Ex parte Ackley

Board of Patent Appeals and Interferences

May 17, 2001

08624173 (B.P.A.I. May. 17, 2001)

Application for patent filed March 29, 1996, entitled1
"High Resolution Laser Imager For Low Contrast Symbology."
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
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Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte H. SPRAGUE ACKLEY

Appeal No. 1999-0236
Application 08/624,1731

ON BRIEF

Before STONER, Chief Administrative Patent Judge, and
JERRY SMITH and BARRETT, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-0236
Application 08/624,173
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 2, 4-6, 8-16, 18, and 19.
Claims 3, 7, and 17 have been canceled.
We reverse.
BACKGROUND
The invention relates to a method and device for imaging
low contrast symbols. It was known to form two-dimensional
bar code symbols directly onto the ceramic or plastic package
of electronic components by laser etching or other precision
machining processes. A drawback of etched or machined symbols
is that they have very low contrast because there is little
color difference between the characters and the uncut surface
and, to compound this problem, electronic components often
have a dull black finish that tends to obscure the symbol
characters. As a result, symbols are difficult to read.
In Appellant's invention, a pair of laser diodes 34 on
the scanner 10 are oriented at an angle so they produce beams
that intersect at a point directly in front of a window 24 and
within the field of view of a CCD element 36. The operator
may pull the trigger 14 to a first position for focusing,
which illuminates the laser diodes 34 at a first (or lower)
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Application 08/624,173
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intensity level. The crossed beams enable the operator to
position the scanner 10 until the intersection point of the
beams coincides with the bar code symbol 18. Then the
operator pulls the trigger 14 to illuminate the diodes 34 at a
second (or higher) intensity level. This higher intensity
level, coupled with the intersection of the beams, results in
the symbol being brightly illuminated so that a high
resolution image of the symbol 18 can be reflected onto the
electro-optical element 36 to be decoded. The use of a low
intensity level for focusing decreases the power consumption.
Claim 6 is reproduced below.
6. A device for imaging low contrast symbols
comprising:
a housing;
an electro-optical element disposed within said
housing and visible through an opening in said housing;
and
means for illuminating a singular point within a
field of view of said electro-optical element, said
illuminating means providing light to said
electro-optical element that has reflected off a symbol
positioned at said point, said illuminating means further
comprising first means for illuminating said point to
focus said electro-optical element on said symbol with
said light at a first intensity level, and second means
for illuminating said point with said light at a second
intensity level to permit scanning of said symbol by the
electro-optical element.
Appeal No. 1999-0236
Application 08/624,173
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THE PRIOR ART
The Examiner relies on the following prior art:
Honda 5,463,213 October 31, 1995
Hanson 5,468,950 November 21, 1995
Sherman 5,502,297 March 26, 1996
Sherman discloses a handheld bar code scanner which
reduces electrical power consumption during periods of nonuse
while maintaining the scanner immediately ready for use. The
scanner has a light emitting diode (LED) source 80 of a series
of light pulses having a certain duty cycle, an optical system
to transmit the pulses in a predetermined direction, and a
circuit to detect any light pulses reflected from the surface.
One of the greatest power consuming elements in a handheld bar
code scanner is the illumination beam source. The
illumination beam is only needed when the scanner is
sufficiently close to a surface which may carry a bar code
symbol that it can be used. Sherman discloses detecting the
presence of a surface by sensing reflections from the surface
and changing between a normal operating mode and a standby
(low power) mode. In normal operating mode, the LED 80 is
pulsed (e.g., chopped on and off at a 40 kHz rate) at a peak
current of up to 80 mA with a 50% duty cycle (col. 4,
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Application 08/624,173
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lines 21-24 and 28-30; col. 25, lines 59-62). In standby (low
power) mode, the LED is chopped with the same amplitude and
on-time pulse width as during normal operation, but with a
0.8% duty cycle (col. 4, lines 24-27; col. 25, lines 64-67),
which reduces the average LED current by over 98% (col. 15,
