Ex Parte Haas et al

Board of Patent Appeals and Interferences

Jul 30, 2012

11139353 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM ROBERT HAAS, KIRK STEVEN TECU,
and LOUIS R. TURF III
____________

Appeal 2010-004260
Application 11/139,353
Technology Center 2600
____________

Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004260
Application 11/139,353

STATEMENT OF THE CASE
Claims 1-20 and 22-55 are pending in this application. (See App. Br.
2). Appellants canceled claim 21 and the Examiner allowed claims 20, 22-
37, and 43-55. (Id.) Appellants appeal under 35 U.S.C. § 134(a) from the
rejection of claims 1-19 and 38-42. (Id.) We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
  Appellants’ disclosed invention relates to methods and systems
relating to an imaging device that includes a calibration system to determine
whether an opaque object is disposed within a visible area defined by the
scan window. (Spec. ¶¶ [0001], [0011], [0012]).
Exemplary independent claim 1 is illustrative and is reproduced
below:
1. An imaging system, comprising:
a calibration system adapted to perform a calibration scan
of a charged luminescent calibration strip disposed relative to a
scan window of an automatic document feeder, the calibration
system including a light source for charging the charged
luminescent calibration strip and then turning off the light
source during capturing of image information by an optical
head, the calibration system adapted to determine whether an
opaque object is disposed within a visible area defined by the
scan window from the calibration scan based only on the image
information captured when the light source is turned off.

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Prior Art Relied Upon and Rejections on Appeal
The Examiner relies on the following prior art in rejecting the claims:
Gusmano US 5,204,761 Apr. 20, 1993
Cheung US 2002/0171819 A1 Nov. 21, 2002
Maciey US 6,552,829 B1 Apr. 22, 2003
Nobel US 6,618,173 B1 Sep. 9, 2003
Spears US 2004/0207886 A1 Oct. 21, 2004
Schremp US 2006/0063274 A1 Mar. 23, 2006

1. Claims 1, 4, 6-8, 11-12, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Nobel in view of Schremp and Gusmano.
(Ans. 3-6).
2. Claims 2, 5, 9, and 13 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Nobel, Schremp, and Gusmano in view of Spears.
(Ans. 6-7).
3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Nobel, Schremp, and Gusmano in view of Maciey. (Ans. 7-8).
4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Nobel, Schremp, and Gusmano in view of Cheung. (Ans. 8-9).
5. Claims 15 and 17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Nobel in view of Schremp. (Ans. 9-10).
6. Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Nobel and Schremp in view of Spears. (Ans. 10).
7. Claims 18 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Nobel and Schremp in view of Gusmano. (Id.).
8. Claims 38-42 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Nobel in view of Schremp and Maciey. (Ans. 11-12).
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ISSUES
Did the Examiner err in finding that:
1. (a) the combination of Nobel, Schremp, and Gusmano
teaches or suggests the claim element “whether an opaque object is
disposed within a visible area defined by the scan window from the
calibration scan based only on the image information captured when
the light source is turned off,” as recited in claim 1, because applying
the teaching of turning the light source off to Nobel would render
Nobel inoperable (App. Br. 10-11), and (b) someone having ordinary
skill in the art would combine these references to determine whether
an opaque object is disposed within a visible area defined by the scan
window, as recited in claim 1 (App. Br. 12);
2. the combination of Nobel and Spears teaches or suggests the
claim limitation “the calibration system is adapted to determine a particular
location for an optical head relative to the scan window for performing a
scan of a media object using the calibration scan,” as recited in claim 2
(App. Br. 12-14);
3. the combination of Nobel and Maciey teaches or suggest the
claim limitation “wherein the calibration system is adapted to notify a user if
an opaque object is determined to be within the visible area defined by the
scan window,” as recited in claim 3 (App. Br. 14-15);
4. the combination of Nobel and Schremp teaches or suggests the
claim limitations “means for evaluating information from the calibration
scan on a scan line-by-scan line basis for determining a level of obstruction
from the opaque object” and “means for determining whether a particular
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scan line produces a desired level of quality for scanning media objects
despite obstruction from the opaque object,” as recited in claim 15 (App. Br.
16-17); and
5. the combination of Nobel, Schremp, and Maciey teaches or
suggests the claim limitation “a calibration system configured to notify a
user that a predetermined threshold of opaque objects in the scan window
has increased such that the scan window needs cleaning,” as recited in claim
38 (App. Br. 23)?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and Appellants’ arguments in the Reply Brief presented in response
to the Answer. We do not find Appellants’ arguments persuasive and agree
with the Examiner. We highlight and address specific arguments for
emphasis as follows.

