Ex Parte Fujieda et al

Board of Patent Appeals and Interferences

Feb 26, 2003

08932238 (B.P.A.I. Feb. 26, 2003)

-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today was not written for publication and is not
binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ICHIRO FUJIEDA and TAKESHI SAITO
________________
Appeal No. 2001-0390
Application 08/932,238
________________
HEARD: JANUARY 22, 2003
________________
Before JERRY SMITH, RUGGIERO and BARRY, 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 1-6 and 43-52. Claims 7-
42 stand withdrawn from consideration as being directed to a non-
elected invention. Amendments after final rejection were filed
on November 24, 1999 and March 8, 2000 and were entered by the
examiner.
Appeal No. 2001-0390
Application 08/932,238
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The disclosed invention pertains to an image sensor
device which optically reads out a document.
Representative claim 1 is reproduced as follows:
1. An image sensor device which optically reads out a
document comprising:
an image sensor portion having a plurality of light
receiving elements facing a document to be read out; and
a thin film light source arranged on the document side of
said image sensor portion, said thin film light source emitting
light to said document,
wherein said thin film light source includes a plurality of
light emission portions, each of said light emission portions
emitting light to said document, and corresponding to each of
said light receiving elements, said light emission portions
including a light blocking layer on said light receiving elements
side, and said light emmission portions being arranged between
said light receiving elements and said document, at least one of
said light emission portions being substantially aligned with a
corresponding light receiving element.
The examiner relies on the following references:
Funada et al. (Funada) 5,101,099 Mar. 31, 1992
The admitted prior art described in appellants’ specification.
Claims 1, 3, 43-46, 48-50 and 52 stand rejected under 35
U.S.C. § 102(e) as being anticipated by the disclosure of Funada
or the admitted prior art. Claims 2, 4-6, 47 and 51 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness the
examiner offers Funada or the admitted prior art taken alone.
Appeal No. 2001-0390
Application 08/932,238
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Although the examiner’s answer repeats the rejection of claims 1-
6 and 43-52 under the second paragraph of 35 U.S.C. § 112 on page
3, the answer also indicates that this rejection has been
withdrawn on page 7. Since the examiner has not responded to
appellants’ arguments with respect to this latter rejection, we
will treat this rejection as having been withdrawn by the
examiner.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the brief 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 the evidence relied upon supports the examiner’s
rejections of claims 1-6 and 43-52. Accordingly, we affirm.
Appeal No. 2001-0390
Application 08/932,238
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Even though the examiner has made separate rejections
under 35 U.S.C. § 102(e) and 35 U.S.C. § 103, appellants have,
nevertheless, indicated that the claims should stand or fall
together in three groups headed respectively by one of the
independent claims. Specifically, appellants have indicated that
claims 1-6 and 44-47 stand or fall together as a first group,
claims 43 and 48-51 stand or fall together as a second group, and
claim 52 stands or falls separately from the other claims [brief,
page 7]. Since appellants have not argued each of the rejections
independently, we will consider the rejections against claims 1,
43 and 52 as representative of all the claims on appeal. Note In
re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir.
1983). Since claims 1, 43 and 52 were rejected under 35 U.S.C.
§ 102(e) only, we will only consider the propriety of the
rejection under 35 U.S.C. § 102(e).
We consider first the rejection of representative,
independent claim 1 under 35 U.S.C. § 102(e) as being anticipated
by the admitted prior art. Anticipation is established only when
a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
Appeal No. 2001-0390
Application 08/932,238
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performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner has indicated how he reads the invention of
claim 1 on the admitted prior art [answer, page 5]. Appellants
argue that none of the admitted prior art devices shown in
Figures 1-6B have light emission portions which substantially
overlap corresponding light receiving elements as claimed.
Specifically, appellants argue that the light emission portions
relied on by the examiner (fibers 1301, windows 1510 and opening
portion 1625) are not light emission portions as defined in the
claims. Appellants argue that these elements relied on by the
examiner simply pass light from the document to the light
receiving elements but do not emit light [brief, pages 8-11].
The examiner responds that at least one of the optical fiber
array 1301 or one of the light emission portions is substantially
aligned and/or overlapped with a corresponding light receiving
element [answer, page 8].
Appeal No. 2001-0390
Application 08/932,238
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We will sustain the examiner’s rejection. The question
comes down to whether fibers 1301, windows 1510 or opening
portions 1625 of the admitted prior art constitute light emission
portions within the meaning of claim 1. Appellants’ argument is
based on the fact that in their invention, the points where light
originates are aligned with respective light receiving elements
whereas, this is not true of the admitted prior art. Claim 1,
however, recites a light source having a plurality of light
emission portions and the light emission portions include a light
blocking layer. Thus, claim 1 specifically sets forth that
elements which block the passage of light are to be considered as
part of the light source which includes the light emission
portions. In our view, the examiner has simply applied this same
definition to the admitted prior art. Specifically, the examiner
has considered the light blocking and passing elements of the
admitted prior art to form part of the light source as defined in
claim 1. Therefore, fibers 1301, windows 1510 and opening
portions 1625 are considered to form part of the light source.
Since these elements determine where the light will be emitted,
they are light emission portions as defined in claim 1. Since
the examiner is correct that fibers 1301, windows 1510 and
opening portions 1625 are substantially aligned with
Appeal No. 2001-0390
Application 08/932,238
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corresponding light receiving elements 1306, 1502 and 1612,
respectively, we agree with the examiner that claim 1 is fully
met by the admitted prior art.
Therefore, the rejection of claim 1 as anticipated by the
admitted prior art is sustained. Since the dependent claims have
not been separately argued, they fall with independent claim 1.
Although appellants have nominally argued independent claims 43
and 52 separately, the recitations of these claims and the
arguments made by appellants in the brief are essentially the
same as we considered above with respect to claim 1. Therefore,
for the reasons discussed above, we also sustain the rejection of
claims 2-6 and 43-52 as unpatentable over the admitted prior art.
We now consider the rejection of claim 1 as anticipated
by the disclosure of Funada. The examiner has indicated how he
reads the invention of claim 1 on the disclosure of Funada
[answer, pages4-5]. Appellants argue that the light emission
portions relied on by the examiner (windows 206) are not light
emission portions as defined in the claims. Appellants argue
that windows 206 simply pass light reflected from the document to
the light receiving elements but do not emit light [brief, pages
11-12]. The examiner responds that at least one of the light
incident windows of the light emitting elements in Funada is
Appeal No. 2001-0390
Application 08/932,238
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aligned with the light incident windows of the light receiving
elements [answer, pages 8-9].
We will sustain the examiner’s rejection for essentially
the same reasons discussed above. Specifically, the light source
of Funada is considered to include light emission portions which
include the light blocking elements as recited in claim 1. Since
the windows 206 are, therefore, part of the light source as
discussed above, we agree with the examiner that these windows
emit light and are aligned with the light receiving elements 104
as claimed. Therefore, the invention of claim 1 is fully met by
the disclosure of Funada. For reasons discussed above, the
remaining claims on appeal fall with independent claim 1.
In summary, we have sustained the examiner’s rejection of
all the appealed claims based on either the admitted prior art or
Funada. Therefore, the decision of the examiner rejecting claims
1-6 and 43-52 is affirmed.
Appeal No. 2001-0390
Application 08/932,238
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
JOSEPH F. RUGGIERO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JS/ki
Appeal No. 2001-0390
Application 08/932,238
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