Ex Parte Wei

Patent Trial and Appeal Board

Jul 30, 2013

11267251 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIH-HSIEN WEI
____________

Appeal 2011-006188
Application 11/267,251
Technology Center 2600
____________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal
1
under 35 U.S.C. § 134 involving claims directed to
a scanning method and apparatus. The Patent Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1
Appellant states that the Real Party in Interest is Muller Capital, LLC.
(App. Br. 1.)
Appeal 2011-006188
Application 11/267,251

2
STATEMENT OF THE CASE
The Specification is directed to an image joining method for scanned
images using a scanner with two photodetectors. The image is captured by
using a linear photodetector while a matrix photodetector stores the image of
a code strip. “The code strip image is . . . fetched and compared with the
stored one to get a joining point of scanned image data.” (Spec. Abstract.)
Claims 1 and 3-31 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief (App. Br. 23-30). Claims 1 and 17 are
illustrative of the claims on appeal, and read as follows (emphasis added):
1. A scanning method comprising:
scanning first image data in a first direction at a scanning
speed with a first photodetector, and storing the first image data
in a register;
decelerating the first photodetector to a stop position and
scanning first position image data of a code strip with a second
photodetector when the register is full;
moving the first and second photodetectors in a second
direction opposite the first direction by a distance that is greater
than an acceleration distance required to accelerate the first
photodetector from the stop position to the scanning speed;
sensing that the register is cleared and accelerating the
first photodetector in the first direction to the scanning speed
and scanning second image data with the first photodetector,
and scanning second image position data of the code strip with
the second photodetector;
comparing the second position image data of the code
strip with the first position image data of the code strip to
determine a joining point; and joining the first image data and
the second image data at the joining point.
17. A scanning method comprising:
scanning first image data;
storing the first image data in a register;
suspending the scanning of the first image data in
response to a first condition of the register;
Appeal 2011-006188
Application 11/267,251

3
scanning first position data while the scanning of the first
image data is suspended;
simultaneously scanning second image data and second
position data in response to a second condition of the register
that is different from the first condition;
determining an image data joining point based on a
match between the second image data and the first image data;
and
joining the first image data and the second image data at the
image data joining point.

The Examiner has rejected the claims as follows:
I. claims 1, 3-16, 18, 22-29, and 31 under 35 U.S.C. § 103(a) as
unpatentable over Tom
2
in view of Bernasconi
3
and Tanioka;
4

II. claims 17, 19-21, and 30 under 35 U.S.C. § 103(a) as
unpatentable over Tom in view of Bernasconi.

I. The Issue: Obviousness over Tom, Bernasconi, and Tanioka
The Examiner takes the position that Tom disclosed a scanning
method that uses a photodetector and stores the information in a buffer. The
scanner stops once the buffer is filled and resumes once the buffer is empty
and ready to receive more data. During this idle time “the sensor moves
backwards far enough such that when it goes forward it is at an appropriate
constant velocity . . . and [resumes] scanning second image data with the
first photodetector.” (Ans. 4.)
The Examiner acknowledges that:
Tom fails to explicitly disclose scanning first position
image data of a code strip with a second photodetector;

2
Ronald Hou Kern Tom et al., US 6,369,918 Bl, issued Apr. 9, 2002.
3
Matthew Bernasconi et al., US 6,233,063 B1, issued May 15, 2001.
4
Hiroshi Tanioka et al., US 4,684,998, issued Aug. 4, 1987.
Appeal 2011-006188
Application 11/267,251

4
scanning second image position data of the code strip with the
second photodetector; and comparing the second position image
data of the code strip with the first position image data of the
code strip to determine a joining point.
(Id.)
The Examiner concludes that it would have been obvious to combine
Tom and Bernasconi “since doing so would have predictably and
advantageously resulted in a low cost apparatus.” (Id. at 5.) The Examiner
adds Tanioka to the combination of Tom and Bernasconi and further
concludes that “it would have been obvious . . . to have used a second
photodetector as taught by Tanioka, since doing so would have predictably
and advantageously allow[ed] the image array and light source for position
detection to be manufactured using the same process.” (Ans. 6.)
The issue is: Does the preponderance of the evidence of this record
support the Examiner‟s conclusion that the combination renders the scanning
method and apparatus obvious?
Findings of Fact
FF 1. The Specification provides that “[d]uring scanning and data
transfer, when the image data stored in the register is full, an image
processor stops the scanning. A motor decelerates to stop a scanning
photodetector. At the stop position, another photodetector fetches and stores
the image of a code strip.” (Spec. p. 2, l. 24 to p. 3, l. 1.)
FF 2. Figure 1 of Tom, reproduced below, shows a scanning method
using a step motor that features reversing the scanner while the buffer
empties.
Appeal 2011-006188
Application 11/267,251