lines 22-23). If no reflection has been detected recently,
the scanner goes into a low-power mode in which the LED 80 is
pulsed at a very low duty cycle, reducing the power
consumption to a small fraction of its operating value, and as
soon as some reflection of light is detected, the circuitry
switches to the operational mode and the modulation duty cycle
of the LED 80 increases to 50% (col. 11, line 67 to col. 12,
line 7). Sherman discloses the scanner as a wand, although it
could take other forms (col. 2, lines 47-50). Although
figure 1 shows the wand at a distance from the surface and
projecting a light beam 20, the wand is described as having a
translucent window used to contact a surface upon which the
bar code symbol is printed and through which the beam of
light 20 is transmitted and received (col. 3, lines 25-29).
Honda discloses a code mark (bar code) reader. An
infrared camera 6 is mounted in a focus adjustable manner
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Application 08/624,173
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above a stage 1 on which an object to be read is placed
(abstract). Two laser beams irradiators 8, 8' are disposed on
the side of the camera to face obliquely downwards such that
one laser beam provides a spot of light elongated lengthwise
(vertically) and the other laser beam provides a spot of light
elongated widthwise (horizontally), and that these two light
spots intersect with each other in a crisscross at the
position coincident with the focus of the camera (abstract;
col. 7, lines 32-45). A plurality of illumination blocks 10,
each equipped with infrared LEDs 9, are disposed around the
camera to illuminate the object holding stage, the angle and
brightness of the illumination blocks being adjustable
(abstract; col. 7, lines 46-60).
Hanson discloses a method and apparatus for reading
optical information over a range of distances. The apparatus
has a plurality of LED pairs, each of which emits light at a
discrete wavelength to illuminate the object, which are
sequentially turned on and off (col. 3, line 65 to col. 4,
line 28). The reflected image produced by each wavelength of
light is incident on the receiving plane 24 of a
photosensitive array 22, which produces a signal corresponding
Appeal No. 1999-0236
Application 08/624,173
In the first Office action (Paper No. 3), the Examiner2
rejected claims 1-17 "under 35 U.S.C. 103(a) as being
unpatentable over the prior art cited herewith in view of that
cited by the applicant" (Paper No. 3, p. 2). The final
rejection (Paper No. 5) maintained the rejection in the first
Office action and added Sherman. The following patents were
mentioned in the first Office action, but not in the
examiner's answer:
Howard 3,169,186 February 9, 1965
Taniguchi 4,677,285 June 30, 1987
Droge 5,291,028 March 1, 1994
Nakazawa 5,340,982 August 23, 1994
Bobba et al. 5,475,207 December 12, 1995
Marchi 5,483,051 January 9, 1996
Arackellian et al. 5,504,367 April 2, 1996
(filed March 21, 1994)
Because these references are not mentioned in the examiner's
answer, we presume the rejection over these references has
been withdrawn. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957) (rejection not referred to in the examiner's answer is
assumed to have been withdrawn).
The examiner's answer appears to raise a new ground of
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to the image (col. 4, lines 36-42). Different wavelengths
will produce a focus at different distances. An image of the
optically readable image that is in proper focus will properly
decode, while out-of-focus images will not properly decode.
THE REJECTION
Claims 1, 2, 4-6, 8-16, 18, and 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Sherman, Hanson,
and Honda. The Examiner finds that Sherman discloses the2
Appeal No. 1999-0236
Application 08/624,173
rejection since the Examiner's reasoning was not presented
earlier. New grounds of rejection in the examiner's answer
were prohibited at the time the examiner's answer was entered.
See 37 CFR § 1.193(a)(2) (amended October 10, 1997). In view
of the age of the appeal, we decide the appeal rather than
remanding.
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subject matter of claim 6 except for the use of intersecting
beams from at least two laser diodes, which the Examiner
concludes is not recited. The Examiner finds that Honda and
Hanson teach intersecting beams and concludes (EA6): "One of
ordinary skill in the art when considering the problem of
focusing plural illumination [?] would have first looked to
the prior art and found that Honda and Hanson provide
solutions that would have been obvious to employ with the
Sherman system concept at the time the invention was made."
We refer to the examiner's answer (Paper No. 11) (pages
referred to as "EA__") for a statement of the Examiner's
