14987762 - (D) (P.T.A.B. Apr. 29, 2020)

Ultimems, Inc.

Patent Trials and Appeals BoardApr 29, 2020

14987762 - (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. 14/987,762 01/05/2016 Forster Shih ULT-NP103 8951 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 2019–003971 Application 14/987,762 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(a) of the Examiner’s final decision rejecting claims 1–6, 9–14, 17–20, 22, and 23. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 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). Appeal 2019-003971 Application 14/987,762 2 REJECTIONS Claims 1–6, 9–14, 17–20, 22, and 23 are provisionally rejected on the ground of provisional nonstatutory double patenting over claims 8, 5–7, 9– 14, and 19–22 of copending Application 14/970,538, which is also on appeal (Appeal No. 2019-003878). Claims 22 and 23 are rejected under 35 U.S.C. § 112(b) as being indefinite. Claim 23 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Gutierrez (US 2013/0077168 A1; published March 28, 2013). Claims 1–4, 9–14, 18–20, and 22–23 are rejected under 35 U.S.C. § 103 over Subramanian et al. (US 2004/0198063 A1; published October 7, 2004) and Lipson et al. (US 2013/0293764 A1; published November 7, 2013). Claims 5 and 17 are rejected under 35 U.S.C. § 103 over Subramanian and Lipson, further in view of Ichikawa (US 2012/0307372 A1; published December 6, 2012). Claim 6 is rejected under 35 U.S.C. § 103 over Subramanian and Lipson, further in view of Ichikawa and Gutierrez ’081 (US 2010/0284081 A1; published November 11, 2010). CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal (emphasis added to highlight key limitation in dispute): 1. A zoom function system, comprising: an upper lens assembly; a lower lens assembly; an upper actuator comprising: Appeal 2019-003971 Application 14/987,762 3 one or more upper stationary elements; 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 upper lens assembly is attached to the first upper translation element of the upper actuator and the lower lens assembly is attached to the first lower translation element of the lower actuator. Independent claims 22 and 23 are similar to claim 1, but do not recite the details of the comb drive (Claims Appendix, Appeal Br. 28–34). Appellant’s arguments focus on the limitations emphasized above, which are common to each independent claim. Appeal 2019-003971 Application 14/987,762 4 ANALYSIS Provisional 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 Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following for emphasis. Independent claims 1, 22, and 23 are all provisionally rejected on the ground of non-statutory double patenting over claim 8 of co-pending Application 14/970,538 in view of Lipson and/or Ichikawa (Final Act. 8).2 The Examiner relies on the secondary reference to teach the number of lens assemblies and associated actuators, as well as the combined functions of auto-focus and zooming (Id.). Appellant contests this rejection since Lipson and Ichikawa only move in one dimension and the duplication of any of the parts, as suggested by the Examiner, would not have resulted in the claimed invention and would have instead changed the principle of operation of claims 8 and 9 from “actuation in multiple directions to actuation only in a single direction” (Appeal Br. 6–8; Reply Br. 2–4). The Examiner points out 2 The body of claim 1 of this case directed to a zoom function system is substantially the same as the body of claim 1 of Application 14/970,358 directed to an autofocus system. Appeal 2019-003971 Application 14/987,762 5 that Lipson and Ichikawa, like the claims of the co-pending application, are directed to optical imaging systems that achieve the aims of zooming or auto-focus by movement of a lens along an optical axis (Ans. 8). The Examiner also cites to specific sections of Lipson (¶ 119, 126) and Ichikawa (¶ 58, 118, 187–190) which explicitly state that an autofocus lens can also be a zoom lens (Ans. 10). For example, Lipson teaches an embodiment of an “auto focus zoom camera” with multiple lenses that can “involve movable lenses at one or both ends of the optical train” (Lipson, ¶ 126). Moving a lens, therefore, would be a modification well within the skill of a person of ordinary skill in the art, when desiring the auto focus lens system to act as a zoom lens system (Ans. 8, 10). Appellant’s arguments are not persuasive of error as they fail to consider the applied prior art as a whole and the inferences that one of ordinary skill would have made. Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps” that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (emphasis omitted); see also In re Fritch, 972 F.2d 1260, 1264– 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). When considering the inferences and creative steps that one of ordinary skill in the art would have made, we find that person would have increased the number of lens assemblies and the actuators to move these assemblies in order to obtain a zoom function, based on the combined teaching of the claim of the co-pending application and the Appeal 2019-003971 Application 14/987,762 6 cited prior art references, for the reasons articulated by Examiner (see generally, Final Act. and Ans.). We thus agree with the Examiner that Appellant has not adequately explained any patentable distinction. Accordingly, we affirm the Examiner’s provisional rejection of claims 1–6, 9–14, and 17–20, 22, and 23 on the grounds of non-statutory double patenting for the reasons set forth in the Answer. Rejection under 35 U.S.C. § 112(b) The Examiner finds the limitations “to translate” in claims 22 and 23 indefinite under 35 U.S.C. § 112(b). This rejection is reversed for the same reasons as the rejection of claim 23 in co-pending Appeal 2019–003878 of Application 14/970,538. The Specification description clearly shows that the dual meaning ascribed to this term by the Examiner is unreasonable (Spec. ¶ 11, Figs. 5 and 6; Appeal Br. 9). In light of the Specification, it is clear that “the translation element” is itself an element which translates/moves. 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 claims 22 and 23 as being indefinite. Rejection under 35 U.S.C. § 102 by Gutierrez The Examiner finds that claim 23 encompasses the teachings of Gutierrez (Final Act. 12–15; Ans. 26–31). Appellant’s mere reliance on the illustrated invention of Gutierrez’s Figure 5 to distinguish the claim does not take into account the invention disclosed in Gutierrez’s text portions cited by Appeal 2019-003971 Application 14/987,762 7 the Examiner (Ans. 27–30; Gutierrez, e.g., ¶¶ 24, 47, 49, 56). Thus, this rejection is affirmed for substantially the same reasons as the similar § 102 rejection of claims 8, 11, and 23 in co-pending Appeal 2019-003878 of Application 14/970,538. Rejection under 35 U.S.C. § 103 over Subramanian and Lipson The Examiner rejected claim 1 as being unpatentable over Subramanian in view of Lipson (Final Act. 21–25), determining, under the broadest reasonable interpretation, that the claim limitation “‘translate along a first direction’ includes all methods of achieving such a translation” can include partial movements in the x, y, and z directions, as Subramanian’s translation does, including rotational movement (Ans. 15). This rejection is reversed for substantially the same reasons as the rejection of claims 1–4, 6– 14, 17–20, 22, and 23 were in co-pending appeal 2019-003878 for Application 14/970,538. That is, after considering Appellant’s Briefs, the Examiner’s Answer, the cited teachings of the applied prior art, and claim 1 as a whole, we determine that the Examiner erred in construing the claim term “translate along a first direction” to encompass the rotational movement through multiple directions that Subramanian discloses. Accordingly, we reverse the § 103 rejection of claim 1 over Subramanian in view of Lipson.3 The rejection for claims 2–6, 9–14, 17–20, 22, and 23 are likewise reversed for the same reason. 3 While Gutierrez, as applied to claim 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 on the issues and decides those issues based on facts and arguments presented by the involved parties. See Ex Appeal 2019-003971 Application 14/987,762 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 9–14, 17– 20, 22, 23 Nonstatutory Double Patenting 1–6, 9–14, 17– 20, 22, 23 22, 23 112 Indefiniteness 22, 23 23 102 Gutierrez 23 1–4, 9–14, 18– 20, 22, 23 103 Subramanian, Lipson 1–4, 9– 14, 18– 20, 22, 23 5, 17 103 Subramanian, Lipson, Ichikawa 5, 17 6 103 Subramanian, Lipson, Ichikawa, Gutierrez ’081 6 Overall Outcome 1–6, 9–14, 17– 20, 22, 23 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 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.