Ex Parte Fischer et alDownload PDFPatent Trial and Appeal BoardAug 16, 201613303530 (P.T.A.B. Aug. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/303,530 11/23/2011 24972 7590 08/18/2016 NORTON ROSE FULBRIGHT US LLP 666 FIFTH A VE NEW YORK, NY 10103-3198 FIRST NAMED INVENTOR Frank FISCHER 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. 1019117206 2818 EXAMINER CHAVEZ, RENEE D ART UNIT PAPER NUMBER 2878 NOTIFICATION DATE DELIVERY MODE 08/18/2016 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): nyipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) u-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK FISCHER and MICHAEL KRUEGER Appeal2015-002742 Application 13/303,530 Technology Center 2800 Before ROBERT E. NAPPI, CARLA M. KRIVAK, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as ROBERT BOSCH GmbH. (App. Br. 1.) Appeal2015-002742 Application 13/303,530 Claimed Subject Matter The claimed invention relates to a microprojector that includes a light source, at least one optical imaging arrangement, and a damping element for damping mechanical shocks of the microprojector. (Spec. Abstract.) Claim 1, reproduced below, is illustrative: 1. A microprojector, comprising: an electrical carrier; a light source; at least one optical imaging arrangement for creating an image with the aid of the light source; at least one electrical arrangement for activating the light source; and a damping element for damping mechanical shocks of the microprojector, at least one of the light source or the at least one optical imaging arrangement being situated on the damping element; wherein the damping element includes at least one spring element, the damping element being connected to the electrical carrier only via the at least one spring element. Rejection Claims 1-11 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (Final Act. 2-3.) ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments the Examiner erred (App. Br. 3-5; Reply Br. 1-2). We are not persuaded by Appellants' arguments. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and as set forth by the Examiner in the Answer (Ans. 2---6). We 2 Appeal2015-002742 Application 13/303,530 highlight and address specific arguments and findings for emphasis as follows. Appellants argue the Examiner erred in finding the Specification does not support the limitation of independent claim 1 that recites the damping element being connected to the electrical carrier only via the at least one spring element. (App. Br. 3-5; Reply Br. 2.) Appellants cite Figures 1-3, page 6, lines 6-8, and original claim 5 of the Specification for support (App. Br. 3-5; Reply Br. 2). 2 The Examiner, however, finds the Specification has no support for a "damping element [that] is only connected to the electrical carrier via one or more spring elements" as required by claim 1 (Ans. 3). Rather, the Examiner finds: The Specification clearly states that the imaging element or light source situated on the damping element must be connected to the electrical carrier via an electrical connection to function. Furthermore, because the imaging element is situated on the damping element, therefore, the damping element is also connected to the electrical carrier via an electrical connection through the imaging element in addition to being connected to the electrical carrier via the spring elements. (Ans. 3.) We have reviewed the Specification and its Figures and we agree with Appellants that Figures 1 and 2 of the Specification appear to show embodiments in which the damping element-having only an optical imaging arrangement/mirror situated thereon-is connected to the electrical carrier only via at least one spring element. (Spec. Figs. 1 and 2, micromirror 1, damping element 9, spring(s) 52.) In these embodiments, the 2 Appellants cite paragraph 28 of the US Pre-Grant Publication of Appellants' Specification (App. Br. 5), which corresponds to page 6, lines 6-8 in Appellants' originally-filed Specification. 3 Appeal2015-002742 Application 13/303,530 damping element carries the mirror and does not require an electrical connection to the electrical carrier. (See Spec. 6:3---6, 6:19--24.) We do not, however, agree with Appellants that the Specification's written description supports the full scope of claim 1. Claim 1 states that at least one of the light source or at least one optical imaging arrangement is situated on the damping element. Thus, claim 1 is broad enough to encompass an embodiment in which the light source is situated on the damping element, and the damping element is connected to the electrical carrier only via at least one spring element. Figure 3 of the Specification depicts an embodiment in which the light source is on the damping element, and is reproduced below: 10 3 1 2 3 4 5 49 52 4 3 Fig. 3 Figure 3 shows microprojector P according to a third embodiment of the invention. (Spec. 5:7-8, 6:25-7:8.) The description of Figure 3 at page 6, line 25 to page 7, line 8 of the Specification states that laser 2 (a light source) is situated on a shared electrical carrier 49 that is decoupled from electrical carrier 4 via damping elements 52 (spring elements). (See Spec. 5:28, 6:27-7:8.) Thus, in Figure 4 Appeal2015-002742 Application 13/303,530 3, the shared electrical carrier 49 is a damping element connected to electrical carrier 4 via spring elements 52, and light source/laser 2 is situated on the damping element. (See Spec. 6:29-31, Fig. 3 .) Although Figure 3 of the Specification does not depict an electrical connection to the light source, the Examiner finds, and we agree, an electrical connection is required for the light source to function. (Ans. 4--5 (citing Spec. 7 :20-25).) Such connection is also required by claim 1, which recites at least one electrical arrangement for activating the light source. The Examiner finds that the damping element---carrying the light source-is connected to the electrical carrier not only via the at least one spring element, but also via the light source's electrical connection because the claim term" 'connected' is broad enough to include as a reasonable interpretation that the damping element and the carrier are connected via another element to which both the damping element and carrier are connected." (Ans. 5 (emphasis added).) We agree with the Examiner's findings and conclusion. The Specification does not describe an embodiment of a light source situated on a damping element without an electrical connection attached to the electrical carrier and the light source, which is connected to the damping element. Appellants implicitly acknowledge that the Specification does not describe a light source situated on the damping element without an electrical connection attached to the damping element and to the electrical carrier, but argue that "since Figure 2 shows a light guide 10 delivering light to mirror 1 while bypassing damping element 9, one of ordinary skill in the art would note that damping element 9 could be similarly bypassed in supplying electricity to the components situated thereon." (App. Br. 5 (emphasis 5 Appeal2015-002742 Application 13/303,530 added).) In evaluating the adequacy of the disclosure in meeting the written description requirement, "the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). A "description that merely renders the invention obvious does not satisfy the [written description] requirement." Ariad, 598 F.3d at 1352; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-1572 (Fed. Cir. 1997) ("Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed."). In this case, the claimed arrangement---of a light source situated on the damping element and the damping element connected to the electrical carrier only via the at least one spring element-is, at best, obvious over Appellants' disclosure, but there is no indication that Appellants possessed such an arrangement. As Appellants' Specification does not disclose a damping element being bypassed when supplying electricity to a light source situated thereon, the Specification does not demonstrate possession of an embodiment encompassed by claim 1 where the light source is situated on the damping element and the damping element's only connection to the electrical carrier is through one or more spring elements. For the above reasons, we conclude that a preponderance of evidence supports the Examiner's rejection of claim 1 under 35 U.S.C. § 112, first paragraph. For the same reasons, we sustain the rejection of independent claims 8 and 11 reciting similar features of at least one of the light source or the at least one optical imaging arrangement being situated on the damping 6 Appeal2015-002742 Application 13/303,530 element, the damping element being connected to the carrier only via the at least one spring element (claim 8), and at least one of the light source or the at least one optical imaging arrangement being situated on the damping element, the damping element being connected to the electrical carrier only via the at least one spring element (claim 11 ). Accordingly, we also sustain the Examiner's rejection of dependent claims 2-7, 9, and 10, for the same reasons. DECISION We affirm the Examiner's decision rejecting claims 1-11. 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 7 Copy with citationCopy as parenthetical citation