position, and to the appeal brief (Paper No. 10) (pages
referred to as "Br__") and the reply brief (Paper No. 12)
(pages referred to as "RBr__") for Appellant's arguments
thereagainst.
OPINION
Grouping of claims - claim 1 as representative claim
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Application 08/624,173
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The claims are grouped to stand or fall together (Br4).
The Examiner selects claim 6 as the representative claim (EA4)
and later refers to "[c]laim 6 the sole claim at issue . . ."
(EA7). Appellant argues (RBr3-4):
[C]ontrary to the Examiner's assertion, Claim 6 is not
the "sole claim at issue" on this appeal. The Appellant
has appealed the final rejection of Claims 1, 2, 4-6,
8-16, 18 and 19. According to 37 C.F.R. 1.192(b)(7),
"[f]or each ground of rejection . . . the Board shall
select a single claim from the group and shall decide the
appeal as to the ground of rejection on the basis of that
claim alone" (emphasis added). The Examiner can not
unilaterally decide which claim of a rejected group shall
form the basis for deciding the appeal.
There is nothing wrong with an examiner choosing which
claim from the group to address in the examiner's answer.
Normally, an appellant has already identified a representative
claim in the brief. However, the Board is not bound by an
examiner's (or an appellant's) selection of a representative
claim. Here, the Examiner selected claim 6 as the broadest
claim because of his interpretation (EA6-7) that claim 6 does
not have the limitation of "at least two laser diodes," as
recited in independent claims 1 and 15, or "a plurality of
laser emitters," as recited in independent claim 18. We
conclude that the "illuminating means" in claim 6 must be
construed to cover at least two laser diodes, as discussed
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Application 08/624,173
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infra. Since it is easier to discuss the structure of two
laser diodes, we choose claim 1 as representative. Claims 6,
15, and 18 contain similar limitations. This does not affect
the Examiner's rationale.
Timeliness of examiner's answer is not reviewable
Appellant argues (RBr1) that the examiner's answer was
not timely filed within two months of the brief pursuant to
Manual of Patent Examining Procedure (MPEP) § 1208 and should
not be given consideration. Appellant argues that the
Examiner's delay serves to prejudice Appellant by
unnecessarily prolonging prosecution.
The Board's jurisdiction is limited to those matters
involving the rejection of claims. See In re Hengehold,
440 F.2d 1395, 1404, 169 USPQ 473, 480 (CCPA 1971).
Accordingly, we do not decide whether to strike the examiner's
answer as untimely. Nevertheless, we note that the two-month
period in MPEP § 1208 is procedural in nature and is not a
rule. Moreover, it is unlikely that an examiner's answer
would ever be stricken as untimely because otherwise there
would be no response to the brief. The timeliness of an
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Application 08/624,173
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examiner's action is an element of the examiner's performance
plan.
Claim 6 interpretation
Claim 6 is drafted in mean-plus-function format as
permitted under 35 U.S.C. § 112, sixth paragraph. Appellant
argues that the Examiner erred in stating that "[c]laim 6 the
sole claim at issue does not recite [']at least two laser
diodes'" (EA7). Appellant argues (RBr4) that the "means for
illuminating a singular point within a field of view" (the
"illumination means") must be interpreted in light of the
structure disclosed in the specification to include at least
"a pair of laser diodes 34 . . . that . . . produce respective
beams that converge inward to intersect at a point"
(specification, p. 6, lines 16-17). We agree with this
interpretation. Thus, although the Examiner is correct that
claim 6 does not literally recite two laser diodes, Appellant
is correct that the "illumination means" must be construed to
cover two laser diodes and equivalents thereof. Nevertheless,
for purposes of discussion, we rely on claim 1.
Obviousness
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Application 08/624,173
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Appellant argues that "none of the references suggest or
disclose 'exciting said at least two laser diodes at a first
intensity level to properly focus the electro-optical element
on the symbol and at a second intensity level to illuminate
the symbol sufficiently for scanning by the electro-optical
element,' as recited in independent Claims 1 and 18" (Br6).
Claims 6 and 15 include similar language. Appellant argues
that Sherman alternates the LED between "on" and "off" states
during the duty cycles and, when "on," only one intensity
level is disclosed for this beam, and, when "off," it does not