35 U.S.C. §103 Rejection of claim 1
The Examiner interprets claim 1 as defining two different processes:
(1) a process defining what a calibration scan entails, which is to determine
whether an opaque object is disposed within a visible area defined by the
scan window, and (2) a process defining which light source a calibration
scan relies on to capture an image. (Ans. 13). The Examiner further
explains that the claimed scanning process uses light emitted from a
luminescent calibration strip which has been pre-charged/excited by an
external light source. (Id.). Thus, once the calibration strip is
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charged/excited by a light source, the light source is no longer needed and
can be turned off to allow the charged calibration strip to emit light for
capturing an image and the process of detecting an opaque object disposed
on a scan window can be performed regardless of whether the scanning light
source is a stayed-on lamp or a pre-charged luminescent strip. (Id. at 13-14).
Appellants argue that the Examiner relies on Gusmano for turning off
the light source, but that Gusmano does not determine whether an opaque
object is disposed within a visible area defined by the scan window from the
calibration scan based only on the image information captured when the
light source is turned off. (App. Br. 10). Appellants cannot show
nonobviousness, however, by attacking references individually where the
rejections are based on a combination of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
The Examiner relies on Nobel to teach detecting an opaque object (the first
process) and Gusmano and Schremp to disclose a charged luminescent
calibration strip as the scanning light source (the second process). (Ans. 13-
14).
In particular, the Examiner relies on Schremp for teaching
illuminating a calibration surface to charge/excite fluorescent agents and
detecting light emitted from the fluorescent agents. (Id. at 14 (citing
Schremp ¶¶ [0123], [0127])). While Schremp does not expressly teach
turning off the original light source, the Examiner reasons that because the
light detected is emitted from charged fluorescent/luminescent agents, the
original light source used to charge the luminescent agents is no longer
needed and keeping it on could hamper data collection on light emitted from
the luminescent calibration surface. (Ans. 14-15). As the Examiner
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explains, the possibility of turning off a light source is common sense. (Id.
at 15). Moreover, Gusmano teaches that having a light source in the “off”
position during a calibration is not uncommon. (Id. (citing Gusmano 2:37-
41; 5:40-46 (teaching that during the calibration procedure, illuminator 32 is
in “OFF” condition for a convenient period corresponding to a number of
scan lines of pixels))).
Appellants argue that turning off the light in Nobel, as suggested by
Gusmano, would render Nobel inoperable because the Nobel system would
not be able to receive output signals from the optical sensor elements. (App.
Br. 11; Reply Br. 5). We observe that the Examiner is not applying
Gusmano’s teaching of the light source being turned “off” to the light source
in Nobel, but rather to the light source in Schremp. The Examiner
substitutes Schremp’s calibration surface that emits light from illuminating
material that has been excited with a light source, which can then be turned
“off” as taught by Gusmano, for Noble’s calibration surface that has to be
illuminated by a constant light source. (Ans. 15-16).
Appellants also argue that a person of ordinary skill would not
combine these references. (App. Br. 10). As the Examiner explains,
however, the substitution of Schremp’s calibration surface for Nobel’s
calibration surface allows one of ordinary skill in the art to perform a
calibration scan on an image using the light emitted from the pre-charged
illuminating calibration strip with the original light source turned “off”
instead of using a constant light source for the purpose of power reservation
and extension of the usage lift of a light source. (Ans. 15-16). Therefore,
Appellants’ contention that this reason is “insufficient” is conclusory. (App.
Br. 12).
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Therefore, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over Nobel, Schremp, and
Gusmano.
35 U.S.C. §103 Rejection of claim 2
Appellants argue that claim 2 is allowable for the same reasons as
claim 1 and also because the combination of Nobel and Spears does not
teach the claim limitation “the calibration system is adapted to determine a
particular location for an optical head relative to the scan window for
performing a scan of a media object using the calibration scan.” (App. Br.
12-13). For this limitation, the Examiner relies on both the Nobel and
Spears references to teach determination of an optical head location for a
calibration scan. (Ans. 16). The Examiner explains that Spears teaches that
the direction of motion of the optical head may be used to control the
position of the calibration target relative to the scanline. (Id. (citing Spears
¶ [0056]); see also ¶ [0037] (teaching that before scanning, the calibration
target is positioned for calibration)). The Examiner explains how the cited
portions of Spears determine a direction of motion of an optical head
without knowing its initial position or show a system can instruct an optical
head to move to the next location following a new direction without
knowing its current location. (Ans. 16).
