Ex Parte Choe

Patent Trial and Appeal Board

Feb 23, 2016

12483129 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/483, 129 06/11/2009
84250 7590 02/25/2016
LANDO & ANASTASI, LLP
R2013
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
FIRST NAMED INVENTOR
Howard C. Choe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
R204 l-705810(08El 67) 8581
EXAMINER
BAILEY, FREDERICK D
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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):
DOCKETING@LALaw.COM
CKent@LALaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOW ARD C. CHOE 1
Appeal2014-003337
Application 12/483, 129
Technology Center 2400
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8, 10, 11, and 15-20. Claims 9 and 12-14 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Raytheon Company as the real party in interest. App.
Br. 4.
Appeal2014-003337
Application 12/483, 129
INVENTION
Appellant's invention relates to an optical instrument including a
hand-held housing that houses multiple optical devices and an eyepiece.
Abstract. Claim 1, reproduced below with key limitations emphasized, is
illustrative:
1. An optical instrument comprising:
a hand-held housing;
three video cameras configured in the hand-held housing that are
operable to generate three images on an eyepiece configured in
the housing, the three images contiguously aligned with one
another along their sides to form a panoramic image on the
eyepiece, one of the three
video cameras being a central video camera centrally disposed
between the two other video cameras;
an objective lens optically coupled to the central video camera;
a plurality of lenses optically coupling the objective lens to the
eyepiece to form a first optical path between the objective lens
and the eyepiece;
two cooperating movable mirrors selectively movable into and
out of the first optical path, the two cooperating movable mirrors
including a first movable mirror operable to selectively reflect
light from the objective lens to the central video camera while in
a first position in the optical path and allow light from the
objective lens to proceed along the first optical path to the
eyepiece while in a second position out of the optical path, and a
second movable mirror operable to reflect an optical signal from
a display to the eyepiece while in the first position and allow light
to proceed from the objective lens along the first optical path to
the eyepiece while in the second position, the first and second
movable mirrors being cooperatively movable together such that
the first movable mirror is in the first position when the second
movable mirror is in the first position, and the first movable
mirror is in the second position when the second movable mirror
is in the second position;
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Application 12/483, 129
an image intensifying device optically coupled to the objective
lens by a third movable mirror, the third movable mirror operable
to reflect light from the objective lens to the image intensifying
device while in a third position and allow light to pass from the
objective lens to the central video camera while in a fourth
position; and
an image processing device coupled to the display, to the three
video cameras, and to the image intensifying device, the imaging
processing device configured to receive and process image data
from the two other video cameras and at least one of the central
video camera and the image intensifYing device to produce the
optical signal, and to provide the optical signal to the display;
wherein when the first and second movable mirrors are in the
first position, the eyepiece receives the optical signal from the
display, and when the first and second movable mirrors are in the
second position, the eyepiece receives the light from the
objective lens.
REJECTIONS
The Examiner rejects claims 1 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Nose (US 200710146530 Al;
published June 28, 2007), Zhang (US 2002/0030163 Al; published Mar. 14,
2002), Lanni et al. (US 5,801,881; issued Sept. 1, 1998), Shono (US
2001/0017661 Al; published Aug. 30, 2001), Hansen (US 5,035,472; issued
July 30, 1991), Dejima et al. (US 2004/0131306 Al; published July 8,
2004), and David et al. (US 2006/0060758 Al; published Mar. 23, 2006).
Final Act. 5-17.
The Examiner rejects claims 2 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Nose, Zhang, Edwards (US
2004/0156020 Al; published Aug. 12, 2004), and Ohtake (US 5,666,576;
issued Sept. 9, 1997). Final Act. 17-20.
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Application 12/483, 129
The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Edwards, Ohtake, and
Nalwa (US 6,195,204 Bl; issued Feb. 27, 2001). Final Act. 20-21.
The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Edwards, Ohtake, and
Hansen. Id. at 21-22.
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Edwards, Ohtake,
Hansen, and Filipovich (US 2004/0094700 Al; published May 20, 2004).
Final Act. 23.
The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Edwards, Ohtake, Lanni,
and Shono. Final Act. 23-26.