5

[I]n region 30 the step signal 22 pulses three times after pause
signal 24 goes low, moving the sensor backward three lines.
Pulses of the integration signal 20 may continue, if desired,
even though no valid data is being generated.
In region 34, no pulses of step signal 22 are generated as
the scanner waits for the buffer to empty. Pulses of the
integration signal 20 may continue, if desired. Near the end of
region 34, the pause signal 24 changes to indicate that the
buffer is no longer full and the scanner can resume moving and
generating data.
In region 38, pulses of step signal 22 resume. These
three pulses are to move the sensor forward again (over the
reversed lines of region 30).
In region 40, after the three pulses of step signal 22 (in
region 38), the data valid signal 26 goes high to indicate that the
sensor is now at line seven, the correct line to resume
generating data.
(Tom, col. 2, ll. 46-56; Ans. 4.)
FF 3. Bernasconi disclosed a “scanning apparatus providing separate
fixed object focal planes.” (Bernasconi, Abstract.) The scanner contains “a
linear position encoder using a linear CCD array (i.e., the linear sensor
array . . . ).” (Bernasconi, col. 16, ll. 25-26; Ans. 5.)
Appeal 2011-006188
Application 11/267,251

6
In this configuration, a number of elements of the linear CCD
array outside an active imaging area of the scan line 113 are
dedicated to position encoding. Transparent surface 1932 is
comprised of active imaging area 2110 and linear encoder 2112
such that the scanning area 2114 imaged on the linear CCD
array includes an image of a scan line 113 of an original
document 102 and an image of the linear encoder 2112 along
scan line axis 114.
(Bernasconi, col. 16, ll. 27-35; Ans. 5.)
FF 4. Bernasconi disclosed that:
[T]he linear encoder 2112 can for example be a linear 50%
duty-cycle black/white pattern in 90° quadrature 2116, having a
spatial frequency enabling exact position readout to within a
resolution element of the digitized representation of a scanned
original. The image of the linear encoder 2112, once captured
by the designated elements of the linear CCD array, can be
suitably decoded according to known decoding methods to
provide accurate positional information during scanning.
(Bernasconi, col. 16, ll. 36-44; Ans. 5.)
FF 5. Tanioka disclosed a handheld scanner having an imaging array
as well as a positional detection array.
The head 1 has further LEDs 30 for detecting the scanning
position in addition to the arrays of LEDs 23 for image reading.
The LEDs 30 for detecting the scanning position and an
imaging array 31 for imaging the light reflected from the LEDs
30 are formed integrally with the imaging reading LEDs 23.
(Tanioka, col. 2, ll. 54-60; Ans. 5.)
Principle of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Appeal 2011-006188
Application 11/267,251

7
Cir. 1993).
Analysis
Appellant asserts that “Bernasconi fails to disclose, inter alia,
„scanning first position image data of a code strip with a ... photodetector
when the register is full,‟ as recited in claim 1. . . . Bernasconi discloses
capturing images of the linear encoder consecutively while scanning to
provide positional information.” (App. Br. 13.) In addition, Appellant
contends that “Tanioka's imaging array 31 reads the scanner position every
time it detects a slit 4. . . . Tanioka requires continuous position reading
because the manually driven scanner encounters irregular scan speeds.”
(App. Br. 14.) Thereby, Tanioka also does not disclose capturing image data
once the register is full (id. at 15).
The Examiner‟s position is that:
The claim language as written does not require that position
information be read only when the register is full (the claim
language is devoid of exclusionary terminology such as the
word "only"), just that it be read when the register is full. Since
positional information would be read 'consecutively' (i.e.,
continuously) if follows to reason that it would also read
positional information 'at the particular point' when the register
is full.
(Ans. 31.)
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003). In this case, Appellant contends that the limitation of “decelerating
the first photodetector to a stop position and scanning first position image
data of a code strip with a second photodetector when the register is full,”
Appeal 2011-006188
Application 11/267,251

