Ex Parte SoreboDownload PDFPatent Trial and Appeal BoardMar 27, 201311028085 (P.T.A.B. Mar. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/028,085 01/03/2005 John H. Sorebo KCX-1471 (21240) 8697 22827 7590 03/28/2013 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER TORRENTE, RICHARD T ART UNIT PAPER NUMBER 2485 MAIL DATE DELIVERY MODE 03/28/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN H. SOREBO ____________________ Appeal 2011-009302 Application 11/028,085 Technology Center 2600 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009302 Application 11/028,085 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30. Claims 2, 4, 5, 8-13, 15-18, 20, 23, 24, and 31-34 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION Appellant’s invention relates to using gradient-indexed optics to detect an object on a moving web (Spec. 1, ¶ [0001]). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A system for detecting relative position or shape of objects on an underlying moving web, the system comprising: a moving web, the web having an upper surface upon which objects are placed; a light source positioned above the web that emits light onto the web and the objects on the web; a lens positioned above the web, the lens having a radial index of refraction gradient whereby the index of refraction of the lens varies gradually within the lens, the light source being at an angular and height position relative to the web and the lens such that light from the light source incident on exposed portions of the web is reflected away from and not received by the lens and light from the light source incident on an object on the web is reflected to the lens such that the lens only captures light above a nominal detection level Appeal 2011-009302 Application 11/028,085 3 when the light is reflected by objects on the web, and not reflected by the web; a sensor that receives light from the lens and converts the light to a signal; and a controller that receives the signal from the sensor and discerns position or shape of the object relative to the underlying web from the signal. C. REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sugiyama US 2004/0135073 July 15, 2004 Sorebo US 2003/0116725 A1 June 26, 2003 Varnerin US 2005/0059255 A1 March 17, 2005 Claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to satisfy the written description requirement. Claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sugiyama, Sorebo and Varnerin. II. ISSUES The dispositive issues before us are whether the Examiner has erred in concluding that: 1. The claim “and not received by the lens” (claim 1) is not defined in the Specification; and Appeal 2011-009302 Application 11/028,085 4 2. The combination of Sugiyama, Sorebo and Varnerin teaches or would have suggested a “light source” being at an angular and height position relative to the web and lens “such that light… incident on exposed portions of the web is reflected away from and not received by the lens” and “light … incident on an object on the web is reflected to the lens such that the lens only capture light above a nominal detection level” (claim 1, emphasis added). III. FINDING OF FACT The following Finding of Fact (FF) is shown by a preponderance of the evidence. Sugiyama Sugiyama discloses a device for detecting an object within a field of detection on the basis of a position of the object, wherein Figure 24 is reproduced below: Appeal 2011-009302 Application 11/028,085 5 Figure 24 shows a device 1C positioned above a belt conveyor Cv which transports an object Ob placed thereon such that a plane including optical axes Xp and Xr of the projection lens and focusing lens of the optical head 20 is situated perpendicularly to both surfaces of the belt conveyor Cv and direction Vx of transportation (p. 14, [0124]). Appeal 2011-009302 Application 11/028,085 6 IV. ANALYSIS 35 U.S.C. § 112, 1st Paragraph As to independent claims 1 and 19, the Examiner finds that the claimed “light from the light source incident in exposed portions… and not received by the lens” is “not defined in the specification and drawings” (Ans. 4). In particular, the Examiner finds that “there is a nominal level of lights received by the lens when there is no object or from the web” and that “[t]he natural phenomenon of light is lights scatters widely in numerous directions” (Ans. 9). However, Appellant points to the Specification which states that “The lens 26 is positioned relative to the web 18, the light source 22 and the objects such that the only time light enters the lens above the nominal level is when the light is reflected from the objects 12 on the web” and “the light which is reflected from the web 18 (see arrow 110) does not get directed toward the sensor” (App. Br.7, emphasis omitted). Thus, Appellant contends that “the present specification does convey to those