Ex Parte Kauhanen

Board of Patent Appeals and Interferences

Jun 17, 2009

11023233 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte PETTERI KAUHANEN
______________

Appeal 2009-002392
Application 11/023,233
Technology Center 2800
_______________

Decided: 1 June 17, 2009
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 20 in the Office Action mailed

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002392
Application 11/023,233
August 25, 2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2007).
We affirm-in-part the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a method for determining
the position of a lens system, and is representative of the claims on appeal:
1. A method for determining the position of a lens system,
comprising the steps of:
providing a lens system including at least one lens and a light
reflecting surface, the light reflecting surface being a single, titled surface
and including a nonuniform height;
providing a position sensor including at least one light source and a
light detector;
sending an initial signal from the light source to the light reflecting
surface, the light reflecting surface reflecting the initial signal to the light
detector at a reflection region; and
generating an electrical output signal based upon the reflected signal
from the light source, the electrical output signal providing positioning
information for the lens system,
wherein, as the lens moves relative the position sensor, the electrical
output signal is altered based upon the position of the reflection region as the
reflection region moves relative the position sensor.
The Examiner relies upon the evidence in these references (Ans. 3): 2
Igaki US 2003/0218125 A1 Nov. 27, 2003
Ohta US 6,822,688 B2 Nov. 23, 2004
Jeffers US 2005/0231736 A1 Oct. 20, 2005
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1 through 13,

