circuit element, said pins are soldered at said
circuit element so as to fixedly attach said lens holder at said circuit
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element," as recited in claim 1. Rather, the Examiner relied upon De Ward
for teaching the claimed receiving of pins at least partially though apertures
of a circuit element so as to fixedly attach a lens holder at the circuit
element, and further relied upon Hayashimoto for teaching the claimed
soldering of pins to a circuit element. See Non-final Act. 5-6; see also
Ans. 12. Appellants' argument attacks the references individually and fails
to address the combination of references. Regarding Appellants' argument
that a person of ordinary skill in the art would not combine Hayashimoto' s
soldering of film connector and pins with De Ward's integrally formed
carrier portion (including lens holder) because of the differences between
De Ward and Hayashimoto, this argument is not persuasive either. "The 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 those references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d at 425;
see also In re Nievelt, 482 F.2d 965,968 (CCPA 1973) ("Combining the
teachings of references does not involve an ability to combine their specific
structures.").
Regarding Suda, we are not persuaded by this argument either. As
previously described, we agree with the Examiner that De Ward teaches a
carrier portion that positions a lens relative to a circuit board via pins of a
multi-connector. See Non-final Act. 6; see also Ans. 12-13; De Ward 6:21-
26. We further agree with the Examiner that Suda teaches fixing a lens
holder to a location relative to a prism pressing member via fixing screws.
See Non-final Act. 6; see also Ans. 13; Suda 11:21-30. Thus, consistent
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with Examiner's findings, the combination of De Ward, Hayashimoto, and
Suda teaches or suggests all the elements of claim 1.
With respect to a motivation to combine the cited references, we are
not persuaded the Examiner erred. Instead, we find the Examiner has
articulated a sufficient rationale to combine the references (i.e., to gain the
benefits respectively disclosed in Hayashimoto and Suda: (a) increased
efficiency and reliability in the manufacture of the connected components;
(b) increased capability for compatible accessories). See Non-final Act. 6
(citing Hayashimoto 6:1; Suda 2:20-25); see also Ans. 13-14.
In addition to relying on its arguments for claim 1, Appellants further
contend the combination of De Ward, Hayashimoto, and Suda fails to teach
or suggest all of the elements recited in claim 13 because:
In making the § 103 rejection of this limitation of independent
claim 13, the Examiner (at page 8 of the Office Action) simply
cites to Figure 1 of De Ward and alleges the analysis is analogous
to those presented for claim 1. Appellant respectfully traverses.
The Examiner clearly fails to identify the teachings of De Ward
for this independent claim, which recites alternative limitations
to those provided in claim 1. In stark contrast to these alternative
claim limitations of claim 13, the electrical connector 34 as
shown in the Figure 1 of De Ward is integrally formed with the
carrier and clearly fails to disclose the attachment element as
set forth in claim 13. Thus, Appellant submits that the Examiner
fails to provide a prima facie rejection of claim 13 by simply not
addressing the different limitations from claim 1.
App. Br. 35 (emphasis added).
We are not persuaded of Examiner error. Although claim 13 recites
"at least one attachment element," which is not recited in claim 1,
Appellants fail to persuasively establish why De Ward (either individually or
in combination with Hayashimoto and Suda) fails to teach or suggest the
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aforementioned element. Based on the previous discussion, we agree with
the Examiner that the combination of cited references teaches this element of
claim 13 as well. See Non-final Act. 8; see also Ans. 15.
In addition to relying on its arguments for claim 1, Appellants further
contend the combination of De Ward, Hayashimoto, and Suda fails to teach
or suggest all the elements recited in claim 16 because:
In making the § 103 rejection of this limitation of independent
claim 16, the Examiner (at page 9 of the Office Action) simply
cites to Figure 1 of De Ward and alleges that it "shows image
array being enclosed." Appellant respectfully traverses. The
Examiner clearly misapplies the teachings of De Ward to this
claim. Throughout the Office Action, the Examiner cites to the
electrical connector 34 of De Ward to incorrectly allege that an
attaching portion of a lens holder is disclosed. However, claim
16 further specifies that with attaching portion attached at said
circuit element, said image sensor array at said first surface of
said circuit element is generally encased by said attaching
portion. In stark contrast to this claim limitation, the electrical
connector 34 as shown in the Figure 1 of De Ward/ails to encase
the image sensor that is provided behind the lens 20.
App. Br. 37 (Appellants' emphasis omitted; panel's emphasis added).
We are not persuaded that the Examiner erred. Consistent with the
Examiner's findings, De Ward teaches the lens is substantially encased by a
housing attached to the carrier portion, and the carrier portion aligns the lens
with a windshield. See DeWard 3:20-23; 7:54---60; see also Non-final
Act. 9. Thus, we agree with the Examiner that De Ward, individually or in
combination with the other cited references, teaches or suggests "wherein,
with said attaching portion attached at said circuit element, said image
sensor array at said first surface of said circuit element is generally encased
by said attaching portion and is generally optically aligned with said lens,"
as recited in claim 16.
