The Charles Stark Draper Laboratory, Inc.

Patent Trials and Appeals Board

Sep 24, 2020

14746970 - (D) (P.T.A.B. Sep. 24, 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.
14/746,970 06/23/2015 Erik L. Waldron 3898/1021 6454
2101 7590 09/24/2020
Sunstein LLP
100 High Street
Boston, MA 02110-2321
EXAMINER
SUH, JOSEPH JINWOO
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIK L. WALDRON, GREGORY P. BLASCHE, PAUL BOHN,
ROBIN MARK ADRIAN DAWSON, WALTER FOLEY,
SAMUEL HARRISON, MATTHEW T. JAMULA,
JUHA-PEKKA J. LAINE, BENJAMIN F. LANE, SEAN McCLAIN,
FRANCIS J. ROGOMENTICH, STEPHEN P. SMITH, and
JOHN JAMES BOYLE
____________

Appeal 2019-003539
Application 14/746,970
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JAMES W. DEJMEK, and
JASON M. REPKO, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1–16, which constitute all the claims pending
in this application. Claims 17–21 are canceled. We have jurisdiction over
the pending claims 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(a) (2018). According to Appellant, the real party in interest
is The Charles Stark Draper Laboratory, Inc. See Appeal Br. 2.

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Application 14/746,970

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STATEMENT OF THE CASE2
Introduction
Embodiments of Appellant’s invention relate generally to “digital
cameras and, more particularly, to digital cameras used for navigation.”
(Spec. ¶ 11).
Independent Claim 1
1. A digital camera, comprising:
a monocentric lens having a focal length, an outer
spherical surface and a center;
a plurality of pixelated optical sensor arrays, each
pixelated optical sensor array having a plurality of pixels and
being oriented toward the center of the monocentric lens and
spaced apart from the outer spherical surface of the monocentric
lens, such that the pixelated optical sensor array is disposed about
the focal length of the monocentric lens from the center of the
monocentric lens; and
a plurality of tubular baffles, one tubular baffle of the
plurality of tubular baffles for each pixelated optical sensor array
of the plurality of pixelated optical sensor arrays, the baffle being
disposed between the outer spherical surface of the monocentric
lens and the pixelated optical sensor array, the baffle
corresponding to the pixelated optical sensor array and having a
longitudinal axis normal to the baffle’s corresponding pixelated
optical sensor array and extending through the center of the
monocentric lens, the baffle enclosing a light path volume
through which light passes optically unaltered while blocking
zeroth-order stray light paths, and, the baffle being disposed such
that only light that enters and exits the monocentric lens via the
outer spherical surface, without internally reflecting off any

2 We herein refer to the Non-Final Office Action, mailed June 12, 2018
(“Non-Final Act.”); Appeal Brief, filed December 10, 2018 (“Appeal Br.”);
the Examiner’s Answer, mailed January 30, 2019 (“Ans.”); and the Reply
Brief, filed March 26, 2019 (“Reply Br.”).
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Application 14/746,970

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planar surface of the monocentric lens, enters the baffle.
Appeal Br. 14, CLAIMS APPENDIX.

Evidence
The prior art relied upon by the Examiner as evidence:
Name Reference Date
Moustakas 4,285,762 Aug. 25, 1981
Blanding et al.
(“Blanding”)
4,557,798 Dec. 10, 1985
Jungwirth et al.
(“Jungwirth”)
5,012,081 Apr. 30, 1991
Sitter, Jr. et al.
(“Sitter”)
5,680,252 Oct. 21, 1997
Stam et al. (“Stam”) 6,049,171 Apr. 11, 2000
Jackson 6,462,889 B1 Oct. 8, 2002
Chen et al. (“Chen”) US 2007/0115545 Al May 24, 2007
Rossi et al. (“Rossi”) US 2011/0032409 Al Feb. 10, 2011
Eiane et al. (“Eiane”) US 2011/0176214 Al July 21, 2011
Marks et al. (“Marks”) US 2011/0211106 Al Sept. 1, 2011
Sekine US 2015/0109501 Al Apr. 23, 2015
Kim US 2016/0172393 Al June 16, 2016
Monk et al. US 2018/0081157 Al Mar. 22, 2018

Rejections
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1, 3, 4, 6,
11, 12, 14
103 Jungwirth, Marks, Monk
B 2 103 Jungwirth, Marks, Monk, Sekine,
Rossi, Blanding
C 5 103 Jungwirth, Marks, Monk, Jackson
D 7 103 Jungwirth, Marks, Monk, Moustakas
E 8 103 Jungwirth, Marks, Monk, Sitter
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F 9 103 Jungwirth, Marks, Monk, Eiane
G 10 103 Jungwirth, Marks, Monk, Stam
H 13 103 Jungwirth, Marks, Monk, Kim
I 15, 16 103 Jungwirth, Marks, Monk, Chen