The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Edwards, Ohtake, and
Trajkovic (US 2002/0168091 Al; published Nov. 14, 2002). Final Act. 26-
27.
The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Edwards, Ohtake, and
Deng et al. (US 2006/0187234 Al; published Aug. 24, 2006). Final Act. 27-
28.
The Examiner rejects claim 11under35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Lanni, Shono, Hansen,
Dejima, David, and Nalwa. Final Act. 28-29.
The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Lanni, Shono, Hansen,
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Application 12/483, 129
Dejima, David, and Trajkovic. Final Act. 29-30.
The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Lanni, Shono, Hansen,
Dejima, David, and Deng. Final Act. 30-31.
The Examiner rejects claims 17 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Nose, Zhang, Lanni, Shono,
Hansen, Dejima, David, Edwards, and Ohtake. Final Act. 31-33.
The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nose, Zhang, Edwards, Ohtake, and
Wessendorf et al. (US 8,000,804 B 1; issued Aug. 16, 2011 ). Final Act. 33-
34.
APPELLANT'S CONTENTIONS
With respect to the rejection of claim 1, Appellant contends that the
Examiner errs because:
1. The proposed combination of Nose and Zhang is not based on a
proper motivation or suggestion (App. Br. 6-7);
2. The proposed combination of Nose, Zhang, and Lanni is not based on
a proper motivation or suggestion (id. at 8-10);
3. The proposed combination of Nose, Zhang, Lanni, Shono, and Dejima
is not based on a proper motivation or suggestion (id. at 1 O);
4. The proposed combination of Nose, Zhang, Lanni, Shono, and Dejima
does not disclose the claim limitations reciting two movable mirrors in
claim 1 (id. at 11-12); and
5. Hansen does not disclose the limitation reciting "a third movable
mirror operable to reflect light from the objective lens to the image
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intensifying device while in a third position and allow light to pass
from the objective lens to the one video camera while in a fourth
position" (id. at 12-13).
Appellant contends that the Examiner errs in rejecting claim 2 as
obvious because:
6. Edwards does not disclose the recited limitation "the eye tracker
camera coupled to the eyepiece" (id. at 15); and
7. Ohtake does not disclose a target marker that is "proximate the one or
more elements" (id. at 15-16).
Appellant contends that the Examiner errs in rejecting claim 8 as
obvious because:
8. Deng does not disclose "each image having a lateral field-of-view of
at least 45 degrees, the panoramic image having at least a 120 degree
field-of-view" (id. at 25-26).
ANALYSIS
Claims 1, 10, 11, and 15
Appellant's first contention challenges the combination of Nose and
Zhang, arguing that the Examiner does not provide "an objective, technically
sound rationale for modifying Nose, based on Zhang, 'to generate images on
an eyepiece."' Reply 5; see also App. Br. 6-7.
Appellant's arguments do not persuade us of Examiner error. The
Examiner concludes that "it would have been known by one of ordinary skill
in the art (e.g., as evidenced from the teachings of Zhang) to put an imaging
device in a portable housing." Final Act 2 (citing Zhang i-fi-17, 23); Ans. 5.
Moreover, we observe that the photographing apparatus of Nose is "capable
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of making compact a photographing unit and reducing a parallax of a
plurality of photographed images" (Nose i-f 21) and that "various alterations
are possible without departing from the scope of claims" (Nose i-f 79).
This point in Nose is consistent with Appellant's Specification, which
states that "a myriad of changes, variations, alterations, transformations, and
modifications may be suggested to one skilled in the art, and it is intended
that the present disclosure encompass such changes, variations, alterations,
transformations, and modifications as falling within the spirit and scope of
the appended claims." Spec. 12-13. In other words, Nose's wide-angle
photographing apparatus may be used in other imaging systems if the
improvement is not "more than the predictable use of prior art elements
according to their established functions." See KSR Int'! Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007).
