Ultimems, Inc.

Patent Trials and Appeals Board

Apr 29, 2020

14970538 - (D) (P.T.A.B. Apr. 29, 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.
14/970,538 12/15/2015 Forster Shih ULT-NP101 6703
115910 7590 04/29/2020
Chen-Chi Lin
1119 Quail Creek Circle
San Jose, CA 95120
EXAMINER
RAKOWSKI, CARA E
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
CCL@LinsPatents.com
chen.chi.lin.7@gmail.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FORSTER SHIH and YEE-CHUNG FU
____________

Appeal 2019–003878
Application 14/970,538
Technology Center 2800
___________

Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JULIA HEANEY, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1–14, 17–20, 22 and 23. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Ultimems, Inc. and
Ya-Chi Yang (Appeal Br. 2).
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REJECTION
Claim 23 is rejected under 35 U.S.C. § 112(b) as being indefinite.2
Claims 8–14, 17, and 22 are provisionally rejected on the ground of
nonstatutory double patenting over claims 1, 9–14, 17, and 18 of co-pending
application 14/987,762.3
Claims 8, 11, and 23 are rejected under 35 U.S.C. §102(a)(1) as being
anticipated by Gutierrez (US 2013/0077168 A1; published March 28, 2013).
Claims 12–14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gutierrez and Tanimura et al. (US 2008/0198249 A1;
published August 21, 2008).
Claim 1–4, 6–14, and 17–20, 22–23 are rejected under 35 U.S.C.
§ 103 over Subramanian et al. (US 2004/0198063 A1; published October 7,
2004) and Sun et al. (US 6,091,537; published July 18, 2000).
Claim 5 is rejected under 35 U.S.C. § 103 over Subramanian and Sun,
further in view of Chiou et al. (US 2009/0213236; published August 27,
2009).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key limitation in dispute):
1. An autofocus system, comprising:
a lens assembly;
an upper actuator comprising:
one or more upper stationary elements;

2 The Examiner withdrew the § 112 indefiniteness rejection of claims 8–13,
17–19, and 22 (Ans. 3, 4).
3 Co-pending Application 14/987,762 is also on appeal, Appeal No. 2019-
003971.
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a first upper translation element to translate along
a first direction;
a second upper translation element to translate
along a second direction perpendicular to the first
direction; and
a third upper translation element to translate along
a third direction perpendicular to the first and the second
directions;
a lower actuator comprising:
one or more lower stationary elements;
a first lower translation element to translate along
the first direction;
a second lower translation element to translate
along the second direction; and
a third lower translation element to translate along
the third direction;
one or more first upper comb drives operative to drive
the first upper translation element to translate along the first
direction;
one or more second upper comb drives operative to drive
the first upper translation element and the second upper
translation element to translate along the second direction; and
one or more third upper comb drives operative to drive
the first upper translation element, the second upper translation
element and the third upper translation element to translate
along the third direction;
wherein the lens assembly is attached to the first upper
translation element of the upper actuator and the first lower
translation element of the lower actuator.

Independent claim 8 is similar to claim 1 but does not recite the
details of the comb drive or the details of lower translation elements.
(Claims Appendix Appeal Br. 32–37). Independent claim 23 is also similar
to claim 1, but does not recite the details of the comb drive. Id.
Appellant’s arguments focus on the limitations emphasized above,
which are common to all of the independent claims.
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ANALYSIS
Rejection for obviousness type double patenting
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following for emphasis.
The Examiner rejects claims 8–14, 17, and 22 over claims 1, 9–14, 17,
and 18 of later-filed, co-pending Application 14/987,762 (Final Act. 6–13).
There is no dispute that claim 8 of this case encompasses claim 1 of
Application 14/987,762 in Appeal 2019-0039714 (Final Act. 6, 7; Ans. 10).
Rather, Appellant argues that, due to delay in prosecution of the earlier filed
application caused by the Examiner’s issuance of a second non-final action,
the Examiner must apply a two-way test for distinctness (Appeal Br. 6–7,
citing In re Hubbell, 709 F.3d 1140, 1150 (Fed. Cir. 2013)). However, the
Examiner aptly points out that Hubbell held that the two-way test is
applicable when the second-filed application is issued prior to the first, and

4 Furthermore, the body of claim 1 of this case directed to an autofocus
system is substantially the same as the body of claim 1 of Application
14/987,762 directed to a zoom function system.
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the delay is “administrative,” neither of which applies in this case (Ans. 8).
Therefore, we sustain the Examiner’s obviousness-type double patenting
rejection.