2 We consider these documents: Appeal Brief filed March 17, 2008;
Examiner’s Answer mailed June 25, 2008; and Reply Brief filed August 28,
2008.
2
Appeal 2009-002392
Application 11/023,233
7 through 11, 13, 14, and 17 through 20 over Igaki in view of Jeffers; and
claims 4 and 16 over Igaki in view of Jeffers as applied to claims 1 and 9,
further in view of Ohta. App. Br. 12; Reply Br. 2-3; Ans. 3 and 8.
The Examiner has withdrawn the grounds of rejection under 35 U.S.C.
§ 103(a) of claims 5, 6, and 15 over Igaki in view of Jeffers, further in view
of Hare, and of claim 12 over Igaki in view of Jeffers, further in view of
Brickey. Ans. 2-3; see App. Br. 12. Accordingly, claims 5, 6, 12, and 15
are not before us.
Appellant argues the first ground of rejection based on independent
claims 1, 9, 17, 19, and 20, and dependent claim 2. App. Br., e.g., 13, 17-18,
and 20. Appellant argues the claims in the second ground of rejection as a
group. Thus, we decide this appeal based on claims 1, 2, 4, 9, 17, 19, and
20. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issues
The issues in this appeal are whether Appellant has shown that the
evidence in the combined teachings of Igaki and Jeffers does not support the
Examiner’s conclusion of prima facie obviousness of a claimed method for
determining the position of a lens system encompassed by claims 1, 2, 9, 17,
19, and 20, and whether Appellant has shown that the evidence in the
combined teachings of Igaki, Jeffers and Ohta does not support the
Examiner’s conclusion of prima facie obviousness of a claimed method for
determining the position of a lens system encompassed by claim 4.
Claim Interpretation
In order to consider the issues raised in this appeal, we first interpret
independent claims 1, 2, 4, 9, 17, 19, and 20 by giving the terms thereof the
3
Appeal 2009-002392
Application 11/023,233
broadest reasonable interpretation in their ordinary usage in context as they
would be understood by one of ordinary skill in the art in light of the written
description in the Specification unless another meaning is intended by
Appellants as established therein, and without reading into the claim any
disclosed limitation or particular embodiment. See, e.g., In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited
therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We determine representative independent claim 1 specifies, in
pertinent part, a method comprising at least the steps of providing any
apparatus which includes any manner of lens system that includes at least
one lens and any manner of a single tilted, light reflecting surface of
nonuniform height; and any manner of position sensor that includes any
manner of light source and any manner of light detector. The method further
includes the steps of communicating in any manner any initial light signal
from the light source to the light reflecting surface, wherein the initial light
signal reflects off of any reflection region of the reflecting surface, and the
light signal as reflected off the reflection region is communicated in any
manner by the light sensor; and, upon receipt of the reflected light signal,
any electrical output signal is generated in any manner, providing
positioning information for the lens system. We similarly interpret
independent claims 9, 17, 19, and 20.
With respect to claim 1, we give the phrase “as the lens moves relative
the position sensor, the electrical output signal is altered based upon the
position of the reflection region as the reflection region moves relative the
4
Appeal 2009-002392
Application 11/023,233
position sensor” its broadest reasonable interpretation of requiring the
electrical output signal to be based on the location of the reflection region of
the reflecting surface that reflects the signal light to the light detector. In
similar manner, we interpreted the plain language of the phrase “the
generated signal is dependent upon the location of the reflected region” in
claim 20 to be based on the location of the reflection region.
However, we interpret the phrase “information gathered by the
position sensor based upon the reflected signal is dependent upon the
distance between the reflection region and the position sensor” in claim 9 to
require the distance between the reflection region and the position affects the
reflected light signal and thus the “information” conveyed by the signal. We
interpret the similar language of claim 17 in the same manner. This concept
is stated in claim 19, as “the height of the reflection region relative to the
position sensor,” and in claim 2, dependent on claim 1, as “the intensity of
the reflected signal is weakened as the reflection region moves further from
the position sensor.” See Spec. 10, ¶¶ 0036-37, and Figs. 9 and 10.
In these respects, we find no basis in the language of the claims or in
the disclosure in the Specification on which to read the embodiment
illustrated in Specification Figures 9 and 10 into the claims as a limitation. .
See, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The plain language of claim 4 modifies the method of claim 1 by
specifying measuring the ambient temperature in the vicinity of the position
sensor and using the information “to aid in the determination of the position
of the lens system.”
Findings of Fact
5
Appeal 2009-002392
Application 11/023,233
We notice that market pressures and design objectives in lens systems
such as video lens systems, including position determination systems for
such systems, include, among other things, miniaturization, compaction, and
lower power consumption. See, e.g., Igaki, e.g., ¶¶0040, 0042, and 0251-
0253; Ohta, e.g., col. 1, ll. 56-63; see also Spec., e.g., ¶¶ 0003-0006.
We find Igaki would have disclosed to one of ordinary skill in this art
a displacement measuring apparatus, such as a linear decoder, that detects,
among other things, the position of a moving body, which contains
reflection-type optical components including an optical-reflection-type
linear scale termed a micro roof mirror array scale (MRA). Igaki, e.g.,
¶¶ 0002 and 0042-0059. In the first illustrative embodiment depicted in
Figure 1A, LED light sources 1a, 1b send light signals to MRA scale 3 from
