Ex Parte BOHN

Board of Patent Appeals and Interferences

Sep 30, 2004

09220736 (B.P.A.I. Sep. 30, 2004)

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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today was not written for publication and is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DAVID D. BOHN

Appeal No. 2004-2142
Application No. 09/220,736

ON BRIEF

Before HAIRSTON, KRASS and SAADAT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-17.
The invention pertains to hand-held optical scanners. In
particular, the invention seeks to remedy the problem of non-
uniformly illuminating features on the object being scanned by
the use of an occluding element positioned between the lens and
the illuminated area on the object so that the occluding element
Appeal No. 2004-2142
Application No. 09/220,736
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blocks a predetermined amount of light from a brightly
illuminated region in the illuminated area but does not
substantially block light from a less brightly illuminated region
in the illuminated area.
Representative independent claim 1 is reproduced as follows:
1. An optical system for forming an image of at least a
portion of an illuminated area on an object, the illuminated area
being characterized by at least one brightly illuminated region
and at least one less brightly illuminated region, comprising:
a lens positioned a spaced distance from the illuminated
area on the object, said lens having an image side focal plane;
an aperture stop positioned so that it is substantially co-
planar with the image side focal plane of said lens; and
an occluding element positioned between said lens and the
illuminated area on the object so that said occluding element
blocks a predetermined amount of light from the brightly
illuminated region but does not substantially block light from
the less brightly illuminated region.
The examiner relies on the following reference:
Thomson 3,825,747 Jul. 23, 1974
Claims 1-3 and 7-9 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Thomson.
Claims 4-6 and 10-17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Thomson.
Appeal No. 2004-2142
Application No. 09/220,736
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Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
A rejection for anticipation under section 102 requires that
the four corners of a single prior art document describe every
element of the claimed invention, either expressly or inherently,
such that a person of ordinary skill in the art could practice
the invention without undue experimentation. In re Paulsen, 30
F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
The examiner sets forth, at page 4 of the answer, the
correspondence of the claimed elements to elements disclosed in
the Thomson reference. The examiner specifically equates the
claimed “object” with item 10 in Thomson. It is clear from
Thomson, that element 10 depicted therein is a light source and
is most definitely not the object to be scanned. Accordingly,
the examiner’s whole premise about how the elements of Thomson
are alleged to meet the instant claim language is flawed.
Since the examiner has clearly not established a prima facie
case of anticipation, we will not sustain the rejection of claims
1-3 and 7-9 under 35 U.S.C. § 102(b).
Moreover, we also will not sustain the rejection of claims
4-6 and 10-17 under 35 U.S.C. § 103 because we find no reason
Appeal No. 2004-2142
Application No. 09/220,736
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that it would have been obvious to place the claimed elements in
the specific arrangement recited in the instant claims, i.e.,
with a lens positioned a spaced distance from an illuminated area
on the object, an aperture stop positioned so that it is
substantially co-planar with the image side focal plane of the
lens, and an occluding element positioned between the lens and
the illuminated area on the object so that the occluding element
blocks a predetermined amount of light from the brightly
illuminated region but does not substantially block light from
the less brightly illuminated region.
Accordingly, the examiner’s decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
EK/RWK
Appeal No. 2004-2142
Application No. 09/220,736
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HEWLETT PACKARD COMPANY
P.O. BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400