We observe that the Examiner articulates how the claimed features are
met by the references' teachings, and we agree with the Examiner's
reasoning and analysis. Final Act 7, 13; Ans. 5. Additionally, we agree with
the Examiner's findings and conclusion that the proposed combination is
based on the predictable use of prior art elements according to their
established functions and, thus, would have been obvious to an artisan of
ordinary skill. Final Act. 2-3. The Examiner further provides a valid
articulated line of reasoning with a rational underpinning to support the
conclusion of obviousness with respect to the proposed combination of Nose
and Zhang. Final Act. 2, 12-13 (citing Zhang i-fi-17, 23); Ans. 5.
For these reasons, we are not persuaded the Examiner errs in
concluding that it would have been obvious to an artisan of ordinary skill to
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modify the teachings of Nose and with the teachings of Zhang in rejecting
claim 1.
In Appellant's second contention, Appellant argues that the
Examiner's stated rationale for modifying the teachings of Nose and Zhang
with the movable mirror disclosed in Lanni -"to prevent the presence of
out of focus luminescent portions in an image"- is unrelated to the movable
mirror in Lanni. App. Br. 9-10; Reply 6. Appellant further argues that the
modification would destroy the purpose of both Nose and Zhang, and alter
the principle of operation of both devices. Id.
Appellant's arguments do not persuade us of Examiner error. In
addition to the rationale that Appellant challenges, the Examiner finds that
an artisan of ordinary skill would have understood that the optical path
changes depending on the position of the mirror. Final Act. 8 (citing Lanni
col. 11, 11. 9-13); Ans. 6. The Examiner also finds that "movable mirrors
have general applications in [a] wide variety of areas and are known to be
used for various purposes," as demonstrated by the teachings in Lanni. Ans.
6-7. Appellant presents no persuasive argument or evidence to rebut those
findings.
Moreover, Appellant's contention does not persuade us that including
the movable mirror of Lanni in the combination of Nose and Zhang would
destroy the purposes of Nose and Zhang or alter their principles of operation.
The test for obviousness is not whether the features of secondary reference
may be bodily incorporated into the structure of the primary reference, but
rather, what the combined teachings of the references would have suggested
to an artisan of ordinary skill. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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We find that the Examiner articulates how the claimed features are
met by the reference teachings, and we agree with the Examiner's reasoning
and analysis. Final Act. 12-13; Ans. 5---6. We also agree with the
Examiner's findings and conclusion that the proposed combination is based
on the predictable use of prior art elements according to their established
functions, and, thus, would have been obvious to an artisan of ordinary skill.
Ans. 6-7. We also find that the Examiner provides a valid articulated line of
reasoning with a rational underpinning to support the conclusion of
obviousness with respect to the proposed combination of Nose, Zhang, and
Lanni. Ans. 6-7.
For these reasons, we are not persuaded that the Examiner errs in
concluding that it would have been obvious to combine the teachings of
Nose, Zhang, and Lanni in rejecting claim 1.
In Appellant's third contention, Appellant argues that the Examiner
errs in modifying the teachings of Nose and Zhang with the movable mirrors
disclosed in Lanni, Shono, and Dejima because "[t]he Office Action refers to
three different references for the limitations of 'two cooperating movable
mirrors ... including a first movable mirror . . . and a second movable
mirror' and fails to set forth a[] reasoned explanation as to how the
completely different elements" identified in the three references could have
been combined to produce the specific arrangement recited in claim 1. App.
Br. 10.
Appellant's arguments are not persuasive of Examiner error. In
addition to the teachings and suggestions cited in the references themselves,
the Examiner finds that the claim limitations "have general applications in
wide variety of areas and are known to be used for various purposes based
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Application 12/483, 129
on the knowledge of one of ordinary skill in the art, and the needed use."
Ans. 8. Appellant presents no persuasive argument or evidence to rebut that
finding. Moreover, Appellant attacks the references individually, even
though the Examiner relies on the combination of references to meet the
claim limitations. See Mouttet, 686 F.3d at 1332.
We find that the Examiner articulates how the claimed features are
met by the reference teachings, and we agree with the Examiner's reasoning
and analysis. Final Act. 9-11; Ans. 7-8. Additionally, we agree with the
Examiner's findings and conclusion that the proposed combination is based
on the predictable use of prior art elements according to their established
functions and thus would have been obvious to an artisan of ordinary skill.
