Ex Parte Inaba

Patent Trial and Appeal Board

Mar 20, 2018

12965683 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/965,683 12/10/2010
2120 7590 03/20/2018
PAUL A. FATTIBENE
F ATTIBENE & FATTIBENE
2480 POST ROAD
SOUTHPORT, CT 06890
FIRST NAMED INVENTOR
Minoru INABA
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.
H-5125Cl 7292
EXAMINER
TREHAN, AKSHAY
ART UNIT PAPER NUMBER
2663
MAILDATE DELIVERY MODE
03/20/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MINORU INABA
Appeal2017-001880
Application 12/965,683
Technology Center 2600
Before JOSEPH L. DIXON, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-001880
Application 12/965,683
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 10, and 12-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a digital camera. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A digital camera comprising:
a main body;
a lens mount attached to said main body adapted to mount
an interchangeable lens;
an image pickup element located in said main body;
an electronic display displaying a finder image captured
by said image pickup element;
a fixed dustproof plate fastened to an inner side of said lens
mount attached to said main body and located between an outer
side adjacent a location for the interchangeable lens of said lens
mount and said image pickup element providing a sealed
structure, said fixed dustproof plate located substantially closer
to the location for the interchangeable lens than said image
pickup element;
and, there is an uninterrupted space between said fixed
dustproof plate and above a surface of said image pickup element
opposing said fixed dustproof plate, whereby dust is prevented
from entering said main body and prevented from the effect to an
image formed at said image pickup element as any dust is not
imaged on said image pickup element.
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Application 12/965,683
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Takamura et al.
Nehemiah et al.
Kossin
Marcus
us 4,763,145
us 5,956,291
US 6,987 ,527 B2
US 2007/0025711 Al
Yasuo JP 2000-241869
(hereinafter, Olympus)
REJECTIONS
Aug.9, 1988
Sept. 21, 1999
Jan. 17,2006
Feb. 1, 2007
Sept. 8, 2000
The Examiner made the following rejections:
Claims 1 and 12-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over "Olympus" in view of Marcus in view of Kossin in view
of Nehemiah.
Claims 2, 3, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over "Olympus" in view of Marcus in view of Kossin in view
of Nehemiah in view of Takamura.
ANALYSIS
With respect to the rejection of independent claim 1, 12, 13, and 14,
Appellant presents the same general argument to each of the independent
claims. 1 As a result, we select independent claim 1 as the representative
claim for the group and address Appellant's arguments thereto.
1 We note that independent claim 13 does not include the "uninterrupted
space" limitation, and we could select this claim as the representative claim
and dismiss Appellant's arguments as unpersuasive because they are not
commensurate in scope and affirm the rejection. 37 C.F.R. § 41.37(c)(l)(iv).
See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments
fail from the outset because ... they are not based on limitations appearing
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Appeal2017-001880
Application 12/965,683
Appeal Brief
With respect to representative independent claim 1, Appellant argues
that the Examiner did not give a reasonable interpretation of the amended
claim limitation "uninterrupted space." (App. Br. 17-18). Appellant further
contends that the "[ c ]laims are not to be read in a vacuum, and limitations
therein are to be interpreted in light of the specification and giving them
their broadest reasonable interpretation." (App. Br. 18).
Appellant further contends "[ t ]he ordinary and customary meaning of
a claim term is a meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention." (Id.) Appellant
relies upon a dictionary definition from the Third College Edition of the
Webster's New World Dictionary of American English. 2
Appellant further contends that the prior art was being developed in a
direction contrary to the claimed invention. (App. Br. 20-21 ). Appellant
further contends:
[ t ]here is no conception or realization in the references cited by
the Examiner or reasoned rationale presented that teaches or
suggest the placement of a fixed dust proof plate substantially
closer to the location of the interchangeable lens than an image
pickup element or image sensor as recited in claims 1, 12, 13,
and 14.
(App. Br. 21 ). We disagree with Appellant, and we agree with the
Examiner's finding. We find that Olympus teaches and suggests the
dustproof plate 17 closer to the location of the interchangeable lens 20 than
to the image sensor 14. As a result, Appellant's general argument does not
in the claims."). For completeness, we address independent claim 1 as the
representative claim.
2 We find a 1993 copyright date for this edition from an Internet search.
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Appeal2017-001880
Application 12/965,683
show error in the Examiner's factual findings or conclusion of obviousness
of representative independent claim 1.
Appellant contends that the claimed invention yields more than
predictable results. (App. Br. 21-23). Appellant contends that
The inventor has discovered that in a digital camera by
positioning a dust proof plate away from the image pickup
element or image sensor and placing it substantially closer to a
location of an interchangeable lens, surprisingly substantial
improvements are achieved in the image quality formed at the
image pickup element or image sensor. This is something that
would not have been initially predictable.
(App. Br. 22). Appellant further contends "in the present invention the