which it is reflected to photodiode array light detector 2, generating an
electrical output signal that provides position information, wherein the light
sources and the light detector can be mounted on the same substrate. Igaki,
e.g., ¶¶ 0099-0204, and Figs. 1B-10C and 19A-25C.
Igaki discloses an illustrative embodiment in which the displacement
measuring apparatus is used with a video lens system, wherein lens groups
801b, 801d include linear encoder scales 816a, 816b and detection units 820,
821, the latter sending output to reading circuits and a CPU. Igaki
¶¶ 0247-0250 and Fig. 35. With certain video lens systems, it can be
“necessary to use an ultra-small and high accuracy encoder for performing
position detection” as “[t]he sensitivity of the optical system to positioning
tends to be increased in accordance with a reduction in size, so that a high-
6
Appeal 2009-002392
Application 11/023,233
resolution and high-accuracy encoder becomes necessary” and “power
consumption should be reduced.” Igaki ¶¶ 0251-0253.
We find Jeffers would have disclosed to one of ordinary skill in this
art linear displacement reflector sensors which can be “very small” and use a
linear variable reflector sensor to measure the displacement of an object.
Jeffers, abstract and ¶ 0002. Jeffers illustrates a linear variable reflector
system in Figure 3 along with a method of measuring displacement
therewith. The linear variable reflector system 10 includes, among other
things, LED light sources 14, 18 in optical communication via optical fiber
22 with sensor 50. Sensor 50 contains moveable linear variable reflector
(LVR) 54 and an “optical fiber that does not move” relative to LVR 54.
Sensor 50 is in optical communication with photodiode detector 38 via
optical fiber 22. Sensor 38 provides output to signal processor 46. Jeffers,
e.g., ¶¶ 0018-0020 and 0027; see also, e.g., abstract and ¶¶ 0004. In
operation, sensor 50 receives a light signal from light sources 14,
18 through optical fiber 22. In sensor 50, the light signal is reflected by
LVR 54 and is received by photodiode detector 38 via optical fiber 22. The
reflected light signal is processed by detector 38 resulting in information that
is processed by signal processor 46. Jeffers, e.g., ¶¶ 0019-0020; see also,
e.g., abstract and ¶ 0004.
Jeffers discloses that in forming LVR 54, reflective material 74, which
can be gold, is deposited in a non-uniform manner on moveable, transparent
plate 70 “so that the reflectance changes approximately linearly from one
end of the plate 70 to the other.” Jeffers ¶ 0027 and Figs. 1 and 1a.
“[R]eflective material 74 is of variable thickness across the transparent body
7
Appeal 2009-002392
Application 11/023,233
70, including where the thickness of such is different at every point across
the transparent body, where the reflective material 74 goes from its thinnest
at one end of the transparent body 70 to it’s thickest at an opposite end, like
a wedge.” Jeffers ¶ 0027 and Fig. 1a. Jeffers discloses “reflective material
74 is over-coated with a dielectric stack of a plurality of thin films 78 that
reflect light over the visible and near infrared portions of the spectrum.”
Jeffers ¶ 0027. In this respect, LED light sources 14, 18 emit light at 940 nm
and 640 nm, respectively, and alternate in operation. Jeffers ¶¶ 0019, 0021,
and 0028-0031.
Jeffers discloses “[t]he pertinent information to the present invention
is the change in reflectance with gold thickness at the two LED wavelengths
640 nm and 940 nm.” Jeffers ¶ 0031. “Shown in FIG. 8 are reflectance
values for different gold thicknesses with the thickness of the . . . dielectric
layers . . . held constant.” Jeffers ¶ 0033. “Since the gold layer was
deposited with thickness increasing from one end of the substrate to the
other, each LVR position has associated with it a unique gold thickness.”
Jeffers ¶ 0033.
Jeffers further discloses temperature sensor 67 monitors “the
temperature of the signal processor components” and based thereon, “signal
processor 46 can provide corrections for sensitivity changes” in, among
other things, detector 38, and correct for wavelength shits in LED light
sources 14, 18. Jeffers ¶ 0026 and Figs. 3 and 4.
We find Ohta would have disclosed to one of ordinary skill in this art,
as illustrated in Figure 1, optical system 1 with a moveable lens drive system
8, 9 and control device 7 for actuating the lens drive mechanism to correct
8
Appeal 2009-002392
Application 11/023,233
the focus based on detection of, among other things, a temperature change
by temperature detection device 12, which can be a thermistor. Ohta, e.g.,
abstract and col. 2, l. 64 to col. 4, l. 46.
Discussion
We considered the totality of the record in light of Appellants’
arguments with respect to claims 1, 3, 4, and 7 and the grounds of rejection
advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“‘On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is
submitted by the applicant in response, patentability is determined on the
totality of the record, by a preponderance of evidence with due consideration
to persuasiveness of argument.”) (citing, inter alia, Spada, 911 F.2d at 707
n.3).
As an initial matter, we note that Appellant admits Jeffers’ “LVR 54
comprises a wedge-shaped reflective surface,” which structure satisfies the
“single, titled surface . . . [of] nonuniform height” and “single, wedge-
shaped, mono-color light reflective surface” limitations of claims 1 and 17
and similarly claimed in claims 9, 19, and 20. See above pp. 7-8. We
disagree with Appellant’s line of arguments based on the contention that
Jeffers’ sensor 50 is a not a position sensor as claimed “because the sensor
acts as a reflector.” App. Br. 16-17. As the Examiner points out,
photodiode detector 38 is part of Jeffers’ position sensor that detects the
9
Appeal 2009-002392
Application 11/023,233
light signal reflected from LVR 54 in sensor 50. Ans. 13; see also above pp.
7-8. Thus, Appellant has not established that the combination of Igaki and
Jeffers results in an incompatible structure that results in an inoperative
system. App. Br. 16-17.
We further cannot agree with Appellant’s position that Igaki teaches
