Ex Parte Suzuka

Patent Trial and Appeal Board

Aug 29, 2016

13372955 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/372,955 02/14/2012
7055 7590 08/31/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Shinya SUZUKA
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.
P41560 6902
EXAMINER
SPINKS, ANTOINETTE T
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINY A SUZUKA
Appeal2015-000520
Application 13/372,955
Technology Center 2600
Before HUNG H. BUI, AMBER L. HAGY, and MICHAEL M. BARRY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-12. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.2
1 According to Appellant, the real party in interest is Hoya Corp.
2 Our Decision refers to Appellant's Appeal Brief filed July 2, 2014 ("App.
Br."); Reply Brief filed September 30, 2014 ("Reply Br."); Examiner's
Answer mailed August 1, 2014 ("Ans."); Final Office Action mailed
February 5, 2014 ("Final Act."); and original Specification filed February
14, 2012 ("Spec.").
Appeal2015-000520
Application 13/372,955
STATEMENT OF THE CASE
Appellant's invention relates to a position controller for an optical
element (e.g., a lens or an image sensor) provided in an optical system,
which can be moved to correct image shake and can also be moved onto and
removed from an optical axis of the optical system. Spec. 1: 5-8, Abstract.
Claim 1 is independent and is illustrative of Appellant's invention, as
reproduced with disputed limitations emphasized below:
1. A position controller for an optical element provided in a
photographing optical system which moves between a ready-to-
photograph state and an accommodated state in which no
pictures are taken, comprising:
an advancing/retracting member movable in an optical
axis direction of said photographing optical system, wherein said
advancing/retracting member is moved between a first position
at which said photographing optical system is in said ready-to-
photograph state and a second position at which said
photographing optical system is in said accommodated state;
an anti-shake moving member supported by said
advancing/retracting member to be movable along a first plane
orthogonal to said optical axis;
an insertable/removable moving member which holds said
optical element and is rotatably supported by said anti-shake
moving member to be movable between an insertion position in
which said optical element is positioned on said optical axis and
a removed position in which said optical element is removed
from said optical axis;
an insertion holder which holds said insertable/removable
moving member in said insertion position when said
photographing optical system is in said ready-to-photograph
state;
a removal drive member which is supported by said
advancing/retracting member to be movable along a second
plane orthogonal to said optical axis, relative to said
advancing/retracting member, between an insertion allowance
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Application 13/372,955
position in which said removal drive member is in noncontact
with said insertable/removable moving member in said insertion
position, to thereby allow said anti-shake moving member to
move in a moving range thereof, and a forced removing position
in which said removal drive member comes in contact with and
presses said insertable/removable moving member to move said
insertable/removable moving member from said insertion
position to said removed position, said removal drive member
being separate and distinct from said insertable/removable
moving member, and wherein said removal drive member is
movable independently of said insertable/removable moving
member; and
an insertion/removal controller which holds said removal
drive member in said insertion allowance position when said
photographing optical system is in said ready-to-photograph
state, and moves said removal drive member from said insertion
allowance position to said forced removing position when said
advancing/retracting member moves from said first position to
said second position.
App. Br. 17-18 (Claims App.).
Examiner's Rejection
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Imura (US Publication 200710183 7 64 A 1; Aug. 9, 2007)
and Miyamoto (US Publication 2009/0195890 Al; Aug. 6, 2009). Final
Act. 2-9.
ANALYSIS
With respect to independent claim 1, the Examiner finds Imura
discloses a position controller for an optical element equipped with all the
recited components and associated functions, including: ( 1) "an
advancing/retracting member" in the form of vibration frame 210 of Imura' s
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Application 13/372,955
blur correction unit 200, shown in Figures 2 and 3; (2) "an anti-shake
moving member" in the form of voice coil motor (VCM) 220; (3) "an
insertable/removable moving member" in the form of Imura' s blur
correction unit 200; (4) "an insertion holder" in the form oflmura's
vibration frame 21 O; ( 5) "a removal drive member" in the form of cam face
portion 34 included in Imura's blur correction unit 200; and (6) "an
insertion/removal controller" in the form of spring 212 included in Imura's
blur correction unit 200. Final Act. 3--4 (citing Imura i-fi-130, 33, 35-36, 41,
45--48, 59---60, Figures 2-7).
The Examiner acknowledges Imura does not teach "wherein [the]
removal drive member being separate and distinct from [the]
insertable/removable moving member, and wherein [the] removal drive
