Ex Parte Nishio et al

Patent Trials and Appeals Board

Jul 9, 2019

13856555 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/856,555 04/04/2013
26272 7590 07/11/2019
PATENT DOCKET CLERK
COWAN, LIEBOWITZ & LATMAN, P.C.
114 WEST 47th STREET
21st FLOOR
NEW YORK, NY 10036
FIRST NAMED INVENTOR
Tetsuya Nishio
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.
26103.200 2989
EXAMINER
CHANG, FANG-CHI
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
AXC@CLL.COM
DXO@CLL.COM
RAM@CLL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TETSUY A NISHIO, AZUSA SUGA W ARA, HIROSHI KIKUCHI,
YOSHIHIKO KONNO, TATSUYUKI TOKUNAGA, and
TAKASHI HASEGAWA
Appeal2018-007788
Application 13/856,555 1
Technology Center 2800
Before JOSEPH L. DIXON, KEVIN F. TURNER, and JOYCE CRAIG
Administrative Patent Judges.
TURNER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Office Action
dated June 29, 2017 (hereinafter "Final Act."), rejecting claims 8-12, 27, 48-57,
and 68-80. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is CANON KABUSHIKI
KAISHA, the assignee of this application. Appeal Brief (hereinafter "App. Br.") 2.
2 In the Final Office Action, there was no specific recitation of claims 9 and 70 in
the prior art rejection. See Final Act. 2. However, both claims are indicated as
having been rejected (Final Act. 1 ), and Appellants have not separately argued
those specific claims, so that we need not address those claims separately.
Appeal2018-007788
Application 13/856,555
THE CLAIMED SUBJECT MATTER
The claims relate to a camera and a camera accessory interchangeably
attachable to the camera such as an interchangeable lens (Specification, ,r 1 ).
Claims 8, 27, and 48 are independent. Claims 8, 27, and 48, reproduced below, are
illustrative of the claimed subject matter, with emphases added:
8. A camera accessory detachably coupled with a camera,
compnsmg:
a second mount to be detachably coupled with a first mount
provided in the camera, the second mount being provided with second
bayonet claws and being brought, by a relative rotation with the first
mount, from a first state in which each of the second bayonet claws is
inserted between first bayonet claws provided in the first mount prior
to engagement between the second bayonet claws and the first bayonet
claws, into a second state in which the second bayonet claws engage
with the first bayonet claws to complete coupling of the second and first
mounts;
a second holding portion provided in the second mount; and
a plurality of electrical contact surfaces arranged along a
rotational direction of the second mount,
wherein the first mount is provided with a first holding portion
and a plurality of contact pins arranged along the rotational direction of
the second mount and held by the first holding portion so as to be
protruding from the first holding portion, and the electrical contact
surfaces contact with the contact pins in the second state to electrically
connect the camera accessory with the camera,
wherein the contact pins include: a first contact pin that can
contact with the one of the electrical contact surfaces in the first state;
and second contact pins that do not contact with any of the electrical
contact surfaces in the first state, and the electrical contact surfaces
include: a first electrical contact surface that contacts with the first
contact pin in the second state; and a plurality of second electrical
contact surf aces that do not contact with the first contact pin in the
second state,
wherein the first electrical contact surface is connected to an
element that indicates a predetermined voltage and is used for
indicating type of the camera accessory,
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Application 13/856,555
wherein the second electrical contact surface is used for
indicating a ground level,
wherein the first contact pin is used for detecting type of the
camera accessory which is coupled with the camera based on a voltage
level of the first connect pin when the first contact pin contacts with the
first electrical contact surface, and
wherein, along the rotational direction of the second mount, a
gap width between the first electrical contact surface and the second
electrical contact surf ace adjacent thereto is larger than a smallest
gap width between the second electrical contact surfaces adjacent to
each other.
27. A camera accessory comprising:
a first contact surface connected to an element that indicates a
predetermined voltage and to be used for indicating type of the camera
accessory;
a second contact surface to be used for indicating a reference
potential of a signal level of a communication control system; and
a third contact surface to be used for a communication clock
signal,
wherein the first contact surface, the second contact surface and
the third contact surface are lined up in this consecutive order, and
wherein a gap width between the first contact surface and the
second contact surface adjacent to each other is larger than a gap
width between the second contact surface and the third contract surface
adjacent to each other.
48. A camera accessory comprising:
a plurality of electrical contact surfaces including a first
electrical contact surface to be used for indicating type of the camera
accessory, wherein the first electrical contact surface is connected to an
element that indicates a predetermined voltage, and a second electrical
contact surf ace to be used for indicating a reference potential of a signal
level of a communication control system,
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Application 13/856,555
wherein the first electrical contact surface and the second
electrical contact surface are lined up in this consecutive order, and
wherein a gap width between the first electrical contact surface
and the second electrical contact surface adjacent to each other is larger
than a smallest gap width between the other electrical contact surfaces.