ANALYSIS

Rejection A of Sole Independent Claim 1 under 35 U.S.C. § 103

We note at the outset that Appellant does not contest any specific
limitations of independent claim 1 as not being taught or suggested by the
cited combination of Jungwirth, Marks, and Monk. Instead, Appellant
contends the Examiner has improperly combined the cited references to
support Rejection A of claim 1.
To establish a prima facie case under 35 U.S.C. § 103, the Examiner
must apply the Graham factors. 3 In applying the Graham factors, the
Examiner must provide evidence that teaches or suggests each claim
limitation,4 and, (2) the Examiner must provide sufficient “articulated

3 Obviousness is a question of law with several underlying factual inquiries:
(1) the scope and content of the prior art; (2) the differences between the prior
art and the claims at issue; (3) the level of ordinary skill in the field of the
invention; and (4) objective considerations such as commercial success, long
felt but unsolved need, and the failure of others. Graham v. John Deere Co.
of Kan. City, 383 U.S. 1, 17–18 (1966); see also KSR Int’l Co., v. Teleflex,
Inc., 550 U.S. 398, 406 (2007).

4 It is a fundamental requirement “that each and every claim limitation be
found present in the combination of the prior art references before the
[obviousness] analysis proceeds.” Abbott Labs. v. Sandoz, Inc., 544 F.3d
1341, 1351 (Fed. Cir. 2008) (quoting Abbott Labs. v. Sandoz, Inc.,
500 F. Supp. 2d 846, 852 (N.D. Ill. 2007)); In re Wilson, 424 F.2d 1382, 1385,
496 (CCPA 1970) (“All words in a claim must be considered in judging
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reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Regarding the requirement to provide an “articulated reasoning with
some rational underpinning” (id.), the Examiner finds an artisan would have
been motivated “to modify the strapdown stellar sensor and holographic lens
[] of Jungwirth with the teaching of [the] monocentric lens[-]based multi-
scale optical system[] and methods of use of Marks in order to [provide a]
low cost of manufacturing by using [a] widely available planner sensor.”
Non-Final Act. 5.
The Examiner further finds an artisan would have been motivated “to
modify the strapdown stellar sensor and holographic lens [] of Jungwirth
with the teaching of [a] digital portable microscope of Monk in order to
obtain a clear image from a sensor that does not include stray lights due to
the black baffle tube that is designed to reduce the stray light reaching the
sensor as taught by Monk ([0045]).” Non-Final Act. 6.
Appellant disagrees, and contends:
The skilled person modifying the Jungwirth arrangement as
suggested by the Examiner so as to include camera tubes as
taught by Marks would do so for the reason provided [by] Marks
— to reduce spherical and/or chromic aberrations caused by the
primary lens — and hence would always include within the
camera tubes secondary lens elements that optically adjust the
enclosed light.
Appeal Br. 7.

the patentability of that claim against the prior art.” See also MPEP § 2143.03,
9th Edition, Revision 10.2019, last revised June 2020. (“all claim limitations
must be considered” in an obviousness analysis).

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Appellant further contends: “But there would be no teaching or
suggestion to the skilled person from the teachings of Jungwirth and Marks
of implementing a baffle as claimed in which the baffle encloses ‘a light
path volume through which light passes optically unaltered while blocking
zeroth-order stray light paths.’” Appeal Br. 7–8.
Appellant additionally contends:
But Marks teaches such an arrangement in conjunction with his
uses of secondary lenses that optically alters that the light that
passes through his baffles in order to deliver it in proper focus
to the sensor array at the far end of his baffles to reduce spherical
and/or chromic aberrations caused by the primary lens. See, e.g.,
para. [0014]. Monk does also teach use of a baffle for a
microscope without interior optical structures, but neither Marks
nor Monk provides any teaching to one of skill in the art that
would suggest why it would be beneficial to modify Marks’
baffles to remove the interior optical structures, especially since
that would defeat the purpose of the baffles as used in Marks to
reduce spherical and/or chromic aberrations caused by the
primary lens, which would not occur without the secondary
lenses that are necessary in the Marks baffles.