Ans. 8. Lastly, we find that the Examiner provides a valid articulated line of
reasoning with a rational underpinning to support the conclusion of
obviousness with respect to the proposed combination of Nose, Zhang,
Lanni, Shono, and Dejima. Final Act. 13 (citing Shono i-f 4, Dejima i-f 22);
Ans. 7-9.
For these reasons, we are not persuaded that the Examiner errs in
concluding that it would have been obvious to combine the teachings of
Nose, Zhang, Lanni, Shono, and Dejima in rejecting claim 1.
In Appellant's fourth contention, Appellant argues that the
combination of Nose, Zhang, Lanni, Shono, Hansen, Dejima, and David
fails to teach or suggest the three limitations of claim 1 shown in emphasis
above. App. Br. 11. In particular, Appellant argues that it is unclear how
the optical switch of Dejima would be added to "the already highly
convoluted and unclear combination of Nose, Zhang, Lanni, Shono and
Hansen," or how the provision of an optical switch for varying optical path
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Application 12/483, 129
length "in any way is relevant to Appellant's claimed structure." Id. at 12.
Appellant further argues that the Examiner errs by relying on three prior art
references as disclosing the two recited mirrors. Id.
Appellant's arguments are not persuasive because they attack Lanni,
Shono, and Dejima individually, even though the Examiner relies on the
combination of Nose, Zhang, Lanni, Shono, Hansen, Dejima, and David as
teaching or suggesting the recited limitations. See Mouttet, 686 F.3d at
1332.
For these reasons, we are unpersuaded that the Examiner errs in
finding that the combination of Nose, Zhang, Lanni, Shono, Hansen,
Dejima, and David teaches or suggests the three disputed limitations recited
in claim 1.
In Appellant's fifth contention, Appellant argues that Hansen fails to
disclose "a third movable mirror," as recited in claim 1. App. Br. 12-13.
Appellant's arguments again fail because they attack the Hansen reference
individually. See Mouttet, 686 F.3d at 1332. In particular, Appellant's
argument that Hansen discloses beamsplitters, not mirrors, is unpersuasive in
light of the Examiner's findings that Lanni, Shono, and Dejima teach or
suggest movable mirrors. Final Act. 8-9, 11.
For these reasons, we do not find that the Examiner errs in finding that
the combination of Nose, Zhang, Lanni, Shono, Hansen, Dejima, and David
teaches or suggests the recited "third movable mirror" in claim 1.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1. We also sustain the 35 U.S.C. § 103(a) rejection of
independent claim 10, for which Appellant refers to and relies on the
arguments made for claim 1. App. Br. 18-22. We also sustain the
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35 U.S.C. § 103(a) rejections of claims 11 and 15, which depend from claim
10 and for which Appellant makes no arguments other than those made for
claim 10. Id. at 22-23.
Claims 2-5, 7, 19, and 20
With regard to claim 2, Appellant refers to and relies on Appellant's
first contention-that the Examiner errs in combining Nose and Zhang.
App. Br. 14. For the reasons stated above in the context of claim 1,
Appellant's arguments are not persuasive of error.
In Appellant's sixth contention, Appellant argues that Edwards fails to
disclose the recited limitation "the eye tracker camera optically coupled to
the eyepiece" because "Edwards makes no mention whatsoever of an
eyepiece." Id. at 15. Appellant's argument, however, is not persuasive of
error because it attacks the Edwards reference individually, when the
Examiner relies on the combination of Nose, Zhang, Edwards, and Ohtake.
See Mouttet, 686 F.3d at 1332.
For these reasons, we do not find that the Examiner errs in finding that
the combination of Nose, Zhang, Edwards, and Ohtake teaches or suggests
"the eye tracker camera optically coupled to the eyepiece" recited in claim 2.