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Accordingly, Appellants have not shown the Examiner erred in
rejecting claims 1, 13, and 16 under 35 U.S.C. § 103.
B. Claims 5 and 18
Appellants contend the combination of De Ward, Hayashimoto, and
Suda does not teach or suggest "wherein said attaching portion of said lens
holder comprises a generally rectangular portion having said plurality of
pins disposed along and protruding from at least one side region of said
attaching portion," as recited in claim 5 and similarly recited in claim 18
because:
As plainly shown in the cited FIG. 7 of De Ward, the pins 36 are
part of the multi-pin electrical connector 34 for electrically
connecting circuity of De Ward's camera module to a wire
harness of a vehicle, which does not in any way disclose or
suggest an attaching portion of a lens holder that mates with a
circuit element, as recited in claim 5.
App. Br. 29 (emphasis added); see also App. Br. 38; Reply Br. 10.
We are not persuaded that the Examiner erred. As previously
described, De Ward's multi-pin connector 34, either individually or in
combination with the other cited references, teaches or suggests the claimed
"attaching portion of [the] lens holder," as recited in claim 5 and similarly
recited in claim 18. Consistent with the Examiner's findings, De Ward
shows the multi-pin connector has a generally rectangular shape with pins
protruding from one side. See Non-final Act. 7 (citing De Ward at Fig. 7);
see also Ans. 14; DeWard at Figs. 1, 6. Accordingly, Appellants have not
shown the Examiner erred in rejecting claims 5 and 18 under
35 U.S.C. § 103.
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C. Claims 6 and 19
Appellants contend the combination of De Ward, Hayashimoto, and
Suda does not teach or suggest "wherein said plurality of pins are generally
linearly disposed along and protruding from opposite side regions of said
attaching portion, and wherein said pins are received at least partially
through respective apertures at said circuit element," as recited in claim 6
and similarly recited in claim 19 because:
As plainly shown in the cited FIG. 7 of De Ward, the pins 36 are
part of a multi-pin electrical connector 34 (remote from the
camera lens and lens holder) that is used to electrically connect
the circuity of De Ward's camera module to a wire harness of a
vehicle, which does not in any way disclose or suggest the pins
being generally linearly disposed along and protruding from
opposite side regions of the attaching portion of a lens holder
that mates with the circuit element, as recited in claim 6.
App. Br. 30 (emphasis added); see also App. Br 39.
We are not persuaded that the Examiner erred. Consistent with the
Examiner's findings, Fig. 7 of De Ward shows the pins generally linearly
disposed along, and protruding from, opposite side regions of the multi-pin
connector. See Non-final Act. 7 (citing DeWard at Fig. 7). Accordingly,
Appellants have not shown the Examiner erred in rejecting claims 6 and 19
under 35 U.S.C. § 103.
D. Claim 7
Appellants contend the combination of De Ward, Hayashimoto, and
Suda does not teach or suggest "wherein said plurality of pins comprises at
least two pins that are insert molded at said attaching portion of said lens
holder, and wherein respective ends of said at least two pins protrude from
said attaching portion of said lens holder and protrude at least partially into
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said apertures of said circuit element, and wherein said ends of said at least
two pins are soldered at said circuit element to fixedly attach said lens holder
at said circuit element," as recited in claim 7 because:
With respect to the De Ward reference, the Examiner cites to the
pins 36 that protrude from the multi-pin electrical connector 34,
which is clearly remote from the camera lens and lens holder
of De Ward. In stark contrast to the pins that are insert molded at
the attaching portion of the lens holder ( as set forth in claim 7),
the pins 36 of DeWard are clearly formed with the multi-pin
electrical connector 34 that is used to electrically connect the
circuity of DeWard's camera module to a wire harness of a
vehicle, which does not in any way disclose or suggest the pins
at the attaching portion of a lens holder that mates with a circuit
element, as recited in claim 7.
Furthermore, with respect to the Examiner's citation to
Hayashimoto, Appellant submits that the Hayashimoto's pins 26
are soldered to the film connector 60 to receive the voltage for
causing the vibration, not to provide a fixed or located
attachment point, especially at a circuit element. Moreover, the
pins disclosed in Hayashimoto fail to disclose or suggest "ends
of said at least two pins are soldered at said circuit element to
fixedly attach said lens holder at said circuit element," as set
forth in claim 7 [.] Appellant also submits that the Examiner
continues to fail to identify any motivation or suggestion to
modify the teachings of DeWard with Hayashimoto, and even
if such a modification is made, it fails to disclose or suggest the
limitations of claim 7.
App. Br. 31 ( emphasis added); see also Reply Br. 11.
