Ex Parte Chin et al

Board of Patent Appeals and Interferences

Jul 19, 2010

11287966 (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YEE LOONG CHIN and JIIN CHEANG CHEONG
____________

Appeal 2009-004767
Application 11/287,966
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
CARLA M. KRIVAK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Appeal Brief (filed June 4, 2008), the Answer
(mailed July 24, 2008), and the Reply Brief (filed September 24, 2008) for
the respective details. Only those arguments actually made by Appellants
have been considered in this decision. Arguments which Appellants could
have made but chose not to make in the Briefs have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to an optical unit including an optical
emitter receiving an optical emitter current, an optical sensor receiving an
optical sensor current and light from the optical emitter, and an optical code
scale. In response to the received optical sensor current and light, the optical
sensor outputs a signal indicating relative movement between the optical
unit and the optical code scale. In response to the comparison of the optical
sensor current to a reference value indicating a difference, an optical sensor
current detector regulates the current supplied to the optical emitter. (See
generally Spec. ¶ [0008]).
Claim 1 is illustrative of the invention and reads as follows:
1. An optical encoder, comprising:
an optical code scale; and
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an optical unit, comprising,
an optical emitter receiving an optical emitter current and in
response thereto providing light to the code scale;
an optical sensor receiving an optical sensor current and the
light from the code scale and in response thereto outputting at least
one signal indicating relative movement between the optical sensor
and the code scale; and
an optical sensor current detector comparing the optical sensor
current to a reference value, and in response to the optical sensor
current being different from the reference value, outputting an optical
sensor current detector signal for regulating the optical emitter current
supplied to the optical emitter.

The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:
Van Antwerp US 5,015,836 May 14, 1991
Wade US 5,693,931 Dec. 2, 1997
Rajaiah US 2005/0199777 A1 Sep. 15, 2005
Claims 1-3, 8, 10-12, 16-18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Wade.
Claims 4, 9, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wade in view of Rajaiah.
Claims 5-7, 14, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wade in view of Rajaiah and Van Antwerp.

ISSUE
The pivotal issue before us is whether the Examiner erred in
determining that Wade discloses the comparison of an optical current sensor
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value with a reference value and outputting an optical emitter current
regulating signal if a difference exists as claimed.

ANALYSIS
35 U.S.C. § 102(b) Rejection
Appellants’ arguments in response to the Examiner’s anticipation
rejection based on Wade, of each of the appealed independent claims 1, 8,
and 11, assert that the Examiner has not shown how each of the claimed
features is present in the disclosure of Wade. Appellants’ arguments focus
on the contention that, in contrast to the requirements of independent claims
1, 8, and 11, Wade does not disclose comparing an optical sensor current
value to a reference value and outputting an optical emitter current
regulating signal if a difference exists. According to Appellants (App. Br. 5-
9; Reply Br. 5), Wade, rather than disclosing the comparing of an optical
sensor current value to a reference value, actually discloses the comparing of
the combined sum at summing junction 49 of the current from the optical
sensor 43 and the optical emitter 42 with a reference value 47 (Fig. 3; col. 5,
l. 45–col. 6, l. 66).
We agree with Appellants. The specific language of independent
claims 1, 8, and 11 requires that the optical sensor current, by itself and not
summed with something else, be compared with a reference value, a feature
simply not disclosed in Wade. While the Examiner, in the responsive
arguments section of the Answer (Ans. 11-12), suggests that Wade discloses
(Fig. 4; col. 7, ll. 1-50) that it is only the change in the optical sensor current
which is contributing to the change in value at the summing junction (49,
Fig. 3; A, Fig. 4), we find no support in the cited portion of Wade, or
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elsewhere, for this conclusion. Further, to whatever extent the Examiner’s
suggestion may have merit, it does not change the fact that Wade discloses
only the comparison of a summed optical emitter and optical sensor current
value with a reference value, and not an optical sensor current value, by
itself, with a reference value.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Wade, we do not sustain the Examiner’s 35
U.S.C. § 102(b) rejection of appealed independent claims 1, 8, and 11, nor of
claims 2, 3, 10, 12, 16-18, and 20 dependent thereon.

35 U.S.C. § 103(a) Rejections
We also do not sustain the Examiner’s obviousness rejections of
dependent claims 4-7, 9, 13-15, and 19 based on the separate combinations
of Rajaiah and Van Antwerp with Wade. We find nothing in the disclosures
of Rajaiah and Van Antwerp, taken individually or collectively, which
overcomes the innate deficiencies of Wade discussed supra.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1-3, 8, 10-12, 16-18, and 20 for
anticipation under 35 U.S.C. § 102(b), and in rejecting claims 4-7, 9, 13-15,
and 19 for obviousness under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s decision rejecting claims 1-3, 8, 10-12, 16-18, and 20
under 35 U.S.C. § 102(b) and claims 4-7, 9, 13-15, and 19 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

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Kathy Manke
Avago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525