8
should be interpreted to mean that the second photodetector captures code
strip information after the register is full and the first photodetector has
stopped (App. Br. 13). “During examination, „claims … are to be given
their broadest reasonable interpretation consistent with the specification,
and … claim language should be read in light of the specification as it would
be interpreted by one of ordinary skill in the art.”‟ In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910
F.2d. 931, 833 (Fed. Cir. 1990)). Therefore, we first turn to the
Specification to interpret this limitation.
The Specification provides that “[t]he image processor 102 converts
the signal into digital signals (data) and stores into a register 103.” (Spec. p.
1, ll. 16-17.) “During scanning and data transfer, when the image data
stored in the register is full, an image processor stops the scanning. A motor
decelerates to stop a scanning photodetector. At the stop position, another
photodetector fetches and stores the image of a code strip.” (FF 1.) We find
that the limitation when read in light of the Specification provides that the
image capturing photodetector is stopped before the acquisition of data
recording the positioning code strip by a second photodetector.
We agree with the Appellant‟s position that the combination of
references does not provide the limitation of acquiring data once the register
is full and the first photodetector has stopped. “[O]bviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). Bernasconi disclosed
obtaining a linear encoder data for each resolution element (scan line)
captured (FFs 3, 4). Bernasconi captures positional data without regard to
detecting whether the register (buffer) is at capacity or without sensing that
Appeal 2011-006188
Application 11/267,251

9
the photodetector has come to a stop position. If the buffer fills up halfway
through capturing a resolution element (scan line), Bernasconi does not
capture any additional data to obtain the code position for that particular
resolution element (scan line). Tanioka does provide for a device having
two separate photodetectors, one for image capture and the other to capture
coding strip information. Tanioka does not disclose or suggest capturing
positional data after the register is full and the first photodetector has
stopped. We conclude that none of the references in any combination
suggest the limitation of obtaining positional data after the image capturing
(first) photodetector comes to a stop.
As the Examiner has advanced no reasonable alternative rationale
explaining how an ordinary artisan would have combined the references to
achieve the limitation of obtaining positional data after the buffer is full, we
are not persuaded that the Examiner has made out a prima facie case of
obviousness as to claims 1, 9, and 22 over Tom in view of Bernasconi and
Tanioka. We therefore reverse the Examiner's obviousness rejection of
dependent claims 3-8, 10-16, 18, 23-29, and 31 as well.

II. The Issue: Obviousness over Tom and Bernasconi
Appellant contends that Tom and Bernasconi do not provide for
“scanning first position data while the scanning of the first image data is
suspended” (App. Br. 21.) as required by claim 17 or providing a “means for
scanning first position data while the means for scanning first image data is
stopped” (id.) as required by claim 30.
The Examiner‟s reason for combining Tom and Bernasconi is
grounded in a cost savings rationale. Specifically, the Examiner looks to
Appeal 2011-006188
Application 11/267,251

10
Bernasconi because the construction of the scanner “advantageously results
in a low cost apparatus . . . . Thus, it would have been obvious to one having
ordinary skill in the art at the time of Appellant's invention to have
combined Bernasconi's teachings, since doing so would have predictably and
advantageously resulted in a low cost apparatus.” (Ans. 25-26.)
In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls.… [A]ny need or
problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining
the elements in the manner claimed.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). A rejection for
obviousness must include “articulated reasoning with some rational
underpinning to support the legal conclusion.” Id. at 418, quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
What is missing, however, from the Examiner‟s explanation with
regard to the combination of Tom and Bernasconi is some sort of rationale
that provides a reason to scan the “first position data while the scanning of
the first image data is suspended” as required by claim 17. Tom stops the
scanning process once the buffer is full (FF 2) while Bernasconi “includes
an image of a scan line 113 of an original document 102 and an image of the
linear encoder 2112 along scan line axis 114” (FF 3) at the same time. Thus,
neither reference discloses scanning positioning data after suspension of the
image data scan. The Examiner has not explained how the combination of
references arrives at the order of the method steps as claimed. Furthermore,
we also note that the Examiner has not explained how a scanner with only
one photodetector, as recited in both Tom and Bernasconi can achieve
“simultaneous scanning” of image and position data.
Appeal 2011-006188
Application 11/267,251

11
We conclude that based on the record before us that the Examiner has
not met the burden of presenting a prima facie case of obviousness.
Accordingly, we reverse the rejections of claims 17, 19-21, and 30 over Tom
and Bernasconi.

SUMMARY
We reverse the rejection of claims 1, 3-16, 18, 22-29, and 31 under 35
U.S.C. § 103(a) over Tom in view of Bernasconi and Tanioka.
We reverse the rejection of claims 17, 19-21, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Tom in view of Bernasconi.

REVERSED

cdc