member is movable independently of [the] insertable/removable moving
member." Id. at 4. The Examiner then relies on Miyamoto as teaching this
missing feature in order to support the conclusion of obviousness, i.e., "it
would have been obvious ... to efficiently increase portability of a camera
system." Id. at 5 (citing Miyamoto i15) (emphasis added).
Appellant disputes the Examiner's factual findings regarding Imura
and Miyamoto, as well as the Examiner's stated rationale for combining
Imura and Miyamoto. App. Br. 9-13; Reply Br. 5-10. In particular,
Appellant argues (1) Imura's voice coil motor (VCM) 220, shown in Figure
3, is not and cannot correspond to Appellant's claimed "anti-shake moving
member" because Imura's VCM 220 does not support any purported
"insertable/removable moving member" (i.e., Imura' s blur correction unit
200); and (2) Imura's blur correction unit 200 is not and cannot correspond
to Appellant's claimed "insertable/removable moving member ... rotatably
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Application 13/372,955
supported by [the] anti-shake moving member." App. Br. 12-13. In
addition, Appellant argues Miyamoto does not cure the deficiencies of Imura
and "does not provide any proper reasoning to modify" Imura to arrive at
Appellant's invention because Miyamoto does not address any "removal
drive member" as "being separate and distinct from [an]
insertable/removable moving member" and "movable independently of the
insertable/removable moving member" in the manner recited in claim 1.
App. Br. 10-12; Reply Br. 5-9. According to Appellant, Miyamoto
discloses "the operation of a reduction gear mechanism," i.e., first speed
reduction gear 153 and second speed reduction gear 154, shown in Figure 2,
in the context of a camera having a lens barrel. App. Br. 11-12. However,
Miyamoto' s disclosure of "a reduction gear mechanism" is "irrelevant to the
purported removal drive member in IMURA and [the] operation of the
removal drive member of present claim 1 (which is separate and distinct
from and is movable independently of the insertable/removable moving
member)." Reply Br. 9.
The Examiner responds that: (1) "[t]he gear 153 of Miyamoto is
separate and distinct from the barrel 100 ... moves independently of the
lens barrel cylinders" (Ans. 3); (2) blur correction lens group L3 (instead of
Imura's blur correction unit 200) can correspond to Appellant's claimed
"insertable/removable moving member ... rotatably supported by said anti-
shake moving member" (Ans. 3-5); and (3) Imura's cam face portion 34 can
correspond to Appellant's claimed "removal drive member" (Ans.
4).
We disagree with the Examiner. The case law is clear that, in order to
establish a prima facie case, the Examiner must articulate some objective
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Application 13/372,955
reason to combine the teachings of the references, and that this reasoning
must have some rational underpinning. "[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). The reasoning is important "because inventions in
most, if not all, instances rely upon building blocks long since uncovered,
and claimed discoveries almost of necessity will be combinations of what, in
some sense, is already known." KSR, 398 U.S. at 418-19.
In this case, we agree with Appellant that the Examiner's stated
rationale for combining Imura and Miyamoto is neither objective nor
supported by a rational underpinning. As correctly recognized by Appellant,
neither Imura nor Miyamoto addresses "how the removal drive member is
considered to be movable independently of the insertable/removable moving
member." App. Br. 10; Reply Br. 5-8. Miyamoto's disclosure of gear
movement does not cure the deficiencies of Imura to arrive at Appellant's
invention recited in claim 1. Likewise, the Examiner's stated rationale (i.e.,
to efficiently increase portability of a camera system) is divorced from any
teaching or suggestion that Appellant's claimed "removal drive member" is
made "separate and distinct from said insertable/removable moving
member," and "is movable independently of said insertable/removable
moving member" in the manner recited in claim 1.
For the reasons set forth above, Appellant has demonstrated Examiner
error. As such, we do not sustain the Examiner's obviousness rejection of
claim 1 and its dependent claims 2-12 based on Imura and Miyamoto.
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CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1-12 under 35 U.S.C. § 103(a).
DECISION
As such, we REVERSE the Examiner's final rejection of claims 1-
12.3
REVERSED
3 In the event of further prosecution of this application, this panel suggests
the Examiner consider rejecting claims 1-12 under 35 U.S.C. § 112, first
and second paragraphs, as being non-enabling and indefinite because it is
unclear as to (1) how components of a position controller for an optical
element (lens) recited can perform any anti-shake function, i.e., to correct
image shake; (2) how the recited components constitute an anti-shake lens
unit as shown on Figures 1-2; and (3) the differences and significances of
"first position," "second position," "insertion position," "removed position,"
"insertion allowance position," "forced removing position," and (4) the
differences between "insertion allowance position" relative to "insertion
position" and between "forced removing position" and "removed position."
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