Ex Parte Alves et al

Board of Patent Appeals and Interferences

Mar 12, 2004

09152016 (B.P.A.I. Mar. 12, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENNETH W. ALVES and THOMAS J. BROBST
____________
Appeal No. 2003-1486
Application No. 09/152,016
____________
HEARD: January 22, 2004
____________
Before TORCZON, GROSS, and BLANKENSHIP, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 4 through 11 and 13 through 18, which are all
of the claims pending in this application.
Appellants' invention relates to a scanning apparatus with a
rotatable mirrored surface and a detector sized and positioned to
be fully illuminated in any rotation of the mirrored surface
without focusing the directed reflected light. Claim 4 is
illustrative of the claimed invention, and it reads as follows:
4. An apparatus for scanning an object comprising:
Appeal No. 2003-1486
Application No. 09/152,016
2
means for generating a light beam;
a rotatable mirrored surface positioned to directly receive
the generated light beam from the light generating means and
direct the generated light beam towards the object and the
mirrored surface positioned to directly receive light reflected
by the object; and
means for detecting light positioned to directly receive the
directed reflected light from the mirrored surface; and
wherein as the rotatable mirrored surface rotates a cross
section of the rotatable mirrored surface changes and the
detector is sized and positioned to be fully illuminated in any
rotation of the mirrored surface without focusing the directed
reflected light when light reflects from the object.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Frontino 5,010,242 Apr. 23, 1991
Claims 4 through 11 and 13 through 18 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 4, 6 through 9, 11, 13, 14, and 16 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Frontino.
Claims 5, 10, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Frontino.
Reference is made to the Examiner's Answer (Paper No. 23,
mailed November 19, 2002) for the examiner's complete reasoning
in support of the rejections, and to appellants' Brief (Paper No.
Appeal No. 2003-1486
Application No. 09/152,016
3
21, filed August 5, 2002) and Reply Brief (Paper No. 24, filed
January 21, 2003) for appellants' arguments thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellants and the examiner. As a consequence of our review, we
will reverse.
The examiner contends (Answer, pages 3-4) that
[t]he recitation that light is not focussed renders the
term "fully" [in the phrase "fully illuminated"]
indefinite. Figures 1 and 3 appear to show a lens
integrated with the detector package. If no lens is
integrated with the detector package, there is no
physical basis for the phantom rays 203 in figure 3,
and the corresponding term "fully."
The examiner explains (Answer, page 8) that he is reading "fully
illuminated" in the last paragraph of claim 4 as meaning that the
detector "receive[s] 'all illumination' or the 'total
illumination' or the 'full illumination.'" He continues,
"Clearly, all of the diffused light is not incident on the
detector, and it is not fully illuminated by the diffused light."
However, that the detector is "fully illuminated" merely requires
that every portion of the detector be illuminated, not that all
of the light be incident on the detector. A small fraction of
the light could fully illuminate the detector. Accordingly, we
Appeal No. 2003-1486
Application No. 09/152,016
4
will not sustain the rejection of claim 4 and its dependents,
claims 5 through 8 under 35 U.S.C. § 112, second paragraph.
Additionally, as independent claims 9 and 16 include the same
language as claim 4, we will not sustain the rejection under the
second paragraph of 35 U.S.C. § 112 of claims 9, 16, and their
dependents, claims 10, 11, 13 through 15, 17, and 18.
Regarding the anticipation rejection of claims 4, 6 through
9, 11, 13, 14, and 16 over Frontino, appellants argue that
Frontino in Figure 1 includes a mirror 26 with a concave face,
which Frontino discloses (column 4, lines 50-52) "focuses and
reflects this reflected light to an optical signal receiving
means 34." Frontino also references scanning mirror 26 in the
discussions of Figures 3 through 7. Therefore, we agree with
appellants that Frontino, at least in the embodiments of Figures
3 through 7, focuses the light reflected from the object, and
thereby fails to satisfy the claim limitation of "without
focusing the directed reflected light," which appears in each of
independent claims 4, 9, and 16. In the discussion of Figures 8
and 9, Frontino uses a reflecting polygon 26, instead of mirror
26, and lacks any disclosure as to whether the polygon focuses.
Frontino is thus ambiguous as to whether the embodiments of
Figures 8 and 9 focus the reflected light, as required by the
Appeal No. 2003-1486
Application No. 09/152,016
5
claims. Further, Frontino discloses nothing about the detector
for the embodiments of Figures 8 and 9, so it is unclear if the
detector is fully illuminated, as required by the claims. Since
Frontino fails to satisfy each and every limitation, Frontino
cannot anticipate the claims. Accordingly, we will not sustain
the anticipation rejection of claims 4, 6 through 9, 11, 13, 14,
and 16.
As to the obviousness rejection of claims 5, 10, 15, 17, and
18, the examiner relies solely on Frontino, which we have found
supra to be lacking as to the limitation of "without focusing."
Since the examiner has provided no further art nor any convincing
line of reasoning why it would have been obvious to modify
Frontino to overcome the above-noted deficiency, we cannot
sustain the obviousness rejection of claims 5, 10, 15, 17, and
18.
Appeal No. 2003-1486
Application No. 09/152,016
6
CONCLUSION
The decision of the examiner rejecting claims 4 through 11
and 13 through 18 under 35 U.S.C. § 112, second paragraph,
claims 4, 6 through 9, 11, 13, 14, and 16 under 35 U.S.C.
§ 102(b), and claims 5, 10, 15, 17, and 18 under 35 U.S.C. § 103
is reversed.
REVERSED
RICHARD TORCZON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
AG/RWK
Appeal No. 2003-1486
Application No. 09/152,016
7
VOLPE AND KOENIG, P.C.
UNITED PLAZA, SUITE 1600
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103