REJECTION
Claims 8, 10-12, 27, 48-57, 68, 69, and 71-80 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Miyasaka (US 2004/0202464 Al, published
Oct. 14, 2004) in view of Asakura (US 5,371,566, issued Dec. 6, 1994), and
Tomino (US 4,464,034, issued Aug. 7, 1984).
ANALYSIS
The reiection of claims 8, 1 ~12, 48-57, 77, 78, and 80
Appellants argue claims 8, 10-12, 48-57, 77, 78, and 80 together as a group.
See App. Br. 10. We select claim 8 as representative. Thus, claims 10-12, 48-57,
77, 78, and 80 will stand or fall with claim 8. See C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies on Miyasaka and Asakura as disclosing all the elements
of claim 8, except for "along the rotational direction of the second mount, a gap
width between the first electrical contact surface and the second electrical contact
surface adjacent thereto is larger than a smallest gap width between the second
electrical contact surfaces adjacent to each other." Final Act. 2---6. The Examiner
finds that Tomino discloses various gap widths between electrical contact surfaces
and combines the feature of T omino "for the purpose of providing a connector
device capable of positioning a large number of connecting contacts within a
limited area of the mount, without electrical interferences among said contacts
(Tomino: C. 1 L. 40-48)." Id. at 6. The Examiner provides a secondary rationale
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Application 13/856,555
to combine the gap width features of Tomino with Miyasaka based on routine
optimization. Id.
Appellants argue that the references do not teach or suggest the specifically
claimed first or second electrical contact surfaces or the specifically claimed usage
for indicating a type of the camera accessory or indicating a ground level or a
reference potential. App. Br. 14. Appellants further argue that the references do
not teach a gap width between the first electrical contact surface and the second
electrical contact surface adjacent thereto as claimed and that modifying the gap
width cannot be characterized as routine experimentation. Id. at 15. Appellants
also contend the Examiner relied on impermissible hindsight as a template for the
rejection. Id. at 33-34.
The Examiner responds that the contact surfaces were properly mapped to
terminals 49c and 47 of Miyasaka. Ans. 3--4. The Examiner clarifies that the
contact surfaces of Miyasaka are disclosed to be programmable, and the labels of
first contact surface and second contact surface can be attached to the contact
surfaces that provide the specific functions. Id. at 4. The Examiner relies on
dictionary.com and proposes that the broadest reasonable interpretation of the term
"adjacent" includes "lying near, close, or contiguous" such that the second
electrical contact surface adjacent thereto is subject to a reasonably broad
interpretation. Id. at 3. The Examiner finds that Tomino teaches "that by varying
the gap distances between the contacts, one may control the connection timing of
the contacts as desired" and that "depending on the gap distances between the
contacts, some contacts may be connected earlier than the others." Id. at 5.
Finally, the Examiner notes that "any judgement on obviousness is in any sense
necessarily a reconstruction based upon hindsight reasoning. But so long as it
takes into account only knowledge which was within the level of ordinary skill at
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the time the invention was made, and does not include knowledge gleaned only
from the Applicant's disclosure, such a reconstruction is proper. In re
McLaughlin, 443 F.2d 1392; 170 USPQ 209 (CCPA 1971)." Id. at 13.
Appellants reply with an alternative interpretation from the Merriam-
Webster dictionary and propose the term "adjacent" means "immediately
preceding or following" "such that two adjacent contacts are next to each other
without having other contacts between them." Reply Brief (hereinafter "Reply
Br.") 2.
We agree with the Examiner's findings and explanation regarding claim 8.
We specifically agree with the Examiner's finding that the first and second contact
terminals and the associated functionality are disclosed by Miyasaka. Id. at 4. We
are not persuaded by Appellants' argument regarding any specific arrangement or
order of these terminals because the claim does not require a specific arrangement
or order. We note the claim recites a ''plurality of second contact surfaces," such
that the specific recitations of "the second contact surface" could refer to any of the
plurality of second contact surfaces. 3 We also agree that the broadest reasonable
interpretation of the term "adjacent" includes items which are near or close (i.e.,
not directly adjacent). This interpretation appears consistent with the specification
as filed because Appellants have provided alternative claims reciting at least first
second, and third contact surfaces which are adjacent and in consecutive order
indicating a narrower scope of positional relationships is contemplated using
different terms. 4 See, e.g., claim 27. We do not need to address Appellants'
3 In the event of further prosecution we leave it to the Examiner to determine
whether this limitation is "definite" and complies with the requirements of
35 U.S.C. § 112, second paragraph.
4 We note independent claim 48 recites similar limitations of commensurate scope
with claim 8 because the broadest reasonable interpretation of "a plurality" only
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arguments directed to the secondary rationale of routine optimization because
Appellants have not traversed the primary rationale relied on by the Examiner.
Finally, we agree the Examiner has not relied on impermissible hindsight because
Appellants have not identified any knowledge that was gleaned only from the
disclosure of the instant specification.