Rejection under 35 U.S.C. § 112 (b)
The Examiner determines the limitation “to translate” in claim 23 is
indefinite under 35 U.S.C. § 112(b), because “it is unclear what is being
translated, a lens assembly, the translation element, one or more of the
translation elements or some other non-recited element[]” (Final Act. 4) and,
therefore, “to translate” has more than one reasonable interpretation (Ans.
13–14). Appellant argues that the Specification clearly lays out that the
translation is done by the translation element. (Appeal Br. 8–9, citing ¶ 11 of
Specification “a first upper translation element . . . to translate along X
direction”).
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed.
Cir. 2014). Here, we determine that the claim language “a first upper
translation element to translate along a first direction,” does not have the
dual meaning Examiner ascribes. For the interpretation of this language
indicating that the translation element is used to translate another
component, which the Examiner alleges, the verb would have to act on
another noun, e.g., “to translate [component] along a first direction,” which
it clearly does not.
Further, as the Federal Circuit has held:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
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reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (quoting
Morris, 127 F.3d at 1054) (emphasis added). See also In re Abbott Diabetes
Care Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012) (construing the term
“electrochemical sensor” as “devoid of external connection cables or wires
to connect to a sensor control unit” to be consistent with “the language of the
claims and the specification”); In re Suitco Surface, Inc., 603 F.3d 1255,
1260–61 (Fed. Cir. 2010) (construing the term “material for finishing the top
surface of the floor” to mean “a clear, uniform layer on the top surface of a
floor that is the final treatment or coating of a surface” to be consistent with
“the express language of the claim and the specification”).
In this case, the interpretation which corresponds with the
Specification description is that “the translation element” is itself an element
which translates/moves in a linear direction and thus the dual meaning
ascribed by the Examiner is unreasonable (Spec. ¶ 11, Figs. 5 and 6; Appeal
Br. 9).
Therefore, we agree with Appellant that one of ordinary skill in the art
would have understood the scope of the claim in light of the Specification.
Accordingly, we cannot sustain the Examiner's rejection of claim 23 as
being indefinite.

Rejection under 35 U.S.C. § 102 by Gutierrez
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Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejection under 35 U.S.C. § 102. We sustain the rejection
generally for the reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant primarily contends that there is no third translation element
that can teach perpendicular motion since there is no third set of
perpendicular elements (Appeal Br. 19–20; Reply Br. 9–11) and that
Gutierrez says the motion is substantially tangential to the platform (Appeal
Br. 20).
The Examiner responds that the disclosure of Gutierrez clearly states
that there is a set of elements that provide motion perpendicular to the other
two directions (Ans. 21, citing Gutierrez ¶ 49, “translating one or more
lenses . . . within an x-y plane”) in addition to providing z-motion (Gutierrez
¶ 47 “[e]ach sector . . . can comprise . . . a Z-motion or out-of-plane
actuator”). Further, the Examiner points out that Gutierrez explicitly states
that multiple in-plane actuators can be used in the invention (Ans. 23–24,
citing Gutierrez ¶ 56 “the multiple degree of freedom actuator . . . can
comprise one, two, three, four, five, six, or more sectors”). Appellant’s mere
reliance on the illustrated invention of Gutierrez’s Figure 5 does not take
into account the invention disclosed in the text portions cited by the
Examiner. The motion disclosed as “substantially tangential” by Gutierrez is
motion as a result of the embodiment with three sectors, shown in Figure 5,
not the embodiment of four sectors which the Examiner relies upon (Ans.
22–23). Therefore, as explained by Examiner (Final Act. 13–14; Ans. 23–
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24), the claim language does encompass the invention described in
Gutierrez.
Thus, we determine that Appellant has not shown reversible error in
the Examiner’s rejection and we sustain the rejection of claims 8, 11, and 23
under 35 U.S.C. § 102 over Gutierrez, as well as claims 12–14 dependent on
claim 8 that are not separately argued, even though they are separately
rejected under 35 U.S.C. § 103 as being unpatentable over Gutierrez and
Tanimura.