Appellants respond that the direction of motion may be determined by
relative positions or that an optical head may begin moving and then be
stopped when it reaches a next location without knowing the particular
location of the optical head in either instance. (Reply Br. 6). We do not find
Appellants’ argument persuasive. The Examiner’s interpretation of Spears
is reasonable and a person of ordinary skill in the art would understand
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Spears as teaching that the particular location of an optical head relative to
the scan window can be determined. As the Examiner explains, if the
location of a moving optical head was not determined, the corresponding
controller would not be able to determine if the optical head has moved
beyond the boundary of its moving limit. (Ans. 16). While Appellants
argue that the optical head can simply be stopped when it reaches a
boundary without any knowledge of its current position, they do not explain
how this is possible or what is meant by “current position.” (Reply Br. 6).
Claim 2 does not require that the system determine the “current location” of
the optical head, but rather that it determine the “particular location for an
optical head relative to the scan window.” (emphasis added).
Appellants further argue that Spears determines the direction of
motion of the optical head in order to control the position of the calibration
target, not “for performing a scan of a media object” as recited in claim 2.
(App. Br. 13; Reply Br. 6). However, the Examiner is relying on the
combination of Nobel and Spears for determining an optical head location
for a calibration scan. (Ans. 16). The location determination is useful for
performing a scan of a media object as recited in claim 2.
Lastly, Appellants argue that Spears teaches away from Nobel
because Nobel states that a disadvantage of moving either the optical sensor
device or the calibration strip relative to the other during the calibration
process is added complexity of the scanner and more expense. (App. Br. 13-
14; Reply Br. 7 (citing Nobel, col. 2, ll. 60-67)). A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention from amongst options available to the ordinarily skilled artisan
and the reference does not discredit or discourage investigation into the
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invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As
the Examiner correctly finds, Nobel offers this as “one possible approach”
and does not imply that “moving the optical head sensor would compromise
the result of a calibration process although it may be expensive due to its
manufacturing complexity.” (Ans. 17).
Therefore, we sustain the Examiner’s rejection of claim 2 under 35
U.S.C. § 103(a) as being obvious over Nobel, Schremp, Gusmano, and
Spears.
35 U.S.C. §103 Rejection of claim 3
Appellants argue that claim 3 is allowable for the same reasons
as claim 1 and also because Maciey does not teach the claim
limitation “wherein the calibration system is adapted to notify a user if
an opaque object is determined to be within the visible area defined by
the scan window.” (App. Br. 14). In particular, Appellants contend
that while Maciey discloses notifying an operator of an error
condition, there is no disclosure of notifying the user “if an opaque
object is determined to be within the visible area defined by the scan
window” which is not necessarily an error condition. (Id. at 15).
We do not find Appellants’ arguments persuasive. As the Examiner
explains, Maciey teaches that during a normal scanning operation, if the
current image is not within a preselected range of the control image the
system has detected an unacceptable error state and acts accordingly, within
system design parameters, which could be notifying an operator or initiating
a calibration process. (Ans. 17-18 (citing Maciey, col. 24, ll. 1-8)). Thus,
Maciey teaches the function of notifying a user of any information desired
by a user, which content we agree can include the existence of an opaque
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object within the visible area defined by the scan window when combined
with the teachings of Nobel. (See Ans. 18).
Therefore, we sustain the Examiner’s rejection of claim 3 under 35
U.S.C. § 103(a) as being obvious over Nobel, Schremp, Gusmano, and
Maciey.
35 U.S.C. §103 Rejection of claim 15
Appellants contend that the combination of Nobel and Schremp does
not teach or suggest the limitations “means for evaluating information from
the calibration scan on a scan line-by-scan line basis for determining a level
of obstruction from the opaque object” and “means for determining whether
a particular scan produces a desired level of quality for scanning media
objects despite obstruction from the opaque object,” as recited in claim 15.
(App. Br. 16). For these limitations, the Examiner relies on Nobel’s Figure
7 as illustrating a level of obstruction and Figure 8 as illustration the various
gains applied to correct distortions caused by obstruction in signal level.
(Ans. 18). Specifically, the Examiner finds Figure 7 depicts a graph of a
photosite output signal levels when the optical sensor is imaging an object of
uniform color, such as a white calibration strip, through an optical path
which includes obstructions. (Ans. 18). Similarly, the Examiner finds
Figure 8 is a graph of the calculated and applied proportionate gain signal
values for the photosite output signal levels of Figure 7. (Id.). Appellants
