Ex Parte Komatsu et al

Patent Trial and Appeal Board

Oct 31, 2017

13772838 (P.T.A.B. Oct. 31, 2017)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/772,838 02/21/2013
27049 7590 11/02/2017
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Akira KOMATSU
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.
156620 7788
EXAMINER
PATEL, VIPIN
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
OfficeAction27049@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKIRA KOMATSU, TAKAHIRO TOTANI,
TAKASHI TAKEDA, TOSHIAKI MIYAO, and
MASAYUKITAKAGI
(APPLICANT: SEIKO EPSON CORPORATION)
Appeal2016-003345
Application 13/772,838
Technology Center 2800
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-1 7, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held October 3, 2017.
We AFFIRM-IN-PART.
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Application 13/772,838
Invention
Appellant1 discloses "a virtual image display apparatus which causes
an image light and an external light to be visually recognized
simultaneously." Spec. i-f 11.
Exemplary Claim
Claim 1, reproduced below with key limitations emphasized, is
exemplary:
1. A virtual image display apparatus which causes an image light
and an external light to be visually recognized simultaneously,
compnsmg:
an image element which generates an image light; and
a prism type image forming optical system including non-
axisymmetric curved surfaces of three surfaces or more,
wherein the prism type image forming optical system includes a
relay optical system which forms an intermediate image on an
optical path,
wherein when the external light is visually recognized by passing
the external light through a first surface and a third surface
among a plurality of surfaces constituting the prism type image
forming optical system, a diopter scale is approximately zero,
wherein the first surface and the third surface form a concave
surface shape with respect to an observation side, and
wherein after the image light from the image element is totally
reflected on the third surface, then totally reflected on the first
surface and then reflected on the second surface, the image light
is transmitted through the first surface to reach the observation
side.
1 Appellant is the applicant, Seiko Epson Corporation, which the Appeal
Brief identifies as the real party in interest. App. Br. 1.
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Rejections
The Examiner rejects claims 1-15 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Inoguchi et al. (US 2002/0034016 Al; published
Mar. 21, 2002) ("Inoguchi"), Kato et al. (US 4,592,636; issued June 3, 1986)
("Kato"), and Shimizu et al. (US 8,116,006 B2; issued Feb. 14, 2012)
("Shimizu"). Final Act. 4--10.
The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Inoguchi, Kato, Shimizu, and Shimo (US 7,483,225 B2;
issued Jan. 27, 2009). Final Act. 11.
ANALYSIS
Except as detailed below with respect to the Examiner's rejection of
claims 2--4 and 6-8, we agree with and adopt as our own the Examiner's
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken. To this extent, we have considered
Appellant's arguments, but do not find them persuasive of error.
Claims 1, 5, and 9-16
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds that
Inoguchi' s relay optical system L 1 formation of an enlarged virtual image
using surfaces 17, 18, 22, 23, and 24 renders obvious wherein the prism type
image forming optical system includes a relay optical system which forms an
intermediate image on an optical path. Final Act. 4 (citing Inoguchi Fig. 7);
Adv. Act. 2 (May 1, 2015) (citing Inoguchi i-f 87); Ans. 2-3.
Appellant contends the Examiner erred because "Inoguchi' s system
does not produce an intermediate image because the image light never
converges and reverses relative positions." App. Br. 6. Appellant argues
that Inoguchi instead reflects rays of light "in parallel by several surfaces,
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never forming an intermediate image." Id. at 5. That is, Appellant argues
Inoguchi forms a "virtual image [that] appears to originate outside of the
optical path" rather than an "intermediate image [that] is formed on an
optical path." Reply Br. 2.
Appellant's arguments are unpersuasive because the Appellant does
not show that the claimed intermediate image on an optical path is limited to
an image formed by light that converges and reverses direction. Appellant
has identified examples of light converging and reversing direction along
plane II of a device. See App. Br. 5---6 (citing Spec. Fig. 21A); see also App.
Br. 2 (citing Spec. i-f 93, Fig. 3A). However, these are merely example
embodiments of the claimed invention and so Appellant fails to demonstrate
Inoguchi's enlarged virtual image is inconsistent with Appellant's
Specification.
Appellant further points to an article about how mirage mirrors work
as distinguishing between a "real image" and a "virtual image." Id. at 6-7
(citing a Saint Mary's University Astronomy and Physics article, now
located at Classroom Physics Demos: How Does the Mirage Mirror Work,
Saint Mary's University, Halifax, Nova Scotia, Canada, currently available
at https:// demos. smu.ca/ demos/ optics/ 69-mirage-mirror, last accessed Oct
18, 2017). However, Appellant does not show where in the record this
article was admitted as evidence (see 37 C.F.R. § 41.37(c)(2) (2014)), nor
does the article constitute a dictionary or an excerpt therefrom (id. § 41.30).
