Ex parte RUBEN

Board of Patent Appeals and Interferences

Apr 22, 1998

07975764 (B.P.A.I. Apr. 22, 1998)

Application for patent filed November 13, 1992.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL L. RUBEN
____________
Appeal No. 95-3797
Application 07/975,7641
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, and
MEISTER and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 1-3 and 5. Claims 4, 6-8 and 9 have
been canceled and claim 10 is allowed.
Appeal No. 95-3797
Application 07/975,764
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Appellant’s claimed subject matter is a real image
viewfinder which includes a first and second optical path.
Claim 1 is exemplary of the subject matter on appeal and
recites:
1. A real image viewfinder for use in a camera, the
viewfinder having an objective lens, an image reflecting optic
unit having first, second, third, and fourth reflecting
surfaces, and an eyepiece lens that define a first optical
path in which a first real image plane is located between the
objective lens and the eyepiece lens, further having a movable
variator lens that varies the magnification of the viewfinder
as the variator lens is moved, wherein:
the second and third reflecting surfaces of the
image reflecting optic unit are movable to compensate for
variation in the position of the first real image plane with
respect to the eyepiece lens such that the first real image
plane moves simultaneously with movement of the reflecting
surfaces and the fourth reflecting surface is adapted to
define a second optical path through the viewfinder such that
a second real image plane is fixedly located at a focal plane
of the eyepiece lens and can be viewed through the eyepiece
lens, said real image viewfinder further including a display,
located at the second real image plane, that displays data
items that can be viewed through the eyepiece lens.
THE REFERENCES
The following references were relied on by the
examiner:
Asano et al. (Asano) 4,165,932 Aug. 28, 1979
Bentensky et al. (Bentensky) 5,155,517 Oct. 13,
1992
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Appeal No. 95-3797
Application 07/975,764
THE REJECTIONS
Claims 1-3 and 5 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Bentensky in view of Asano.
Rather than reiterate the entire arguments of the
examiner and the appellant in support of their respective
positions, reference is made to the appellant’s brief (Paper
No. 13) and the examiner’s answer (Paper No. 14) for the full
exposition thereof.
OPINION
In reaching our conclusions on issues raised in this
appeal we have carefully considered appellant’s specification,
the appealed claims, the applied references, and the
respective viewpoints advanced by the appellant and the
examiner. As a consequence of our review, we have made the
determination that the rejection should not be sustained. Our
reasons for this determination follow.
We initially note that, for reasons stated infra. in
our, new rejections under the provisions of 37 CFR § 1.196(b),
we are of the opinion that claim 1 fails to satisfy the
Appeal No. 95-3797
Application 07/975,764
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requirements of 35 U.S.C. § 112, second paragraph. Normally a
claim which fails to comply with the second paragraph of § 112
will not be analyzed as to whether it is patentable over the
prior art since to do so would of necessity require
speculation as to the meets and bounds of the claimed subject
matter. See In re Steel, 305, F.2d 859, 862-863, 134 USPQ
292, 295-296 (CCPA 1962); and In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970). Nevertheless, in this
instance, in an effort to avoid piecemeal appellate review
(See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993) and Ex
parte Ionescu, 222 USPQ 537, 540 (Bd.App.1984)), we make the
following interpretation of the terminology appearing in claim
1 for the purpose of reaching the rejection based on prior
art. In claim 1, line 13, we interpret “the reflecting
surfaces” to be “the second and third reflecting surfaces.”
We now turn to the examiner’s rejection of claims 1-
3 and 5 as unpatentable over Bentensky in view of Asano. In
the examiner’s view, Bentensky discloses each element of claim
1 except:
...the fourth reflecting surface (M4)
adapted to define a second optical path
through the viewfinder such that a second
Appeal No. 95-3797
Application 07/975,764
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real image plane is fixedly located at a
focal plane of the eyepiece lens and can be
viewed through the eyepiece lens; the real
image viewfinder further including a
display, located at the second real image
plane, that displays data items that can be
viewed through the eyepiece lens.
[Examiner’s Answer at page 4]
The examiner relies on Asano for teaching (1) “a
