Ex parte Drescher

Board of Patent Appeals and Interferences

Sep 25, 2001

08260318 (B.P.A.I. Sep. 25, 2001)

1
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not written for publication and is not binding precedent of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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ARMIN DRESCHER
__________
Appeal No. 1997-2990
Application 08/260,318
___________
HEARD: September 11, 2001
___________
Before HAIRSTON, JERRY SMITH and LEVY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1 and 2, which
constitute all the claims in the application. A first
amendment after final rejection was filed on July 26, 1995,
and a second amendment after final rejection was filed on
September 1, 1995. Both amendments were denied entry by the
examiner.
Appeal No. 1997-2990
Application 08/260,318
2
The disclosed invention pertains to an optoelectronic
CCD line scanner camera which provides a loss-free arrangement
for lengthening scan lines and avoiding optical and
diffraction effects with the aid of a special beam splitter
and a number of linear CCD detector arrays.
Representative claim 1 is reproduced as follows:
1. A loss-free arrangement for lengthening scan lines
and avoiding secondary optical and diffraction effects in a
single optoelectronic camera with the aid of a special beam
splitter and a number of linear CCD detector arrays, wherein
a single optics lens system (O) of the optoelectronic
camera is followed by an optical beam splitter (ST), including
alternatingly transparent segments (ST , ST , ...) with1 3
substantially complete transmission and reflective segments
(ST ,2
ST , ...) with substantially complete reflection segments (ST -4 1
ST ,...), the transparent segments and the reflective segments4
being interleaved via intermediate transition zones providing
a gradual change from full reflection to full transmission;
from the number of linear CCD detector arrays (CCD ,1
CCD , CCD CCD , ...), two long line modules (M , M ) are2 3 4 1 2
formed, so that in each long line module, free interstices
(FR) between the linear CCD detector arrays are shorter than
the length of a light-sensitive segment of one linear CCD
detector array;
two long line modules (M , M ) each are disposed, one1 2
following the beam splitter (ST), below its transparent
segments, (ST , ST , ...), and the other one laterally of this1 3
beam splitter (ST) next to its reflective segments (ST , ST ,2 4
...),
such that the centers of the linear CCD detector arrays (CCD , 2
CCD , ...) of the one long line module (M ) coincide with the4 2
Appeal No. 1997-2990
Application 08/260,318
3
centers of the free interstices (FR) of the other long line
module (M ), and the lengths of the free interstices (FR) in1
each long line module (M , M ) are selected to be so short that1 2
for the optoelectronic camera, a radiometrically largely loss-
free signal is assured,
on the one hand by means of substantially loss-free
signals from the central segment of a linear CCD detector
array behind the completely transparent, or respectively
behind the completely reflective, segment of the beam splitter
(ST), and
on the other hand by means of electronic summation of
signals from adjacent linear CCD detector arrays (CCD , CCD ,;1 2
CCD , CCD ; CCD , CCD ; ...) in coinciding segments,2 3 3 4
corresponding to the transition zones (ÜB , ÜB , ÜB , ÜB , ...),1 2 3 4
between the long line modules (M , M ). 1 2

