Ex Parte Smith

Patent Trial and Appeal Board

Jul 31, 2014

11690526 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE E. SMITH
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Appeal 2012-001815
Application 11/690,526
Technology Center 2600
____________

Before CARL W. WHITEHEAD, JR., JASON V. MORGAN, and
DANIEL N. FISHMAN, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant is appealing claims 1–15 and 38–41. Appeal Br. 23. We
have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
“The present invention relates to the field of optical mice, and more
particularly to illumination systems, optical devices, [and] optical
components.” Specification 2.

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Representative Claim (Disputed limitations emphasized; formatting added)
1. A non-telecentric, offset-axis, near-normal-incidence, optical
mouse illumination system for use on a substantially flat
imaging surface, the system comprising
a light source configured to emit a first beam of light,
at least one collimating lens configured to direct the first
light beam in substantially a first direction towards an input
face of an illumination prism,
the illumination prism comprising a total internal
reflection (TIR) mirror and an output face,
the prism being configured to receive the first light
beam through the input face and direct the first light
beam towards the TIR mirror at an angle equaling or
exceeding a critical angle,
the prism further being configured to reflect the
first light beam from the TIR mirror to form a second
light beam that exits the output face of the prism in
substantially a second direction that is near-normal in
respect of the imaging surface,
at least one imaging lens operably configured in respect
of the prism to receive and direct a third light beam formed by
the second light beam reflecting from the surface, and
a sensor, the third light beam being directed towards the
sensor by the imaging lens,
wherein
an angle of incidence of the second beam with
respect to the imaging surface is substantially the same as
an angle of reflection of the third beam with respect to
the imaging surface,
an image appearing on the imaging surface is
reproduced on a surface of the sensor as an object by the
third beam after passing through the imaging lens,
the image and object have substantially the same
dimensions,
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the imaging lens is bounded by at least one
aperture stop disposed to a side thereof,
the image and object are decentered with respect to
one another,
the imaging surface, a first plane perpendicular to
an optical axis of the imaging lens, and the sensor surface
are all substantially parallel to one another, and
the system contains no beam splitters.

Rejections on Appeal
Claims 1–15 and 38–41 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Answer 5–7.
Claims 1–15 and 38–41 stand 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 Appellant regards as the invention.
Answer 7–8.
Claims 1–9, 11–15, and 38–41 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Appellant’s Admitted Prior Art (AAPA)
and Trisnadi (US Patent Application Publication Number 2005/0259098 A1;
published November 24, 2005). Answer 8–38.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Trisnadi, and Xie (US Patent Application
Publication Number 2005/0024336 A1; published February 3,
2005). Answer 38–39.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed July 18, 2011), the Answer (mailed
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August 18, 2011), and the Reply Brief (filed October 18, 2011) for the
respective details. We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
which Appellant 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) (2010).
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
contentions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and the reasons set
forth by the Examiner in the Answer in response to Appellant’s Appeal Brief
and adopt them as our own, except as to those findings that we expressly
overturn or set aside in the analysis as follows.

35 U.S.C. § 112, first paragraph rejection
Appellant contends, “[w]hile neither . . . ‘telecentric’ [n]or ‘non-
telecentric’ is present in the specification as originally filed, one of ordinary
skill in the pertinent art would recognize immediately that the systems
shown in the figures illustrating various embodiments of the claimed
invention are indeed all non-telecentric systems.” Appeal Brief 60. We do
not find Appellant’s arguments to be persuasive because the drawings alone
do not provide adequate support to determine the type of optical mouse
illumination system claimed.
Appellant references numerous outside sources but does not indicate
where in the Specification the existence of terminology that would support
his inference that one of ordinary skill in the art would immediately identify
the claimed optical mouse as non-telecentric. Id. Appellant relies upon
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Figures 5, 6, or 7 to provide support for his assertion; however, the figures
do not provide the required support because it appears that both telecentric
elements as well as non-telecentric elements are shown in the figures.
Appeal Brief 61–62. The apparent inclusion of both types of elements in the
figures would not support the exclusion of either type of element as claimed.
Further, when the reference does not disclose that the drawings are to
scale and are silent as to dimensions, arguments based on measurement of
the drawing features are of little value. See Hockerson-Halberstadt, Inc. v.
Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“[I]t is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.”).
Appellant has failed to provide sufficient evidence or argument to
persuade us of any reversible error with respect to the disputed rejection.
Instead, we find the Examiner’s findings and conclusions to be reasonable
and based on the evidence of record.

35 U.S.C. § 112, second paragraph rejection
Appellant contends claims 1–15 and 38–41 are not indefinite because
the terminology “‘a non-telecentric, offset-axis, near-normal-incidence
optical mouse illumination system’” is not unclear as the Examiner finds.
Appeal Brief 63.
Appellant contends:
[L]imitations included near the end of each of those claims,
requiring that the image and object be decentered with respect
to one another and that the imaging surface, a first plane
perpendicular to an optical axis of the imaging lens, and the
sensor surface, all be substantially parallel to one another.
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Id.
Appellant supports this contention by relying upon the disclosed
figures:
Figures 5, 6 and 7 clearly show the offset in question. In Fig. 5,
for example, the optical axis of lens 130 lies vertically as the
figure is viewed, i.e.[,] perpendicular to object surface 100.
However, neither direction 90 nor direction110 [sic] lie
coincident with or parallel to that axis. In other words, the
system shown in the Figure is an offset-axis system.
Id.
The Examiner finds:

[T]he limitation “offset-axis” could refer to virtually anything
in Figs. 5 or 7 and is not limited to Appellant’s specific
interpretation regarding the optical axis of the imaging lens
(i.e., item 130). As noted in the Final Office Action dated
March 2, 2011, it is unclear from the claim limitation itself
what items are offset and what axis is used as the frame of
reference. Although Appellant has provided a very specific
example regarding the offset axis it is not the only possible
interpretation. For example, the term “axis” could refer to an
axis of symmetry or an axis of rotation in addition to the optical
axis as argued by Appellant. Furthermore, the term “offset”
without any frame of reference to determine what is offset
could potentially read on any item configuration in Figs. 5 or 7.

