Ex Parte Tung et al

Patent Trial and Appeal Board

Sep 21, 2018

14280343 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/280,343 05/16/2014 David M. Tung
105639 7590 09/21/2018
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
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.
10-18485-00-us 3923
EXAMINER
NGUYEN, SANGH
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
09/21/2018 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 DAVID M. TUNG and JOACHIM WALTER AHNER
Appeal2018-000664
Application 14/280,343
Technology Center 2800
Before JAMES C. HOUSEL, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision finally rejecting claims 1, 2, 4--7, 9--14, and 17-19. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
1 Our decision refers to the Specification (Spec.) filed May 16, 2014, the
Examiner's Final Office Action (Final) dated January 25, 2017, Appellant's
Appeal Brief (Appeal Br.) filed May 31, 2017, the Examiner's Answer
(Ans.) dated August 29, 2017, and Appellant's Reply Brief (Reply Br.) filed
October 25, 2017.
2 Appellant is the Applicant, Seagate Technology LLC, which is identified in
the Appeal Brief as the real party in interest (Appeal Br. 3).
Appeal2018-000664
Application 14/280,343
The invention relates to an apparatus which may be used for
inspecting articles for features such as defects that might degrade the
performance of the article (Spec. ,r 2). The Inventors disclose that the
apparatus includes an imaging lens assembly configured to collect reflected
light from a surface of an article, an image sensor configured to receive
reflected light from the imaging lens assembly, and a processing means
configured to process signals from the image sensor corresponding to
polarized reflected light and subsequently generate one or more feature maps
(Spec. ,r 3). In addition, the Inventors disclose that the imaging lens
assembly and the image sensor are each arranged at different angles for
focusing on substantially an entire surface of the article (id.).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. An apparatus, comprising:
an imaging lens assembly, including a lens configured to
collect a polarized reflected light from an entire swface of an
article;
an image sensor configured to receive the polarized
reflected light from the lens of the imaging lens assembly,
wherein the imaging lens assembly and the image
sensor are each arranged at different angles for focusing
on substantially the entire swface of the article; and
a processing means configured to process signals from
the image sensor corresponding to the polarized reflected light
and subsequently generate one or more feature maps.
Independent claim 13 recites a similar apparatus to claim 1 and further
includes a lighting lens assembly having a light source and lighting lens
assembly arranged at different angles for illuminating substantially an entire
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Application 14/280,343
surface of the article. Independent claim 1 7 recites a similar apparatus to
claim 13 and further includes first and second light sources arranged at
different angles and first and second image sensors arranged at different
angles.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 1, 4, 5, and 10-12 as unpatentable over Kammer3 in
view ofTakashima; 4
2. Claim 2 as unpatentable over Kammer in view of Takashima,
and further in view of Maase; 5
3. Claims 6, 7, 13, 14, 17, and 18 as unpatentable over Kammer in
view of Takashima and Ricklefs; 6 and
4. Claims 9 and 19 as unpatentable over Kammer in view of
Takashima and Ricklefs, and further in view of U sami. 7
ANALYSIS
The dispositive issue before us in this appeal is whether Appellant
has identified reversible error in the Examiner's interpretation of claim 1 to
permit focusing on substantially an entire surface of an article over a period
3 DE 10049382 Al, published April 25, 2002 ("Kammer"). The Examiner
relies, without objection, on a machine translation of this document
generated by the European Patent Office.
4 Takashima et al., US 2006/0114470 Al, published June 1, 2006
("Takashima").
5 Maase et al., US 2007/0121098 Al, published May 31, 2007 ("Maase").
6 DE 4304815 Al, published August 18, 1994 ("Ricklefs"). The Examiner
relies, without objection, on a machine translation of this document
generated by the European Patent Office.
7 Usami, US 2012/0154807 Al, published June 21, 2012 ("Usami").
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Application 14/280,343
of time via rotation of the article. We answer this question in the affirmative
and, therefore, will not sustain the Examiner's obviousness rejections.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability"). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
The Examiner finds, in relevant part, that Kammer teaches focusing
on substantially an entire surface of an article "when the spectacle glass (1,
figure 1) is rotated about an axis of rotation (31, figure 1) with different time
relative to the measuring arrangement" (Ans. 5---6, emphasis omitted). In
this regard, the Examiner finds that claim 1 does not recite that the imaging
lens assembly and the image sensor focus on substantially the entire surface
of the article at the same time (id. at 5).
Appellant argues that this interpretation is inconsistent with the
Specification and, therefore, is not the broadest reasonable interpretation
(Reply Br. 5-6). Appellant directs attention to their disclosure which
teaches that "it is important to employ a Scheimpflug correction in
accordance with the Scheimpflug principle to bring the entire surface of the
article into the plane of focus" (id. at 5; Spec. ,r 50). Appellant also
discloses that, if the Scheimpflug correction is not done, "only a small
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portion of the entire surface of the article would be in the plane of focus at
any given time requiring time-intensive rotation of the article" (id.).
In contrast, Appellant urges that Kammer teaches illuminating only a
portion of the edge of spectacle glasses such that the image receptor does not
cover the entire measurement space (Appeal Br. 14). In order to measure the
entire measurement space, Appellant further urges that Kammer teaches
slowly rotating the spectacle glasses (id.). As such, Appellant contends that
Kammer specifically teaches that the measurements are not focusing on
substantially the entire surface of the article (id.).
We begin, appropriately, with the claim's words. See Oakley, Inc. v.
Sunglass Hut Int'!, 316 F.3d 1331, 1339 (Fed. Cir. 2003) (explaining that
anticipation and obviousness require comparison of the properly construed
claims to the available prior art); Amazon.com, Inc. v. Barnesandnoble.com,
Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) ("Only when a claim is properly
understood can a determination be made ... whether the prior art anticipates
and/or renders obvious the claimed invention."). During examination, claim
terms are given their broadest reasonable construction consistent with the
specification. Honeywell Int 'l Inc. v. Universal Avionics Sys. Corp., 488
F.3d 982, 992 (Fed. Cir. 2007).
Here, we note that claim 1 recites arranging the imaging lens
assembly and image sensor at different angles "for focusing on substantially
the entire surface of the article." Appellant discloses that employing the
Scheimpflug correction is necessary to bring the entire surface of the article
into the plane of focus (Spec. ,r 50). Thus, recitation in claim 1 implicitly
requires employment of a correction technique when setting the different
angles of the imaging lens assembly and the image sensor in order to permit
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"focusing on substantially the entire surface of the article." Otherwise,
according to Appellant's disclosure, only a small portion of the surface of
the article would be in the plane of focus. In addition, if only a small portion
of the surface of the article is in the plane of focus, similar to Kammer's
teaching, the article would need to be rotated or translated to measure or
image the entire surface of the article. Appellant's disclosure, therefore,
distinguishes a technique focusing on substantially the entire surface of an
article from a technique focusing on a small portion of the article's surface
as taught in Kammer requiring rotation of the article.
Accordingly, we are persuaded that the Examiner's interpretation of
claim 1 is unreasonable when viewed in light of the Specification. In re
Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot
adopt a construction that is "beyond that which was reasonable in light of the
totality of the written description"). Because the Examiner's obviousness
rejections rely on this unreasonable interpretation, we cannot say that the
Examiner has carried the burden of establishing, by a preponderance of the
evidence, the factual basis for the conclusion that the claimed invention
would have been obvious. Fine, 837 F.2d at 1074.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 2, 4--7, 9--14, and 17-19 is reversed.
REVERSED
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