argue that these figures do not teach determining a level of obstruction from
the opaque object. (Reply Br. 9). According to Appellants, the existence of
an obstruction compared to no obstruction cannot be considered a different
level of obstruction. (Id.). We disagree. The existence of an obstruction as
compared to no obstruction constitutes a different level of obstruction under
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the broadest reasonable interpretation of the claim language “level of
obstruction.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984))). Furthermore, the claim language does
not preclude considering detection of an obstruction as compared to an
absence of an obstruction as different levels of obstruction.
Appellants lastly argue that Nobel does not disclose whether a
particular scan line produces a desired level of quality for scanning media
objects from the opaque object. (App. Br. 16; Reply Br. 9-10). As the
Examiner correctly explains, however, the Nobel system has to evaluate the
level of quality in each scan line, as compared to the desired level, to
determine the level of amplification that must be applied to scan data to
compensate for the obstruction level. (Ans. 18 (citing Nobel, col. 3, ll. 1-9;
Figs. 7, 8)). Specifically, Nobel teaches a method for eliminating vertical
streaks in scan data caused by optical obstructions in the scanner’s optical
path by determining when the signal from a photosite is truly low and needs
to be compensated for (i.e., not desired level of quality) with a large
amplification and when a photosite is low to dust which is likely to be
dislodged (i.e., desired level of quality despite obstruction from the opaque
object) and needs to an “ordinary” amplification. (See Nobel, col. 3, ll. 1-9).
Therefore, we sustain the Examiner’s rejection of claim 15 under 35
U.S.C. § 103(a) as being obvious over Nobel and Schremp.
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35 U.S.C. §103 Rejection of claim 38
Appellants contend that the combination of Nobel, Schremp, and
Maciey does not teach or suggest the claim limitation “a calibration system
configured to notify a user that a predetermined threshold of opaque objects
in the scan window has increased such that the scan window needs
cleaning,” as recited in claim 38. (App. Br. 23). For this limitation the
Examiner relies on Maciey’s teaching user notification during a scanning
process for initiating a calibration. (Ans. 19 (citing Maciey, col. 24, ll. 1-8)).
The Examiner reasons that although Maciey does not teach notification of
the exact message as claimed, Maciey discloses the structure and capability
of notifying a user of any information desired. (Ans. 19). In addition, the
Examiner states, if a “predetermined threshold” of opaque objects in the
scan window is determined to be greater than zero, one of ordinary skill in
the art can send a notification signal as long as the clarity of the scanning
window deviates from the previous calibration. (Id.) The Examiner
concludes that the combination of Nobel’s prescription of using a
predetermined threshold to evaluate the degree of opaque objects and
Maciey’s prescription on both user notification and calibration initiation
makes it obvious to one of ordinary skill to notify a user of any error
detection or calibration related message (including cleaning) during the
scanning process. (Id.)
Appellants argue that the disclosure of simply notifying a user of an
error is insufficient to reject all the claim recitations of notifying a user of
the specific message that “a predetermined threshold of opaque objects in
the scan window has increased such that the scan window needs cleaning.”
(Reply Br. 10). We do not find the Appellants’ argument persuasive. As
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stated above, Maciey teaches the function of notifying a user of any desired
situation. Furthermore, as the Examiner correctly finds, Nobel teaches using
a predetermined threshold to evaluate the degree of opaque objects in the
visible area of a scan window and Maciey teaches notification if the clarity
of the scanning window deviates from the previous calibration. Thus, we
agree that it would have been obvious to a person of ordinary skill to send a
notification that the scan window needs cleaning because a predetermined
threshold of opaque objects in the scan window has increased.
Therefore, we sustain the Examiner’s rejection of claim 38 under 35
U.S.C. § 103(a) as being obvious over Nobel, Schremp, and Maciey.
CONCLUSIONS
Appellants do not make separate arguments for dependent claims 4, 6-
8, 11-12, and 14 (App. Br. 12), claims 5, 9, and 13 (App. Br. 12), claim 10
(App. Br. 15), claim 17 (App. Br. 17), claims 16 and 19 (App. Br. 19), claim
18 (App. Br. 20), and claims 39-42 (App. Br. 24). Thus, we likewise sustain
the rejections of these claims for the same reasons as discussed above.
On the record before us, we conclude that, because the combinations
of the applied references teaches or suggests the disputed claim limitations,
the Examiner has not erred in rejecting claims 1, 2, 3, 15, and 38. Therefore,
we sustain the rejections of claims 1, 2, 3, 15, and 38, and claims 4-14, 16-
19, and 39-42, which are not separately argued with sufficient particularity.

DECISION
The Examiner’s decision rejecting claims 1-19 and 38-42 under 35
U.S.C. § 103(a) is affirmed.
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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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