skilled in the art, with reasonable clarity, that Appellant possessed the invention” (App. Br. 6). Upon review of the record, we agree with Appellant. In particular, we agree with Appellant that upon reading the Specification, one skilled in the relevant art would have understood that the inventor was in possession of the claimed light “and not received by the lens” at the time the application was filed. Accordingly, we reverse the Examiner’s rejection of independent claims 1 and 19 and claims 3, 6, 7, 14, 21, 22, and 25-30 dependent respectively therefrom. Appeal 2011-009302 Application 11/028,085 7 35 U.S.C. § 103(a) Appellant contends that the combination of Sugiyama, Sorebo and Varnenin “does not disclose the limitation of independent claim 1 that light from the light source incident on exposed portions of a web is reflected away from a lens and is not received by the lens” (App. Br. 11). However, we give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claim 1 is a system that comprises a “moving web”, a “light source”, a “lens”, a “sensor”, and a “controller”, wherein the “light source” is positioned “an angular and height position relative to the web and the lens”. In claim 1, the light source is positioned “such that” light therefrom is either reflected away from and not received by the lens or light is reflected to the lens. That is, claim 1 does not positively recite the “light” or any structure to provide the particular reflecting function, but instead the “light” is provided in a “such that” clause. Given the language used, the “such that” clause is reasonably interpreted to identify the resulting conditions of the light from the light source that occur when the light source is placed at a particular position. Thus, the “such that” clause at issue is akin to a “whereby” clause that merely states the result of the other features of the claim, such as the light phenomenon that occurs as the result of the positioning of the light source. Our reviewing court has concluded that “[a] ‘whereby’ clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim.” Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). Appeal 2011-009302 Application 11/028,085 8 Accordingly, although Appellant argues that the prior art “does not disclose the limitation of independent claim that light from the light source incident on exposed portions of the web is reflected away from a lens and is not received by the lens” (App. Br. 11) , such argument is not commensurate in scope with the substance of the claim. That is, claim 1 merely requires a system that comprises a “light source” being at “an angular and height position relative to the web and the lens”. Sugiyama discloses optical axes of the projection lens and focusing lens of the optical head situated perpendicularly to both surfaces of the belt conveyor and direction of transportation (FF). That is, Sugiyama discloses a projection lens positioned at an angular and height position relative to the belt conveyor and the focusing lens. We conclude that Sugiyama in combination with Sorebo and Varnerin at the least would have suggested a “light source” being at an angular and height position relative to a “web” and a “lens” as required by claim 1. Furthermore, we note that Sugiyama discloses that the device comprising the light source is positioned such that the focusing lens only captures light reflected by the object on the belt conveyor (FF). Since claim 1 merely defines “a nominal detection level” as the level when light is reflected by objects on the web, we find no error with the Examiner’s conclusion that Sugiyama at the least suggests light reflected to a lens such that the lens only captures light above a nominal detection level (Ans. 4). We also find no error with the Examiner’s finding that “when Sugiyama[’s] object Ob is moved, …Xp is now incident off the web Cv” and the Examiner’s conclusion that, in modifying the light Sugiyama’s light source with Varnerin’s teaching of using a laser light source, “it is obvious Appeal 2011-009302 Application 11/028,085 9 that with enough distance Xp between the Sugiyama sensor 1C and the web Cv, the laser light Xr will be incident beyond the left end of the lens or not received by the sensor 1C” (Ans. 9-10). Accordingly, we find no error in the Examiner’s rejection of claim 1 over Sugiyama, Sorebo and Varnerin. Further, claims 3, 6, 7, 14, 19, 21, 22, and 25-30, which have not been argued separately (App. Br. 12), fall with claim 1. V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1, 3, 6, 7, 14, 19, 21, 22, and 25- 30 under 35 U.S.C. § 103(a) is affirmed. However, the Examiner’s rejection of claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30 under 35 U.S.C. § 112, first paragraph, is reversed. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 tkl Copy with citationCopy as parenthetical citation