Rejection under 35 U.S.C. § 103 over Subramanian and Sun
The Examiner has the initial burden of establishing a prima facie case
of obviousness 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 or the
inferences and creative steps a person of ordinary skill in the art would have
employed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
The Examiner rejected claim 1 as being obvious over Subramanian in
view of Sun (Final Act. 21–25), contending that the first upper translation
element to translate along a first direction is taught by Subramanian’s z-
stage that moves via z-stage fingers and a set of torsional springs (Final Act.
22, citing Figure 6 of Subramanian). The main dispute is on the
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interpretation of the phrase “translate along a first direction” for a first upper
(and lower) translation element as recited in claim 1. Appellant contends that
Subramanian’s motion relied upon by the Examiner is rotational, not
translational (Appeal Br. 9–11; Reply Br. 5–7). Appellant further states that
translational and rotational motion are mutually exclusive, and, thus, “the Z-
stage motion of Subramanian excludes a translational motion.” (Appeal Br.
12). However, the Examiner determines that, under the broadest reasonable
interpretation, “‘translate along a first direction’ includes all methods of
achieving such translation” and can include partial movement in x, y, and z
directions, which would include Subramanian’s rotation (Ans. 15).
After considering Appellant’s briefs, the Examiner’s Answer, the
cited teachings of the reference, and claim 1 as a whole, we determine the
Examiner erred in construing the claim term “translate along a first
direction” to encompass the rotational movement through multiple directions
that Subramanian discloses.
The entirety of the claim must be examined as a whole –– and the
individual limitations, read together, mean more than the single limitation at
issue does when read in a vacuum. Claim 1 recites not just a single
translation along a first direction, but a second translation along a second
direction and a third translation along a third direction, where all three
directions are perpendicular to each other (Claim Appendix, Appeal Br. 32).
Movement along a rotational arc that sweeps across x, y, and z directions
cannot be fairly construed to “translate along a first direction” –– rather it
translates through multiple directions (e.g., Reply Br. 7. Since the element’s
movement is “along” a direction perpendicular to two other directions, the
rotational movement of Subramanian with components of movement in
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multiple directions is not encompassed by this claim language. The
Examiner did not rely upon Sun or any other reasoning to cure this
deficiency.
Accordingly, we reverse the § 103 rejection of claim 1 over
Subramanian in view of Sun. The rejection for claims 2–14, 17–20, 22, and
23 are likewise reversed for the same reason.5

5 While Gutierrez, as applied to claims 8, 11, and 23, discussed supra might
render these claims obvious in combination with other references applied in
the Final Office Action, the Examiner did not make such a rejection. The
Board relies on the involved parties to focus the issues and decides those
issues based on facts and arguments presented by the involved parties. See
Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010 (precedential)). While the
Board is authorized to enter a new ground of rejection, this authority is
discretionary. See 37 C.F.R. § 41.77(b). We thus leave it to the Examiner to
decide whether Gutierrez should be applied to claim 1 in combination with
other references.
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In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8–14, 17, 22 Nonstatutory Double Patenting
8–14, 17,
22
23 112 Indefiniteness 23
8, 11, 23 102 Gutierrez 8, 11, 23
1–4, 6–14,
17–20, 22,
23
103 Subramanian, Sun
1–4, 6–
14, 17–
20, 22, 23
12–14 103 Gutierrez, Tanimura 12–14
5 103 Subramanian, Sun, Chiou 5
Overall
Outcome
8–14, 17,
22, 23
1–7, 18–
20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART