JUNG, In

Patent Trials and Appeals Board

Sep 17, 2020

2019006571 (P.T.A.B. Sep. 17, 2020)

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.
15/196,376 06/29/2016 In JUNG 10005129-50208159 1081
23562 7590 09/17/2020
BAKER & MCKENZIE LLP
PATENT DEPARTMENT
1900 North Pearl Street
Suite 1500
DALLAS, TX 75201
EXAMINER
ALLEN, STEPHONE B
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
docket@bakermckenzie.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IN JUNG and DONG HEE LEE

Appeal 2019-006571
Application 15/196,376
Technology Center 2800
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 21–27 and 30–37.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—i.e., “In JUNG” (Application Data Sheet filed June 29,
2016 at 5), who is also identified as the real party in interest (Appeal Brief
filed November 6, 2018, as revised April 1, 2019, (“Appeal Br.”) at 3).
2 See Appeal Br. 4–16; Reply Brief filed September 3, 2019 (“Reply Br.”) at
2–8; Final Office Action entered May 9, 2018 (“Final Act.”) at 4–14;
Examiner’s Answer entered July 3, 2019 (“Ans.”) at 3–12.
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I. BACKGROUND
The subject matter on appeal relates to an optical scope for a firearm
in which a lens having negative power is disposed on an image formation
surface of an objective lens, thereby increasing eye-relief (Specification filed
June 29, 2016 (“Spec.”) at 1, l. 8–2, l. 2). Representative claim 21, the sole
independent claim on appeal, is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
21. An optical scope, comprising:
an objective lens;
an eyepiece lens;
a reticle disposed between the objective lens and the
eyepiece lens;
an erecting optical system that erects an image and is
disposed between the objective lens and the reticle; and
a field lens having negative power disposed between the
eyepiece lens and the erecting optical system, wherein a straight
imaginary line is defined from a center of the objective lens to a
center of the eyepiece lens,
the reticle, the erecting optical system, and the field lens
are arranged such that the imaginary line intersects each of the
reticle, the erecting optical system, and the field lens
respectively,
a surface of the field lens towards the reticle is flat, and
the objective lens, the field lens, the reticle and the
eyepiece lens are arranged in sequence.
(Appeal Br. 17 (emphasis added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under pre-AIA 35 U.S.C. § 103(a)
as follows:
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A. Claims 21–27, 30–34, and 37 as unpatentable over Kammans3
in view of Flint4 and further in view of Hengst et al.5
(“Hengst”); and
B. Claims 21, 35, and 36 as unpatentable over Kammans in view
of Flint and further in view of Betensky.6
(Ans. 3–12; Final Act. 4–14).7
III. DISCUSSION
The Examiner states that “[t]he primary issue in this appeal is the
relative positions of optical elements within the optical scope, especially the
reticle 130 and the negative field lens 140” (Ans. 6 (referring to Figs. 6, 15
and associated descriptions in the Specification)). We frame the dispositive
issue in this appeal in a slightly different way: Does the Examiner articulate
a sufficient reason with some rational underpinning that would support a
conclusion that a person having ordinary skill in the art would have been
prompted to combine Kammans and Flint in the manner claimed by the
Appellant—i.e., modify the optical scope disclosed in Kammans, in view of
Flint’s teachings, to include an objective lens, a field lens, a reticle, and an
eyepiece lens that are arranged in sequence, as required by claim 21? KSR

3 WO 2007/140747 A1, published December 13, 2007. The Examiner relies
on the machine-generated English language translation attached to the Office
Action entered October 13, 2017 (Final Act. 4). Our citations to this
reference are also to the machine-generated translation.
4 US 2,912,494, issued November 10, 1959.
5 US 7,133,200 B2, issued November 7, 2006.
6 US 5,532,875, issued July 2, 1996.
7 A rejection under 35 U.S.C. § 112, ¶ 2, of claims 26 and 31, as set forth in
the Final Action (Final Act. 3), has been withdrawn (Ans. 3).
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Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
For the reasons given by the Appellant and below, the Examiner’s
rejections fail to articulate a sufficient reason with some rational
underpinning to support the obviousness conclusions.
The sole figure (annotations added) in Kammans is reproduced as
follows:

The figure reproduced above from Kammans shows a telescope eyepiece 1
including, inter alia, a main eyepiece 11, a lens of negative refractive power
6 (i.e., a field lens), a reticle or line plate 5 located on planar surface 8, and
an objective (not shown) located in the vicinity of image plane 9 (Kammans
¶¶ 24–25; Fig.; see also List of Reference Numbers).
The Examiner acknowledges that Kammans does not disclose the
limitation “the objective lens, the field lens, the reticle and the eyepiece lens
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are arranged in sequence” recited in claim 21 (Ans. 7; Final Act. 5). To
account for this difference, the Examiner relies on Flint (Final Act. 5–6).
Specifically, Flint describes a television sight to scan sights such as
used for gunsights, photoviewers, and bombsights on airplanes (Flint col. 1,
ll. 5, 15–18). Flint’s Figure 3 is reproduced as follows:

Flint’s Figure 3 above depicts an instrument including, inter alia, a glass or
plastic dome 20, prisms 21 and 22, an objective 23, a reticle included in a
plane 24, a field lens 25 in the form of cemented negative elements adjacent
plane 24, and a relay objective 30 that receives light from an image in the
plane 24 and refocuses it on a surface 31 of a television camera 32 (Flint col.
6, ll. 10–48).
The Examiner states that “it would have been obvious to an ordinarily
skilled artisan . . . to use the teaching of the reticle cemented inside the
negative field lens of Flint in the system of the Kammans so any specks
appearing on the surfaces of the field lens will be somewhat out of focus and
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not so sharply seen” (Final Act. 6). In response to the Appellant’s argument
that this conclusion is not supported (Appeal Br. 8), the Examiner states:
The combination of the reticle cemented inside the
negative field lens of Flint in the system of Kammans preserves
Kammans’ principle of operation that there is a lens with
negative refractive power arranged in the vicinity of the image
plane at which the reticle is disposed, while preventing soiling
exactly at the reticle “so any specks appearing on the [external]
surfaces of the field lens will be somewhat out of focus and not
so sharply seen” . . . Therefore, Flint need not provide any
teaching that cementing the reticle to the lens suppresses specks.
(Ans. 10 (quoting Final Act. 6); emphasis added).
But, as the Appellant points out (Appeal Br. 10–11), Kammans
specifically teaches locating the negative refractive power lens 6 (i.e., field
lens) between planar surface 8 and the main eyepiece 11 to widen the optical
beam bundle while, at the same time, protecting the reticle 5 from soiling
(Kammans ¶ 14). Under these circumstances, we discern no factual basis
upon which to conclude that a person having ordinary skill in the art would
have combined Kammans and Flint in the manner claimed “so any specks
appearing on the surfaces of the field lens will be somewhat out of focus and
not so sharply seen,” as the Examiner proposes (Final Act. 6). Indeed, we
agree with the Appellant that the modification of Kammans as proposed in
the rejection not only lacks evidentiary support but actually runs counter to
the teachings found in Kammans. In re Nuvasive, Inc., 842 F.3d 1376, 1383
(Fed. Cir. 2016) (“‘[C]onclusory statements’ alone are insufficient and,
instead, the finding must be supported by a ‘reasoned explanation.’”; In re
Ratti, 270 F.2d 810, 813 (CCPA 1959) (“Th[e] suggested combination of
references would require a substantial reconstruction and redesign of the
elements shown in [the prior art reference] as well as a change in the basic
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principles under which the [prior art reference’s] construction was designed
to operate.”).
The remaining references (Hengst and Betensky) have not been cited
to cure the deficiency in the Examiner’s proposed combination of Kammans
and Flint (Final Act. 6, 9–10). Therefore, we do not sustain Rejections A
and B, both of which suffer from the flawed reasoning to combine Kammans
and Flint.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–27, 30–34,
37
103(a) Kammans, Flint,
Hengst
21–27, 30–
34, 37
21, 35, 36 103(a) Kammans, Flint,
Betensky
21, 35, 36
Overall
Outcome
21–27, 30–37

REVERSED