Therefore, we sustain the rejection of claims 8, 10-12, 48-57, 77, 78, and 80
under 35 U.S.C. § 103(a).
The reiection o(claims 27. 68. 69. 71-76. and 79
Appellants argue claims 27, 68, 69, 71-76, and 79 together as a group. See
App. Br 10. We select claim 27 as representative. Thus, claims 68, 69, 71-76 and
79 will stand or fall with claim 27. See C.F.R. § 4I.37(c)(l)(iv).
Similar to the analysis above, the Examiner relies on Miyasaka, Asakura,
and Tomino as disclosing all the elements of claim 27, except for the arrangement
of the first contact surface, second contact surface, and the third contact surface
lined up in consecutive order. Final Act. 9-11. The Examiner relies on a
rearrangement of parts and design choice rationale to disclose the missing
consecutive order limitation and finds "Applicant has not established criticalness."
Id. at 10-11.
requires two electrical contact surfaces (i.e., first and second). We agree with the
Examiner's limited interpretation that two objects in a conceptual vacuum are
always lined up in a consecutive order. See Final Act. 17. In the event of further
prosecution we leave it to the Examiner to determine whether the limitation
directed to "a smallest gap width between the other electrical contact surfaces" is
"definite" and complies with the requirements of 35 U.S.C. § 112, second
paragraph.
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Application 13/856,555
Appellants argue that Miyasaka, Asakura, and Tomino do not teach or
suggest the specifically claimed consecutive order limitation. App. Br. 21.
Appellants further argue that the specific arrangement of contact surfaces "enables
proper communication voltage to be set for the type of accessory via the second
contact surface before communication is started and to synchronize communication
with the accessory" and "is not merely a programming or design choice, and has
criticality to the functioning and operation of the camera with the camera
accessory." Id. at 31. Appellants also contend the Examiner relied on
impermissible hindsight as a template for the rejection. Id. at 33-34.
The Examiner responds with a finding that varying gap distances for contact
surfaces is not critical. Ans. 12. Additionally, the Examiner also counters
Appellants' assertion of impermissible hindsight reasoning, as discussed above.
Id. at 13. Appellants reply that the positioning of the first, second, and third
contact surfaces in this consecutive order with relative gap widths is critical
because it enables proper communication before communication is started and to
synchronize communication with the accessory. Reply Br. 9.
We determine that the Examiner erred in relying on a rearrangement of parts
and design choice rationale to disclose the missing consecutive order limitation
because the proposed rearrangement of parts would modify the operation of the
device. We agree with Appellants that the arrangement of components is not
merely a design choice due to the communication function performed by the
specifically claimed gap widths between consecutively arranged contact surfaces.
Appeal Br. 31. In re Japikse, 181 F.2d 1019 (CCPA 1950) (Claims to a hydraulic
power press which read on the prior art except with regard to the position of the
starting switch were held unpatentable because shifting the position of the starting
switch would not have modified the operation of the device.). We further note ,r 64
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of the Specification clarifies that the order and sequencing of the structure as
claimed function to perform proper identification of the interchangeable lens,
whereas the electrical contacts of Tomino are intended to prevent electrical
interferences, prevent two simultaneous connections, and power is activated only
after the interchangeable lens is completely mounted on the camera body. Tomino
1 :45-56 and 4: 15-19. We determine that the function of proper identification of
the interchangeable lens is different from the prevention of electrical interferences
and prevention of two simultaneous connections. In re Gal, 980 F.2d 717, 719
(Fed. Cir. 1992) (finding of obvious design choice precluded when claimed
structure and the function it performs are different from the prior art).
Finally, we are not persuaded by the motivation proffered by the Examiner
"to better suit the circuit structure or to better utilize the space." Ans. 13. We
agree with Appellants that "the Examiner has not explained how, based on the
teachings in Miyasaka, Asakura, or Tomino, [A]ppellant[s'] claimed arrangement
would better suit the circuit structure or better utilize the space." Reply Br. 10. In
re Kuhle, 526 F.2d 553 (CCPA 1975) (the particular placement of a contact in a
conductivity measuring device was held to be an obvious matter of design choice).
However, "[t]he mere fact that a worker in the art could rearrange the parts of the
reference device to meet the terms of the claims on appeal is not by itself sufficient
to support a finding of obviousness. The prior art must provide a motivation or
reason for the worker in the art, without the benefit of appellant's specification, to
make the necessary changes in the reference device." Ex parte Chicago Rawhide
Mfg. Co., 223 USPQ 351,353 (Bd. Pat. App. & Inter. 1984).
Therefore, we reverse the rejection of claims 27, 68, 69, 71-76, and 79
under 35 U.S.C. § 103(a).
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Application 13/856,555
DECISION
We affirm the Examiner's rejection of claims 8, 10-12, 48-57, 77, 78, and
80.
We reverse the Examiner's rejection of claims 27, 68, 69, 71-76, and 79.
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.
§ 4I.50(f).
AFFIRMED-IN-PART
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