Therefore, we will not give this evidence consideration. Moreover, the
disputed recitation does not include a "real image" or "virtual image"
limitation, and therefore Appellant's arguments, regardless of the distinction
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between real and virtual images, are not commensurate with the scope of the
claimed invention.
For these reasons, Appellant does not persuasively distinguish the
claimed intermediate image on an optical path from Inoguchi' s enlarged
virtual image formed by surface 17, 18, 22, 23, and 24. Inoguchi i-f 87.
Therefore, we agree with the Examiner that the combination of Inoguchi,
Kato, and Shimizu renders obvious "wherein the prism type image forming
optical system includes a relay optical system which forms an intermediate
image on an optical path," as recited in claim 1.
The Examiner further finds that Kato' s adjustment of first and second
prisms to form a diopter scale of zero renders obvious wherein when the
external light is visually recognized a diopter scale is approximately zero.
Final Act. 4 (citing Kato col. 8, 11. 55---60); see also Adv. Act. 2 (May 1,
2015); Ans. 6-7 (citing Kato col. 3, 11. 51-56, col. 4, 11. 9-11).
Appellant contends the Examiner erred because "the alleged
motivation for adjusting the diopter of Inoguchi to zero according to Kato is
not supported." App. Br. 9. Specifically, Appellant argues that "the passage
of Kato describing the desirability of high magnification teaches away from
a diopter scale of approximately zero." Id.
Appellant's arguments do not persuasively address the teachings of
Kato, column 8, cited by the Examiner. See Final Act. 4. These teachings
specifically relate to examples in which eye-pieces are disposed behind an
exit plane of a prism "in such a way as to make the diopter zero." Kato col.
8, 11. 55---60; see also id. Tabs. 4--5. Thus, Kato teaches setting a diopter
scale to approximately zero, rather than teaching away from such a
configuration.
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Appellant further argues "Kato does not teach any advantage of
having a zero diopter that could be applied to the head mounted display
system of Inoguchi." Reply Br. 3. However, the teachings of Kato relate to
eye-pieces disposed behind a prism. See Kato col. 8, 11. 55---60. That is,
Kato is directed to modifying how external light is visually recognized.
Thus, we disagree with Appellant that the advantages of such teachings are
"unrelated to the device in Inoguchi." Reply Br. 3. Therefore, we agree
with the Examiner that the combination of Inoguchi, Kato, and Shimizu
renders obvious "wherein when the external light is visually recognized ...
a diopter scale is approximately zero," as recited in claim 1.
The Examiner further finds that, the combination of first surface 23
and second surface 24 with Shimizu's reflection of ray LI within prism 31
multiple times renders obvious wherein after the image light from the image
element is totally reflected on the third surface, then totally reflected on the
first surface and then reflected on the second surface, the image light is
transmitted through the first surface to reach the observation side. Final
Act. 4--5 (citing Inoguchi Fig. 7; Shimizu Fig. 1); Adv. Act. 2 (May 1,
2015); Ans. 4---6.
Appellant contends the Examiner erred by citing to case law related to
the omission of an element rather than the addition of an element. App.
Br. 8 (citing In re Karlson, 311F.2d581, 584 (CCPA 1963)); Reply Br. 2-3.
However, the Examiner does not only rely on a cursory citation to case law
to show that the disputed recitations are obvious. Rather, the Examiner
makes particular, unrebutted factual findings showing the use of an
additional reflecting surface, such as that used in Shimizu, would have been
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known to an artisan of ordinary skill. See Final Act. 4--5; Adv. Act. 2 (May
1, 2015); Ans. 4--6.
Appellant also argues that modifying Inoguchi to include a third
surface as recited would have "require[ ed] a substantial redesign of
Inoguchi" and therefore "this feature would have risen above the routine
skill in the art." App. Br. 8-9. However, based on the evidence of record,
the use of an additional reflection surface in the claimed manner, to
"manipulate[e] [the] light path for transferring light to [the] eye" (Ans. 6)
would have required only ordinary skill in the art. In particular, the
Examiner persuasively shows that Shimizu's use of reflections to manipulate
a light path would have required only ordinary skill. Final Act. 5 (citing
Shimizu Fig. 1 ). Appellant's contention that such manipulation is non-
routine is based on speculation rather than supported by persuasive evidence.
See App. Br. 8-9.
For these reasons, we agree with the Examiner that the combination of
Inoguchi, Kato, and Shimizu renders obvious "wherein after the image light
from the image element is totally reflected on the third surface, then totally
reflected on the first surface and then reflected on the second surface, the
image light is transmitted through the first surface to reach the observation
side," as recited in claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1, and claims 5 and 9-15, which Appellant does not argue
separately. App. Br. 10. We sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 16, which Appellant also does not argue separately. Id. at
13.
