Ex Parte Jackson et al

Board of Patent Appeals and Interferences

Jan 26, 2012

10667522 (B.P.A.I. Jan. 26, 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.
10/667,522 09/23/2003 David A. Jackson 66396-057 2568
7590 01/26/2012
MCDERMOTT, WILL & EMERY
600 13th Street, N.W.
Washington, DC 20005-3096
EXAMINER
JOHNSON, AMY COHEN
ART UNIT PAPER NUMBER
2841
MAIL DATE DELIVERY MODE
01/26/2012 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 DAVID A. JACKSON, ERIC F. BRYAN,
and MICHAEL J. ROBB
____________

Appeal 2009-010695
Application 10/667,522
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10, 12, 13, and 15-31, which are all of the pending
claims. Claims 11 and 14 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (Substitute, filed Aug. 29, 2007), the Answer
(mailed Oct. 4, 2007), and the Reply Brief (filed Dec. 4, 2007) for the
respective details. We have considered in this decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
which Appellants could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to an image-based position
determination system, such as a wheel alignment system, in which at least
one invisible light source is used to shine invisible light onto targets attached
to an object. Upon retro-reflection of the invisible light to an image sensing
device, such as a camera, an image of the targets is formed. A determination
is made of positional parameters, such as wheel alignment parameters, based
on the image of the targets. See generally Spec. ¶¶ [0010-0011].
Representative claim 1 is illustrative of the invention and reads as
follows:
1. A three-dimensional camera based position determination
system, comprising:
an optically scannable target device fixedly attached to a target object;
at least one camera and light subsystem, each subsystem having:
an image sensing device configured to view the optically
scannable target device and to generate image information indicative
of geometric characteristics of the target device; and
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at least one invisible light emitting diode operatively coupled to
a strobe circuit, the at least one diode and circuit being
configured to emit strobed invisible light thereby illuminating the
optically scannable target such that the light is retro-reflected to the
image sensing device and the image sensing device detects and forms
an image of the target; and a data processing device operatively
coupled to the image
sensing device, the data processing device being configured to
determine the orientation of the target object based on the generated
target image.

The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:
Liss US 4,614,866 Sep. 30, 1986
Jackson US 5,724,743 Mar. 10, 1998
Stam US 5,923,027 July 13, 1999
Hendrix US 6,115,927 Sep. 12, 2000

Claims 1, 2, 4-9, 12, 13, 15-18, and 20-28 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Jackson in view of Hendrix.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jackson in view of Hendrix and Stam.
Claims 3, 19, and 29-31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jackson in view of Hendrix and Liss.
1

1
In an amendment filed along with the original Appeal Brief on April 30,
2007, Appellants corrected the dependency of claim 3 to properly depend
from 30. The Examiner indicated that this amendment was entered (Ans. 2).
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ANALYSIS
Claims 1, 2, 4-10, 12, 13, 15-18, and 20-28
Appellants argue, with respect to the obviousness rejection of
representative independent claim 1, that the Examiner has not provided a
proper basis for the proposed combination of Jackson with Hendrix.
2

According to Appellants, the replacement of the scannable targets in Jackson
with the electromagnetic radiation emitters 14 of Hendrix as suggested by
the Examiner would not result in the invention as claimed (App. Br. 7). In
Appellants view, the emitters 14 in Hendrix work as the “targets” which
emit radiation received by viewing camera 16 and, accordingly, the camera
16 does not form a target image based on reflected light from the target.
We do not agree with Appellants. It is apparent from the Examiner’s
stated position that the Examiner is not suggesting the bodily incorporation
of the emitter/camera pair structure of Hendrix into the wheel alignment
structure of Jackson (Ans. 5 and 14). Rather, it is Hendrix’s teaching of
using a light source of invisible light emitting diodes (LEDs) as the radiation
source in Jackson instead of Jackson’s visible LEDs. “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 the references would have
suggested to those of ordinary skill in the art.” See In re Keller, 642 F.2d
413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). We

2
Appellants argue rejected claims 1, 2, 4-10, 12, 13, 15-18, and 20-28
together as a group, making particular reference only to the limitations of
claim 1. See App. Br. 3-7. Accordingly, we select claim 1 as representative.
See 37 C.F.R. § 41.37(c)(1)(vii).
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also agree with the Examiner that Hendrix discloses the functional
equivalence of infrared (invisible) and visible light sources and that one type
of light source can be replaced with the other (col. 5, ll. 5-12).
Further, contrary to Appellants’ contentions, we find that the
Examiner has provided an articulated line of reasoning with a rational
underpinning to support the conclusion of obviousness. We agree with the
Examiner’s determination that an ordinarily skilled artisan would have found
that the use of an invisible light source, as taught by Hendrix, would reduce
the optical clutter resulting from the use of visible light and would have
served as an obvious enhancement to the wheel alignment system of
Jackson. (Ans. 5 and 14). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Although Appellants argue (Reply Br. 2) that it is not clear from the
cited references that invisible light would be usable in the environment of a
wheel alignment shop, this is precisely what is taught in the wheel alignment
system described by Hendrix (col. 5, ll. 5-12).
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
representative independent claim 1, as well as claims 2, 4-10, 12, 13, 15-18,
and 20-28 not separately argued by Appellants, is sustained.

Claims 3, 19, and 29-31
We also sustain the Examiner’s obviousness rejection of dependent
claim 30 and its dependent claims 3, 19, and 31. Although Appellants
nominally indicate in the Appeal Brief that dependent claim 30 is argued
separately, no substantive arguments for the patentability of claim 30 have
been presented (App. Br. 3). Instead, Appellants rely on the arguments
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presented against the rejection of claim 1, which arguments we found
unpersuasive, as discussed supra (App. Br. 8).
We recognize that at page 3 of the Reply Brief, for the first time on
appeal, Appellants have indeed submitted substantive arguments for the
separate patentability of claim 30. These arguments, however, are
considered waived. Appellants have not explained why, nor is it apparent
why, these arguments were necessitated by a new point in the Answer or any
other circumstance constituting “good cause” for its belated presentation.
See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(“informative”
3
) (absent a showing of good cause, the Board is not required
to address argument in Reply Brief that could have been presented in the
principal Brief).

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1-10, 12, 13, and 15-31 for obviousness under
35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1-10, 12, 13, and
15-31 under 35 U.S.C. § 103(a).

3
The “informative” status of this opinion is noted at the following Board
website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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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)(2010).

AFFIRMED

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