away from the combination of Igaki and Jeffers on the basis that Igaki’s
complex displacement measuring apparatus or linear decoder does not
determine position. App. Br. 18-19. Indeed, Igaki discloses the linear
decoder thereof can determine position. See above p. 6.
We cannot subscribe to Appellant’s position that one of ordinary skill
in this art would not have combined Igaki and Jeffers because the structures
of Igaki’s linear decoder and of Jeffers’ linear variable reflector system are
incompatible. App. Br. 16-17. We determine one of ordinary skill in this art
would have recognized that Jeffers’ linear variable reflector system is
smaller and less complex than Igaki’s linear decoder, which attributes are
commensurate with the design and marketing features of miniaturization,
compaction, and lower power consumption in apparatus containing lens
systems. See above p. 6. See, e.g., KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 420-421 (2007) (“When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp.”). Thus, this person would have
been motivated to use Jeffers’ linear displacement reflector sensor system
for lens systems in place of Igaki’s linear decoder because of design needs
and market pressures where both systems perform the same and similar
10
Appeal 2009-002392
Application 11/023,233
functions, even though one of the linear systems cannot be bodily
incorporated into the other linear system as Appellant points out. See Ans.
10-11; App. Br. . See, e.g., KSR, 550 U.S. at 398 (a patent claiming a
combination of elements known in the prior art is obvious if the
improvement is no more than the predictable use of the prior art elements
according to their established functions); In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the
art); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“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.”); In re Siebentritt, 372 F.2d
566, 567-68 (CCPA 1967) (express suggestion to interchange methods
which achieve the same or similar results is not necessary to establish
obviousness); see also In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
We are of the opinion Appellant has not established that the evidence
in the combined teachings of Igaki and Jeffers does not support the
Examiner’s conclusions of prima facie obviousness of claims 1 and 20.
App. Br. 17-18. We interpreted these claims to specify the light signal is
altered by a reflector region of the light reflecting surface and thus the
position or location of the reflector region. See above p. 5. Jeffers’ linear
variable reflector system performs in the same manner as the position of
LVR 54 relative to the fixed optical fiber in sensor 50 reflects a signal light
11
Appeal 2009-002392
Application 11/023,233
to detector 38 that is altered by the position or location of the reflection
region on LVR 54. See above pp. 7-8. This is all claims 1 and 20 require.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Igaki and Jeffers with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1, 3, 7, 8, and 20 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
We are of the opinion Appellant has established that the evidence in
the combined teachings of Igaki and Jeffers does not support the Examiner’s
conclusions of prima facie obviousness of claims 2, 9, 17, and 19. App. Br.
17-18. We interpreted these claims to specify the light signal is altered by
the difference in height, that is, distance, between the light reflection region
and the position sensor. See above p. 5. However, in Jeffers’ linear variable
reflector system, on the other hand, the light signal is altered by the
reflectance resulting from the thickness of layer 74 at the reflection region,
as Appellant points out. App. Br. 17; see above pp. 7-8.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 2 and 9 through 11, 13, 14, and 17
through 19 under 35 U.S.C. § 103(a) over the combined teachings of Igaki
and Jeffers.
We are of the opinion Appellant has not established that the evidence
in the combined teachings of Igaki, Jeffers and Ohta does not support the
Examiner’s conclusion of prima facie obviousness of claim 4. App. Br. 21-
12
Appeal 2009-002392
Application 11/023,233
22. We interpreted claim 4 to modify claim 1 by requiring only the
determination of the ambient temperature of the position sensor and using
that information in determining the location of the lens system. See above p.
5. The Examiner finds Jeffers’ sensor 67 senses the ambient temperature of
the position sensor and that information is used in determining location.
Ans. 19-20. See above p. 8. Ohta does teach using a thermistor to determine
ambient temperature in a lens system.
Thus, while we agree with Appellant that Ohta uses changes in
temperature determined by the thermistor to move a lens as opposed to
aiding in determining the position of a lens, the combined teachings of the
references would have motivated one of ordinary skill in this art to use a
thermistor as Jeffers’ sensor 67. See App. Br. 22.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Igaki, Jeffers, and Ohta with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claim 4 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
We do not reach the same conclusion with respect to claim 16,
dependent on claim 9, because we determined above that the combined
teachings of Igaki and Jeffers do not render the claimed method of claim 9
prima facie obvious and, as Appellant points out, Ohta does not provide
teachings which establishes otherwise. App. Br. 21. Accordingly, in the
absence of a prima facie case of obviousness, we reverse the ground of
13
Appeal 2009-002392
Application 11/023,233
rejection of claim 16 under 35 U.S.C. § 103(a) over the combined teachings
of Igaki, Jeffers, and Ohta.
In summary, we have affirmed the grounds of rejection with respect to
claims 1, 3, 4, 7, 8, and 20 and reversed the ground of rejection with respect
to claims 2 and 9 through 11, 13, 14, 16, and 17 through 19.
The Primary Examiner’s decision is affirmed-in-part.
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-IN-PART

tc

FOLEY & LARDNER LLP
P.O. BOX 80278
SAN DIEGO, CA 92138-0278
14