In Appellant's seventh contention, Appellant argues that Ohtake fails
to disclose "a marker element on the eyepiece proximate the one or more
elements," as claim 2 requires. App. Br. 15-16, 26-27. Again, Appellant's
arguments are not persuasive because they attack Ohtake individually, even
though the Examiner relies on the combination of Ohtake with other
references in rejecting the claims. Final Act. 17, 23-24; see Mouttet, 686
F.3d at 1332. Moreover, we agree with the Examiner that given the broadest
reasonable interpretation of the claim language, Ohtake' s teaching that a
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target mark is placed upon an object in an image viewed through an eyepiece
suggests that the marker is "proximate the one or more elements" recited in
claim 2. Final Act. 19; Ans. 13.
For these reasons, we are unpersuaded that the Examiner errs in
finding that the combination of Nose, Zhang, Edwards, and Ohtake teaches
or suggests "a marker element on the eyepiece proximate the one or more
elements," as recited in claim 2.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 2. We also sustain the 35 U.S.C. § 103(a) rejections of
claims 3-5, 7, 19, and 20, which depend from claim 2 and for which
Appellant makes no arguments other than those made for claim 2. Id. at 16-
18.
Claim 6
In arguing the patentability of claim 6, Appellant relies on the
arguments made in Appellant's second contention that the combination of
Nose, Zhang, Edwards, and Lanni is improper. App. Br. 23-25. For the
reasons stated above in the context of claim 1, we do not find those
arguments persuasive of error. Accordingly, we sustain the 35 U.S.C. §
103(a) rejection of claim 6.
Claim 8
Appellant's seventh contention asserts that the proposed combination
of Nose, Zhang, Edwards, and Ohtake does not disclose or suggest at least
one limitation recited in claim 2, from which claim 8 depends. App. Br. 25.
For the reasons stated above with respect to claim 2, Appellant's arguments
are not persuasive of error.
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Application I2/483, I29
In Appellant's eighth contention, Appellant argues that Deng fails to
disclose "each image having a lateral field-of-view of at least 45 degrees, the
panoramic image having at least a I20 degree field-of-view," as recited in
claim 8. App. Br. 26. In view of the Examiner's findings and explanations,
Appellant's arguments, however, do not explain or evince persuasively why
the disclosure in Deng cited by the Examiner-that to obtain the largest field
of view as possible, cameras 40, 42, and 44 in Figure IB are positioned so
that the images of each frame abut one another without overlapping-fails to
teach or suggest a lateral field-of-view of at least 45 degrees and a
panoramic image having at least a I20 degree field-of-view. Final Act. 27-
28 (citing Deng i-f I 7, Figs. IA-ID).
For these reasons, we are unpersuaded that the Examiner errs in
finding that the combination of Nose, Zhang, Edwards, Ohtake, and Deng
teaches or suggests "each image having a lateral field-of-view of at least 45
degrees, the panoramic image having at least a I20 degree field-of-view," as
recited in claim 8. Accordingly, we sustain the 35 U.S.C. § I03(a) rejection
of claim 8.
Claim 16
In arguing that claim I6 is patentable, Appellant relies on Appellant's
fourth and/or fifth contentions that the proposed combination of Nose,
Zhang, Lanni, Shono, Hansen, Dejima, and David does not disclose or
suggest at least one limitation recited in claim I 0, from which claim I 6
depends. App. Br. 25. For the reasons stated above with respect to claim I,
we do not find those arguments persuasive.
Appellant also relies on Appellant's eighth contention that Deng fails
to disclose "each image having a lateral field-of-view of at least 45 degrees,
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the panoramic image having at least a 120 degree field-of-view," as recited
in claim 8. Id. at 26. For the reasons stated above with respect to claim 8,
we are not persuaded of Examiner error. Accordingly, we sustain the
35 U.S.C. § 103(a) rejection of claim 16.
Claims 17 and 18
In arguing that claim 17 is patentable, Appellant refers to and relies on
Appellant's seventh contention that Ohtake does not disclose a target marker
that is "proximate the one or more elements." App. Br. 26-27. For the
reasons stated with respect to claim 2, above, Appellant's arguments are not
persuasive of error.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 17,
which depends from claim 10. We also sustain the 35 U.S.C. § 103(a)
rejection of claim 18, which depends from claim 17 and for which Appellant
makes no arguments other than those made for claim 17. Id. at 27.
DECISION
The Examiner's decision rejecting claims 1-8, 10, 11, and 15-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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