We are not persuaded that the Examiner erred. Consistent with the
Examiner's findings, De Ward discloses pins insert-molded at, partially in,
and through, the multi-pin connector, where the pins extend from the multi-
pin connector and are inserted through a circuit board, and Hayashimoto
discloses pins soldered to a film connector. See Non-final Act. 7-8 (citing
De Ward 6:5-10; Hayashimoto 5: 1-10); see also Ans. 14. Accordingly,
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Appellants have not shown the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103.
E. Claims 8 and 20
Appellants contend the combination of De Ward, Hayashimoto, and
Suda does not teach or suggest "wherein, with said mating surface of said
attaching portion of said lens holder mated with said first surface of said
circuit element, said pins protrude through said circuit element and are
soldered at said second surface of said circuit element," as recited in claim 8
and similarly recited in claim 20 because:
Appellant submits that the Examiner again impermissibly
combines wholly unrelated features of De Ward and
Hayashimoto and ignores the claim limitations. In stark
contrast to the claimed pins that are protrude from the lens
holder through the circuit element, the pins 36 of De Ward are
clearly formed at the multi-pin electrical connector 34 and
extend to electrically connect the circuity of De Ward's camera
module to a wire harness of a vehicle, which does not in any way
disclose or suggest the pins of the lens holder that mate with a
circuit element, as recited in claim 8.
Also, Appellant submits that the Examiner's citation to
Hayashimoto's pins 26 does not identify any disclosure or
suggestion as to soldering at a second surface of the circuit
element, as set forth in claim 8. Further, the soldering of the pins
26 to the film connector 60 in Hayashimoto does not disclose or
suggest providing a fixed or located attachment for a lens
holder at a circuit element. Appellant also submits that the
Examiner ... fails to identify any motivation or suggestion to
modify the teachings of DeWard with Hayashimoto, and even
if such a modification is made, it fails to disclose or suggest the
limitations of claim 8.
App. Br. 32 ( emphasis added); see also App. Br. 40.
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We are not persuaded that the Examiner erred. Consistent with the
Examiner's findings, De Ward discloses pins that extend from the multi-pin
connector and protrude through a circuit board when inserted, and
Hayashimoto discloses pins soldered to a film connector. See Non-final
Act. 8 (citing De Ward 6:5-10; Hayashimoto 5:1-10); see also Ans. 14.
Accordingly, Appellants have not shown the Examiner erred in rejecting
claims 8 and 20 under 35 U.S.C. § 103.
F. Claim 9
Appellants contend the combination of De Ward, Hayashimoto, and
Suda does not teach or suggest "wherein, with said attaching portion
attached at said circuit element, said image sensor array at said first surface
of said circuit element is generally encased by said attaching portion and is
generally optically aligned with said lens," as recited in claim 9 for similar
reasons as to why the aforementioned combination fails to teach or suggest
"wherein, with said pins received at least partially through said apertures of
said circuit element, said pins are soldered at said circuit element so as to
fixedly attach said lens holder at said circuit element," as recited in claim 16.
See App. Br. 34. We are not persuaded of Examiner error for reasons
similar to the reasons previously discussed regarding claim 16. See Non-
final Act. 8; see also Ans. 14. Accordingly, Appellants have not shown the
Examiner erred in rejecting claim 9 under 35 U.S.C. § 103.
G. Claims 14 and 15
Appellants also raise the following argument in contending that the
Examiner erred in rejecting claims 14 and 15 under 3 5 U.S. C. § 1 0 3 :
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Appellant submits that the Examiner is again ignoring the claim
limitations and misapplying the De Ward reference. The
[Examiner] again/ails to cite to any disclosure or suggestion of
an attachment element that has at least one tab that is disposed
through or fixedly attached at the circuit element ( as set forth
in claim 14) [in] either the DeWard or Hayashimoto or Suda
references, and moreover the Examiner / ails to cite to any
disclosure or suggestion of two attachment elements disposed
at opposite regions of said circuit element that are at opposite
sides of the lens holder, as generally set forth in claim 15.
App. Br. 36 (Appellants' emphasis omitted; panel's emphasis added).
We are not persuaded that the Examiner erred. Appellants' argument
amounts to a general allegation that the claims define a patentable invention
without specifically pointing out how the language of the claims patentably
distinguish them from the references. See 37 C.F.R. § 4I.37(c)(l)(vii)
(noting that an argument that merely points out what a claim recites is
unpersuasive); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[T]he Board reasonably interpreted Rule 41.3 7 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). Accordingly, Appellants have not shown the Examiner erred in
rejecting claims 14 and 15 under 35 U.S.C. § 103.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103.
(2) Claims 1-20 are not patentable.
18
Appeal2018-002865
Application 14/258,366
DECISION
We affirm the Examiner's rejection of claims 1-20 as being
unpatentable under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
19