particles of dust are prevented from accumulating adjacent the image pickup
element or image sensor resulting in substantially less blocking of light rays
resulting in substantially improved image quality." (App. Br. 22). We find
that the Olympus reference discloses "a problem that fault arose in image
data with the garbage which garbage adhered to the optical system or the
image sensor, and adhered to it at the time of exchange of a lens" (Olympus
i-f 4) and "there is in providing the electronic camera apparatus which inhibits
that garbage adheres to an image sensor or an optical system, and inhibits
deterioration of the image quality of the image photoed" (Olympus i-f 5). As
a result, Appellant's argument does not show error in the findings or
conclusion of obviousness.
Appellants finally include a section entitled "inventor's additional
opinion of patentability" (App. Br. 23-29; see also Reply Br. 4--9).
Appellant argues various alternatives in the design of the Olympus camera
with a focal plane shutter and concludes that "i[ t] should be clear that dust
will occurred if a focal plane shutter is used." (App. Br. 27). Appellant
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Appeal2017-001880
Application 12/965,683
further contends that "it is impossible to seal up a camera using a quick
return mirror inside the case" and "[ d]ust will still be a problem
compromising image quality." (App. Br. 27). While Appellant provides an
analysis of the inner working of a camera structure, Appellants do not
identify any claim language which is not taught or fairly suggested in the
structure of the "digital camera" recited in representative independent claim
1. Appellant further identifies individual differences between each of the
prior art references applied and contends that it is "impossible" to seal, see
the image, combine the references, and to exchange the lenses. (App. Br.
27, 28, 34). Again, Appellant's arguments address individual differences in
each of the prior art references and generally opines to the disclosed
invention without identifying specific claim limitations which are not
thought or suggested by the combination of the prior art relied upon by the
Examiner and the grounds of the rejection. As a result, Appellant's
arguments do not show error in the Examiner's factual findings or
conclusion of obviousness.
Reply Brief
In the Reply Brief, Appellant again contends that the Examiner has
taken an unreasonable interpretation of the claimed "uninterrupted space."
(Reply Br. 2-3). The Examiner has relied upon the Olympus reference
"During an image capture the mirror 13 lifts up" (Final Act. 7) to meet
the claim limitation. We agree with the Examiner, and we additionally find
that the Examiner relied upon the Marcus reference to teach and suggest the
use of an LCD viewfinder. (Final Act. 8; Ans. 2-3). With the combination
of well-known prior art teachings, the mirror and prism of the Olympus
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Application 12/965,683
reference would be eliminated to further in meet the "uninterrupted space"
claim limitation. (Ans. 2-3).
Appellant provides a general argument that the "Examiner has not
established a reasoned rational for the combination of Olympus and
Marcus," and Appellant further opines that the Examiner could have found a
"better reference," and the "Examiner also erred in not giving any weight to
the direction of development in the prior art and the imaging problems
associated with dust particles in prior art cameras." (Reply Br. 3--4).
The Supreme Court has provided clear guidance that "when a patent
'simply arranges old elements with each performing the same function it had
been known to perform' and yields no more than one would expect from
such an arrangement, the combination is obvious." KSR Int 'l v. Teleflex
Inc., 550 U.S. 398, 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
( 197 6) ). "Common sense teaches ... that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle." KSR, 550 U.S. at 420. Moreover, "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, 550 U.S. at 418.
This reasoning is applicable here. Thus, on this record, we are not
persuaded of error regarding the Examiner's proffered reason for combining
the cited references. Nor has Appellant provided objective evidence of
secondary considerations which our reviewing court guides "operates as a
beneficial check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese
and Powder Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013).
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Application 12/965,683
Appellant additionally includes a section entitled "inventor's additional
reply to the Examiner's Answer." (Reply Br. 4-9). This section provides a
general attorney/inventor arguments of individual differences in each of the
prior art references without consideration of the express claim limitations.
Moreover, attorney arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. In re Geisler, 116 F .3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984). "Argument in the brief does not take the place of evidence in the
record." In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326
F.2d 769, 773 (CCPA 1964)). As a result, Appellants' arguments do not show
error in the Examiner's factual findings or conclusion of obviousness of
representative independent claim 1 and independent claims 12, 13, and 14 and
dependent claims 2, 3, and 10 not separately argued.
CONCLUSION
The Examiner did not err in rejecting claims 1-3, 10, and 12-14 based
upon obviousness under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we sustain the Examiner's obviousness
rejection of claims 1-3, 10, and 12-14 under 35 U.S.C. § 103(a).
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
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