stationary semi-transparent reflecting surface (6) that
permits the second optical path (optical axis Z) to extend
from the eyepiece through the semi-transparent reflecting
surface to the second real image plane (window plate 18)”,
(2) “that the display items (data carrying plate 12 and bright
frame S) can be viewed through the eyepiece lens” and (3)
“that the display can be solely illuminated by light passing
through the viewfinder along the second optical path.
(Examiner’s Answer at pages 4-5)” The examiner concludes:
Given the teachings of Asano et al, it
would have been obvious to one having
ordinary skill in the art to modify the
fourth reflecting surface (M4) of Bentensky
et al to define a second undeviated
straight optical path which extend[s]
through the viewfinder from the eyepiece
lens such that a display is fixedly located
at a focal plane of eyepiece lens for the
purpose of viewing data display through the
eyepiece with the view of the object to be
photographed observed through the objective
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Application 07/975,764
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lens of the viewfinder optical system.
[Examiner’s Answer at page 5].
Appellant argues that Asano does not disclose a
second real image plane fixedly located at a focal plane of
the eyepiece lens and at which a display is located. We note
that The Academic Press Dictionary of Science and Technology
(Academic Press, San Diego 1992) defines “focal plane” as a
plane that is perpendicular to the principal axis and passes
through the focal point of the axis of a mirror, lens, or lens
system. As such, the focal plane of eyepiece 8 in Asano is
perpendicular to axis X. Clearly, the display 12 depicted in
Asano is disposed on axis Z which is not located at a focal
plane of eyepiece 8. The examiner while recognizing that
display 12 is not disposed in the focal plane of eyepiece 8
states:
Neverless, Asano et al clearly teaches that
a display can be placed in the second
optical path. Thus, it would have been
obvious to modify the fourth reflecting
surface (M4) to be a stationary semi-
transparent reflecting surface to define a
second optical path through the viewfinder
because this modification would provide the
shortest and an undeviated, straight line-
of-sight optical path. [Examiner’s Answer
at pages 6-7].
Appeal No. 95-3797
Application 07/975,764
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While it is true that if the device disclosed in
Bentensky were modified as proposed by the examiner the
display would be located at the focal plane of eyepiece 8,
this fact, however, does not provide the proper motivation for
modifying the Betensky device as proposed. It is the
teachings of the prior art taken as a whole which must provide
the motivation or suggestion for the modification. See
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir. 1988); Interconnect Planning
Corp. v. Feil 774 F.2d 1132, 1143,
227 USPQ 543, 551 (Fed. Cir. 1985); In re Deminski, 796 F.2d
436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986). Here, only the
appellant have suggested that a display be placed on a second
optical path at the focal plane of the eyepiece. As the court
in Uniroyal 837 F.2d at 1051, 5 USPQ at 1438 stated : “it is
impermissible to use the claims as a frame and the prior art
references as a mosaic to piece together a facsimile of the
claimed invention.” In view of the foregoing, we will not
Appeal No. 95-3797
Application 07/975,764
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sustain the examiner’s rejection of claims 1-3 and 5 under 35
U.S.C. § 103.
Under the provision 37 CFR § 1.196(b) we make the
following new rejection.
Claims 1-3 and 5 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention. Claim 1, in line 13
recites “the reflecting surfaces.” It is not clear from this
recitation whether this phrase refers to the “first, second,
third and fourth reflecting surfaces” (line 3) or the “second
and third reflecting surfaces” (line 9).
In summary, the decision of the examiner is
reversed.
A new rejection of claims 1-3 and 5 has been made
under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997,
by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
Appeal No. 95-3797
Application 07/975,764
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1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct.
21, 1997)). 37 CFR § 1.196(b) provides that, “A new ground of
rejection shall not be considered final for purposes of
judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .

Appeal No. 95-3797
Application 07/975,764
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED (196(b))
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 95-3797
Application 07/975,764
11
Joshua G. Levitt
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201