Answer 50.
We do not find Appellant’s arguments to be persuasive because the
claim language does not clearly set forth “what items are offset and what
axis is used as the frame of reference” as the Examiner finds in the rejection.
Id. at 7. Appellant’s reliance upon the vertical orientation in Figure 5 of the
optical axis of lens 130 in relation to the object surface 100 is not convincing
because the vertical orientation does not indicate the optical axis is
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perpendicular to the object surface. See Hockerson-Halberstadt, 222 F.3d at
956.
Appellant has failed to provide sufficient evidence or argument to
persuade us of any reversible error with respect to the disputed rejection.
Instead, we find the Examiner’s findings and conclusions to be reasonable
and based on the evidence of record.

35 U.S.C. § 103(a), obviousness rejection
Appellant contends the combination of the AAPA and the Trisnadi
reference fails to disclose the claimed invention because:

[N]one of the cited references disclose the requirements that an
angle of incidence of the second beam with respect to the
imaging surface be substantially the same as an angle of
reflection of the third beam with respect to the imaging surface,
that the image and object have substantially the same
dimensions, and that the image and object be decentered with
respect to one another. Furthermore, the principle of operation
of the Trisnadi reference depends on the telecentricity of the
optical system, which is explicitly disallowed by the rejected
claims.

Appeal Brief 69.
The Examiner concedes the “AAPA fails to expressly teach the use of
[a] non-telecentric system and a near-normal incidence angle.” Answer 9.
However, the Examiner finds the only non-telecentric behavior in
Appellant’s Figures 5 and 7 is limited to the rays traveling in direction 110
between lens 130 and sensor 140. Id. at 6. Consequently, the Examiner
interprets “the claimed ‘non-telecentric’ illumination system to read on an
imaging system that is telecentric on the object side and non-telecentric on
the image side.” Id. at 6–7.
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The Examiner finds the:
AAPA contains a “base” device/method of an optical
mouse system using TIR [(total internal reflection mirror)] and
a prism to form illumination optics without a beam splitter that
provide a reflective image to be sensed by an image sensor.
Trisnadi contains a “comparable” device/method of an optical
mouse system with various combinations of telecentric/non-
telecentric imaging optics utilizing a laser speckle-based
displacement sensor that operates with illumination light that
arrives at near-normal incidence angles and can make efficient
use of a larger fraction of the illumination light from the laser
source that has been improved in the same was [sic] as the
claimed invention.

Id. at 12.
The Examiner concludes since both the AAPA and Trisnadi use and
disclose similar optical mouse systems, therefore the combination of the two
would have been obvious to one of ordinary skill in the art thus resulting in
the claimed invention. Id. at 13.
Appellant disagrees with the Examiner’s conclusion because neither
the AAPA nor the Trisnadi reference discloses a non-telecentric optical
device and contends:
Applying the teachings of the Trisnadi reference to AAPA
would therefore result in rendering the AAPA design telecentric
and hence, the modified design would no longer satisfy
requirement (a) that the claimed system be non-telecentric.
Similarly, the near normal incidence requirement (c) that could
be satisfied by the Trisnadi reference is obviously incompatible
with the high angle of incidence systems inherent to the designs
of the AAPA. In other words, the AAPA[] and the Trisnadi
references disclose optical systems that operate at cross-
purposes respecting one another.

Appeal Brief 69–70.
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The Examiner notes that Trisnadi uses “various combinations of
telecentric/non-telecentric imaging optics.” Answer 9. The Examiner finds
Trisnadi discloses a non-telecentric illumination system directing a light
beam that is near normal in respect to the imaging surface, thus causing the
light to propagate through imaging optics and reflect from the imaging
surface at a near normal angle. Id. at 11.
Trisnadi discloses an optical diagram of a non-telecentric imaging
system in Figure 6. Trisnadi’s Figure 7 shows an optical diagram of a
telecentric imaging system that is telecentric on the object side of the lens. It
is apparent from Trisnadi’s Figure 7 that the imaging system is non-
telecentric on the image side. This is further supported by Trisnadi’s Figures
8 and 9 which disclose examples of telecentric configurations on the image
side, as well as, both the image and object sides simultaneously. We find the
Examiner’s interpretation of non-telecentric to be reasonable. Therefore, we
agree with the Examiner’s findings and do not find Appellant’s arguments to
be persuasive.
We sustain the Examiner’s obviousness rejection of independent
claims 1, 38, 39, 40 and 41, argued together (Appeal Brief 69), as well as
dependent claims 2–9 and 11–15 not argued separately. We also sustain the
Examiner’s obviousness rejection of claim 10 because we did not find the
obviousness rejection of claim 1, from which claim 10 depends, to be
deficient as Appellant contends. See Id. at 72.

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DECISION
The 35 U.S.C. § 112, first paragraph, rejection of claims 1–15 and 38–
41 is affirmed.
The 35 U.S.C. § 112, second paragraph, rejection of claims 1–15 and
38–41 is affirmed.
The 35 U.S.C. § 103(a) rejections of claims 1–15 and 38–41 are
affirmed.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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