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Claims 2--4, 6, and 7
In rejecting claim 2 under 35 U.S.C. § 103(a), the Examiner finds that
Inoguchi's inclusion of reflective display element 2, along the optical path
from prism L 1 to prism L2, renders obvious wherein an intermediate image
is formed on an optical path from the first prism to the second prism. Final
Act. 5 (citing Inoguchi Fig. 7); Ans. 7-8 (citing Inoguchi i-f 87).
Appellant contends the Examiner's findings, at best, merely show that
in Inoguchi "the intermediate image would be formed on prism surface 24,
and not between the first and second prisms" (App. Br. 11) with a virtual
image appearing "to the right of the prism L2" (Reply Br. 4). Although
Appellant does not distinguish the intermediate image of claim 2 from an
image as formed by reflective display element 2, we agree with Appellant
that the Examiner's findings do not show that an intermediate image is
formed in Inoguchi on an optical pathfrom a first prism to a second prism.
Specifically, Inoguchi depicts reflective display element 2 as being
along an optical path from prism LI back to prism LI. Inoguchi only
depicts polarizer 21 on an optical path formed from prism L 1 to prism L2.
However, the Examiner does not relying on polarizer 21 as rendering
obvious the intermediate image of claim 2. Nor does the Examiner show
that the broadest reasonable interpretation of an optical path from the first
prism to the second prism encompasses the entirety of an optical path from a
first prism, back through the first prism, and then on to the second prism.
Therefore, the Examiner's findings and analysis do not show that that the
combination of Inoguchi, Kato, and Shimizu renders obvious "wherein an
intermediate image is formed on an optical path from the first prism to the
second prism," as recited in claim 2.
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Accordingly, we are constrained to reverse the Examiner's 35 U.S.C.
§ 103(a) rejection of claim 2, and claims 3, 4, 6, and 7, which depend
therefrom. 2
Claim 8
In rejecting claim 8 under 35 U.S.C. § 103(a), the Examiner finds that
Inoguchi' s optical system renders obvious the claimed coefficient
constraints of polynomial expressions expressing each surface. Final Act. 7
(citing Inoguchi Fig. 7, i-f 149); Ans. 9-10 (also citing Inoguchi i-fi-1160, 169).
Appellant contends the Examiner erred because "Inoguchi does not
disclose the specific relationships and values recited in claim 8." App.
Br. 12; see also Reply Br. 4. We agree with Appellant, and note that the
data cited to following Inoguchi' s paragraph 149 relates to the non-
polynomial equation shown under Inoguchi's paragraph 148. While sub-
expressions of this equation, as modified by portions of the data, are
polynomial, the Examiner's findings do not show that the sub-expressions
express surfaces constrained in the manner of claim 8.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 8.
2 In the event of further prosecution of this claim, we advise Appellant and
the Examiner to review the claim language for potential ambiguities. For
example, claim 1, from which claim 2 depends, recites "an intermediate
image on an optical path" (emphases added) while claim 2 recites "an
intermediate image is formed on an optical path ... " (emphases added).
Introducing "an intermediate image" and "an optical path" multiple times
makes it unclear whether the intermediate image and optical path of claim 2
are the same or in addition to the intermediate image and optical path of
parent claim 1.
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Claim 17
In rejecting claim 17 under 35 U.S.C. § 103(a), the Examiner finds
Kato' s adjustment of first and second prisms to form a diopter scale of zero
renders obvious wherein relative curvatures of the first and third surfaces
are configured so that when the external light is visually recognized by
passing the external light through the first surface and the third surface, the
diopter scale is approximately zero. Final Act. 10 (citing Kato col. 8, 11. 55-
60); Ans. 12 (further citing Kato col. 3, 11. 51-56).
Appellant contends the Examiner erred because Kato describes
"varying the diopter by changing the optical path length within a prism"
rather than disclosing "relative curvatures of the first and third surfaces
being configured so that the diopter scale is approximately zero." App. Br.
13; see also Reply Br. 5. However, an artisan of ordinary skill would have
recognized that the relative curvatures of the surfaces of Inoguchi, as
modified by Kato' s teachings and suggestions, still affect the resulting
diopter scale, regardless of whether other factors, such as optical path length
within a prism, also affect the diopter scale. Therefore, we agree with the
Examiner that the combination of Inoguchi, Kato, and Shimizu renders
obvious the disputed recitation of claim 17.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 17.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 5, and 9-17.
We reverse the Examiner's decision rejecting claims 2--4 and 6-8.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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