Appeal Br. 9.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection in the Answer:
When the person having ordinary skill in the art with ordinary
creativity sees the baffle in Mark, the person would immediately
recognize the general purpose of the baffle[,] i.e., preventing
stray lights simply because it is one of the inherent functions of
a baffle to block light from unwanted directions. Therefore, using
the baffle in Mark does not defeat[] the purpose of the baffle[,]
but in contrary[,] the person uses it for the purpose of the baffle.
Ans. 21.
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Based upon our review of the record, we find a preponderance of the
evidence supports Appellant’s argument that modifying “Marks’ baffles to
remove the interior optical structures . . . would defeat the purpose of the
baffles as used in Marks to reduce spherical and/or chromic aberrations
caused by the primary lens, which would not occur without the secondary
lenses that are necessary in [] Marks’ baffles.” (Appeal Br. 9).
We particularly note that Figure 4 of Mark depicts four lenses (402,
404, 406, and 408) which are interior to tube 410 that would need to be
removed to incorporate Monk’s teaching of a black baffle tube 13 (Figure 6)
to reduce the amount of stray light reaching the sensor. See Monk,
paragraph 45: “In front of the sensor 12 a black baffle tube 13 may be fitted,
to reduce the stray light reaching the sensor 12, and an objective lens 14.”
See also Monk, Figure 6, black baffle tube 13.
As argued by Appellant (Appeal Br. 9), we agree that such
modification of Marks’ imaging system with Monk’s black baffle tube 13
would not reduce spherical and/or chromic aberrations caused by the
primary lens, which is the basic principle of operation of Marks (see e.g.,
Marks, Abstract; paragraph 14).
If the proposed modification of the prior art would change the basic
principles of operation of the prior art being modified, the teachings of the
references are insufficient to render the claims obvious. In re Ratti, 270
F.2d 810, 813 (CCPA 1959).
Because we agree with Appellant that the Examiner’s proposed
modification of adding Monk’s black baffle tube to Marks’ imaging system
would make no sense to an artisan because it would change Marks’ principle
of operation, we also agree with Appellant that “[i]mproper hindsight [was]
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Application 14/746,970

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used to assemble the bits and pieces of the prior art references in order to
assemble a hypothetical device within the scope of the claims.” (Reply Br.
1).
We note the Examiner “opened the door” to the new hindsight
argument in the Reply Brief by finding in the Answer: “Appellant fails to
show the motivation presented in the Office Action is solely gleaned from
Appellant's disclosure.” Ans. 20–21.
On this record, we find a preponderance of the evidence supports
Appellant’s argument that “the fundamental principles of the secondary
references Marks and Monk are incompatible and the person of skill in the
art would not even hypothetically attempt to combine their teachings in a
single device.” (Reply Br. 1).
Accordingly, we are constrained on this record to reverse the
Examiner’s Rejection A of sole independent claim 1. For the same reasons,
we also reverse the Examiner’s Rejection A of associated dependent claims
3, 4, 6, 11, 12, and 14.

Rejections B–I of the Remaining Dependent Claims under § 103
In light of our reversal of rejection A of sole independent claim 1, for
the same reasons, we also reverse rejections B–I of all remaining dependent
claims, which variously and ultimately depend therefrom. On this record,
the Examiner has not shown how the additionally cited secondary references
overcome the aforementioned deficiencies of the base combination of
Jungwirth, Marks, and Monk, as discussed above regarding claim 1.

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Application 14/746,970

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CONCLUSION
The Examiner erred in rejecting claims 1–16 as being obvious under
35 U.S.C. § 103, over the cited combinations of references.

ADDITIONAL ISSUE
We note each dependent claim 2–16 in the claims appendix to the
Appeal Brief inexplicably depends upon a non-existent “claim 0,” i.e., “A
digital camera according to claim 0, . . . .” Appeal Br. 15–17. We presume
this is a typographical error. This typographical error must be corrected by
amendment prior to any consideration by the Examiner for allowance.
DECISION SUMMARY
Rej. Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
A 1, 3, 4, 6,
11, 12, 14
103 Jungwirth,
Marks, Monk
1, 3, 4, 6,
11, 12, 14
B 2 103 Jungwirth,
Marks,
Monk,
Sekine,
Rossi,
Blanding
2
C 5 103 Jungwirth,
Marks,
Monk,
Jackson
5
D 7 103 Jungwirth,
Marks,
Monk,
Moustakas

7
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Application 14/746,970

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Rej. Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed

E
8 103 Jungwirth,
Marks,
Monk, Sitter
8
F 9 103 Jungwirth,
Marks,
Monk, Eiane
9
G 10 103 Jungwirth,
Marks,
Monk, Stam

10
H 13 103 Jungwirth,
Marks,
Monk, Kim
13
I 15, 16 103 Jungwirth,
Marks,
Monk, Chen

15, 16
Overall
Outcome
1–16

REVERSED