The examiner relies on the following references:
Coale 3,571,489 Mar. 16, 1971
Miller et al. (Miller) 5,155,623 Oct. 13, 1992
Suganuma et al. (Suganuma) 5,220,626 June 15, 1993
Claim 1 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the invention. Claims 1 and 2 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
Suganuma in view of Miller and Coale.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
Appeal No. 1997-2990
Application 08/260,318
4
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the obviousness rejection. We have, likewise, reviewed
and taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that claim 1 complies with the requirements of the
second paragraph of 35 U.S.C. § 112. We are also of the view
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1 and 2. Accordingly, we reverse.
We consider first the rejection of claim 1 under the
second paragraph of 35 U.S.C. § 112. The rejection states,
There is no antecedent basis for “the
completely transparent” and “the completely
reflective” segments of the beam splitter
Appeal No. 1997-2990
Application 08/260,318
All other rejections of claims 1 and 2 under the second1
paragraph of 35 U.S.C. § 112 have been withdrawn by the
examiner in the answer.
5
[answer, page 3] .1
The examiner notes that the use of the term “completely” in
lines 34 and 35 of claim 1 is contradictory to the use in
lines 9 and 10 where the phrase “substantially complete” is
used to refer to these beam splitter segments [id., page 5].
Appellant responds that those skilled in the art would suffer
absolutely no claim confusion from this claim language [reply
brief, pages 2-3]. A claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971); In re Johnson,
558 F.2d 1008, 194 USPQ 187 (CCPA 1977). Acceptability of the
claim language depends on whether one of ordinary skill in the
art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
Appeal No. 1997-2990
Application 08/260,318
6
Since “the completely transparent” and “the completely
reflective” segments in lines 34 and 35 of claim 1 can only be
referring to the transparent and reflective segments recited
earlier in claim 1 as part of the optical beam splitter, we
agree with appellant that the artisan could not possibly fail
to understand the scope of the claimed invention. The
indefiniteness noted by the examiner is at most a technical
inconsistency which does not affect an artisan’s ability to
determine the scope of the claim. Therefore, we do not
sustain the examiner’s rejection of claim 1 under 35 U.S.C. §
112.
We now consider the rejection of claims 1 and 2 under
35 U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103,
it is incumbent upon the examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
Appeal No. 1997-2990
Application 08/260,318
7
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
Appeal No. 1997-2990
Application 08/260,318
8
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
This rejection is set forth by the examiner on pages
5-12 of the Final Rejection which is incorporated into the
examiner’s answer. Simply stated, the examiner finds that the
combined teachings of Suganuma and Miller teach all the
features of the claimed invention except for the provision in
the beam splitter of transition zones which gradually change
from full reflection to full transmission. The examiner
indicates that this provision is well known to reduce the
effects of diffraction, and the examiner cites Coale as
evidence of this assertion.
After discussing the individual teachings of each of
the references, appellant argues that there is no suggestion
within these references that they should be combined in the
manner proposed by the examiner. Specifically, appellant
notes that neither Suganuma nor Miller even mentions
diffraction, and appellant argues that there is no motivation
to apply the diffraction grating teachings of Coale to
Appeal No. 1997-2990
Application 08/260,318
9
Suganuma or Miller. Appellant asserts that the electronic
circuitry of Suganuma already corrects for diffraction effects
so that there would be no need to consider Coale’s teachings
on diffraction. Finally, appellant argues that the
diffraction grating of Coale solves the diffraction problem
differently from the claimed invention and would not work when
applied to the Suganuma beam splitter [brief, pages 16-27].
The examiner responds that even though Suganuma does
not mention diffraction as a problem, the artisan would have
recognized that Suganuma suffers diffraction effects which
must be corrected. The examiner finds, therefore, that the
artisan would be motivated to apply Coale’s graded transition
zones to Suganuma’s mirrors in order to reduce the effects of
diffraction.
Appellant responds again that Suganuma indicates no
problem with diffraction and already corrects for the effects
of diffraction. Appellant also responds that the diffraction
grating of Coale does not produce diffraction like the single
edge of Suganuma and would have no use in Suganuma. Finally,
appellant summarizes why the artisan would not be motivated to
combine the applied references in the manner proposed by the
Appeal No. 1997-2990
Application 08/260,318
10
examiner [reply brief].
After a careful consideration of this record, we agree
with appellant that there is no motivation to modify the
applied prior art in the manner proposed by the examiner. The
examiner’s finding that the artisan would find diffraction
problems in Suganuma where none are disclosed is speculative
at best and is not supported by the evidence. More
importantly, the examiner’s finding that the diffraction
grating of Coale would be an effective solution to the
diffraction “problem” of Suganuma is also pure speculation and
is also not supported by the evidence. We agree with
appellant that the electronic compensation provided in
Suganuma could correct for any diffraction effects in Suganuma
and, therefore, there would be no motivation to consider the
teachings of Coale. Therefore, we do not sustain the
examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103.
Appeal No. 1997-2990
Application 08/260,318
11
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Accordingly,
the decision of the examiner rejecting claims 1 and 2 is
reversed. REVERSED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 1997-2990
Application 08/260,318
12
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