produce a beam that can be used for either focusing or
illuminating the bar code (Br12). Appellant argues that even
if the "off" portion of the duty cycle is construed as a
second intensity level, Sherman does not perform focusing
during this portion of the duty cycle (Br11-12). Appellant
argues that Sherman is not concerned with focusing at all. It
is argued (Br12) that the translucent window 38 of the
scanning wand is in contact with the surface (col. 3,
lines 26-28) and, thus, the wand is always in focus when
contact is made with the surface.
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The only relevant language in the rejection about
focusing is the following (EA5-6): "In col. 12, line 5 of
Sherman when the light of Sherman at low intensity, low duty
cycle has been properly focused on the symbol bearing surface
by the operator observing the held scanner 10 illumination (as
clearly shown in fig. 1 of Sherman) the high duty cycle
modulator of Sherman (appellant[']s second means) increases
the amount of light or the 'intensity' outputted form [sic,
from] the Sherman illuminator."
We agree with Appellant that there is no express or
implied teaching or suggestion of any focusing in Sherman.
The scanning wand in Sherman is always in focus when the
window is in contact with the surface. The Examiner's
reasoning is erroneous. Sherman uses the same amplitude and
on-time pulse width signal in both the normal operational and
the standby (low power) modes (col. 4, approx. lines 22-28);
only the duty cycle (the ratio of the on time to the total
time) is changed. Thus, Sherman employs light of the same
"intensity," i.e., amplitude, but a different duration. This
does not meet the claim requirement for two different
intensity levels.
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Sherman also does not disclose two laser diodes.
Honda and Hanson do not cure the deficiencies of Sherman.
Honda discloses the use of two intersecting beams to indicate
the proper focus for the reading camera. This is the same
purpose as the laser diodes at a low intensity level for
focusing in the claims. However, the laser beam irradiators
in Honda are used only for focusing and not to illuminate the
symbol sufficiently for scanning. The adjustable infrared
diodes 9 in the illumination blocks 10 are used to illuminate
the symbol for scanning. The laser beam irradiators operate
only at one intensity level. Hanson discloses a pair of LEDs
that is used for scanning. This is the same purpose as the
laser diodes at a high intensity level for scanning in the
claims. However, a single pair of LEDs is not used for
focusing at a fixed distance. The plurality of pairs of LEDs
are used to focus at different distances. The LEDs operate at
only one intensity level. Thus, while Honda and Hanson
disclose using a pair of LEDs for two different purposes,
focusing and scanning, neither Honda or Hanson discloses
operating the LEDS at a low intensity for focusing and at a
high intensity for scanning the symbol. Moreover, the
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Application 08/624,173
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Examiner has provided no cogent reasons why (or how) one of
ordinary skill in the art would have been led to modify
Sherman to incorporate the teachings of Honda and Hanson.
The Examiner stated (EA8): "If the 'intensity levels'
are not controlled by duty cycle or scanner pulsing then the
claims are insufficiently disclosed since no other structure
or circuity for intensity control has been discussed in the
specification or shown in the drawings." We agree with
Appellant's arguments (RBr1-2) that the specification clearly
discloses that the two intensity levels are controlled by a
trigger which is placed in one of three different positions:
off, low intensity, and high intensity. Thus, a simple switch
is all that is needed to perform the control.
The Examiner has also stated (EA9): "It is rather the
appellant who has used 'hindsight' when considering the
problems of producing a scanner of two scanning levels."
"Hindsight" does not seem to be the right choice of words;
perhaps the Examiner meant to say "routine skill in the art."
In any case, the Examiner fails to show that the references
would have suggested the claimed subject matter to one of
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ordinary skill in the art and, so, there is no "hindsight" (to
use the Examiner's word).
For the reasons discussed above, the Examiner has failed
to establish a prima facie case of obviousness. The rejection
of claims 1, 2, 4-6, 8-16, 18, and 19 is reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 1999-0236
Application 08/624,173
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Brian M. Berliner, Esq.
O'MELVENY & MYERS LLP
400 South Hope Street
Los Angeles, CA 90071-2899