Ex Parte Garin

Patent Trial and Appeal Board

Jun 23, 2017

12312032 (P.T.A.B. Jun. 23, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/312,032 02/04/2010 Jean-Francois Garin 71247-0110 4981
22902 7590 06/26/2017
TT ARK ^ RRODY
EXAMINER
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
TORRENTE, RICHARD T
ART UNIT PAPER NUMBER
2485
MAIL DATE DELIVERY MODE
06/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-FRANCOIS GARIN
Appeal 2015-006600
Application 12/312,032
Technology Center 2400
Before: CARLA M. KRIVAK, CAROLYN D. THOMAS, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from rejections of claims
1—16. We have jurisdiction under 35 U.S.C. § 6(b). Oral argument was held
on April 6, 2017.
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
Appeal 2015-006600
Application 12/312,032
CLAIMED INVENTION
According to Appellant, the disclosed invention “concerns the
technical area of inspecting hollow, translucent or transparent objects or
articles, such as bottles or jars, with a view to detecting any defects
occurring in these objects and which have the characteristic of reflecting
light.” Spec. 1. Claim 1, reproduced below with disputed limitations
italicized, is illustrative of the claimed subject matter:
1. An optical inspection station to detect light-reflecting
defects shown by a transparent or translucent hollow object
driven in rotation about its axis of symmetry, the inspection
station comprising:
a lighting system able to supply a series of light
beams illuminating one inspection area of the object at
different angles of incidence,
a camera equipped with a lens producing images of
the inspection area during rotation of the object, the lens
having a field angle,
characterized in that the optical inspection station
comprises a series of optical elements deflecting into air
in a direction of the lens rays reflected by the one
inspection area arranged between the one inspection area
and the lens so as to divide the field angle of the lens into
different areas, each area corresponding to a view of the
one inspection area taken from different viewing angles,
so as to form an image of the one inspection area, said
image comprising a series of views of the one inspection
area taken at different viewing angles.
REFERENCES
Juvinall
Hirahara et al.
US 6,175,107 B1 Jan. 16,2001
US 7,289,646 B2 Oct. 30, 2007
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Application 12/312,032
REJECTIONS
Claims 1—5 and 7—16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Juvinall and Hirahara. Final Act. 3.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Juvinall, Hirahara, and Applicant
Admitted Prior Art. Final Act. 4.
ANALYSIS
Claims 1, 2, 4, 5, 7, 9, 11, and 12
The Examiner finds Juvinall teaches all elements of independent
claim 1 with the exception of “the optical inspection station comprises a
series of optical elements deflecting into air in a direction of the lens rays
reflected by the one inspection area arranged between the one inspection
area and the lens so as to divide the field angle of the lens into different
areas, each area corresponding to a view of the one inspection area taken
from different viewing angles, so as to form an image of the one inspection
area, said image comprising a series of views of the one inspection area
taken at different viewing angles.” Ans. 4. The Examiner finds the
combination of Hirahara and Juvinall teaches or suggests this element. Id. at
4—5.
Appellant argues Juvinall does not form a series of views of one
inspection area taken at different angles because Juvinall produces its
images using light sources that are alternatively energized. App. Br. 15;
Reply Br. 1—2. The Examiner disagrees, finding lens 27 and lens 29 of
Juvinall provide two views of an inspection area from different viewing
angles and, therefore, Juvinall forms the requisite series of views. Ans. 8—9,
citing Juvinall Figs. 1, 4A and 4B. Appellant responds that the images
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Application 12/312,032
produced by lens 27 and lens 29, shown in Juvinall’s Figures 4A and 4B,
each constitute only one view at one viewing angle. Reply Br. 2. We,
however, are not persuaded by this argument because although Figures 4A
and 4B, each in isolation, may only show one view at one viewing angle,
collectively they provide an image with two views at two different viewing
angles. Juvinall Figs. 4A and 4B. Hirahara also teaches producing an image
with a series of views at different viewing angles.1 Ans. 5; Hirahara Figs. 2
and 5.
Appellant further argues Juvinall and Hirahara cannot be combined
because Juvinall alternately energizes light sources, whereas Hirahara does
not. App. Br. 19-20. We are not persuaded by this argument because it is
directed to a bodily combination of the references, rather than the
Examiner’s proposed combination of their teachings. Mouttet, 686 F.3d at
1332. The Examiner relies on Hirahara as teaching a series of views at more
than two viewing angles. Ans. 10. Appellant provides no reason why
alternately energizing the light sources in Juvinall would discourage an
ordinarily skilled artisan from applying this cited teaching from Hirahara to
Juvinall.
Appellant further argues that Juvinall does not disclose a series of
light beams illuminating one inspection area at different angles of incidence.
App. Br. 23—24. The Examiner identifies laser 22 and LED 16 in Juvinall as
1 At the hearing, Appellant indicated the term “series of views” requires
more than two views. April 6, 2017 Hearing Tr. 12, but see Tr. 7; Reply Br.
7. Even if we were to accept that argument, however, Hirahara shows three
views, each taken at a different viewing angle. Hirahara Fig. 2. Although
Appellant argues Hirahara’s three views are not of the same inspection area,
Appellant provides no reason, and we decline, to construe the term
“inspection area” so as to exclude Hirahara’s area of inspection. App. Br.
24.
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Appeal 2015-006600
Application 12/312,032
providing the requisite series of light beams, finding a light beam is light
from any source. Ans. 11. Although Appellant argues LED 16 does not
provide a light beam, Appellant does not challenge the Examiner’s finding
that a light beam is light from any source. App. Br. 23—24; Ans. 11. In view
of this unchallenged finding, we agree with the Examiner that LED 16
produces a light beam and Juvinall discloses a series of light beams
illuminating one inspection area at different angles of incidence. Ans. 11.
Therefore, we sustain the rejection of claim 1, and of claims 2, 4, 5, 7,
9, 11, and 12, not separately argued. App. Br. 10-26.
Claim 3
Appellant argues Hirahara does not suggest symmetrically arranging
optical deflection elements relative to the optical viewing axis of a camera.2
App. Br. 24; Reply Br. 11. We are not persuaded by this argument because
Hirahara’s Figure 2 shows reflecting surfaces 14 and 16 (optical deflection
elements) are symmetrically aligned with the opposite comers of the
camera’s image plane. Hirahara Fig. 2. The Examiner finds, and we agree,
with this arrangement, reflecting surfaces 14 and 16 are symmetrically
arranged relative to the optical viewing axis of the camera. Ans. 5, 11—12.
Further, Appellant provides no reason why the reflecting surfaces are not
symmetrically arranged with respect to the optical viewing axis. App. Br.
24; Reply Br. 11. Therefore, we sustain the rejection of claim 3.
2 In the Reply Brief, Appellant corrects a typographical error where the
Appeal Brief refers to “optical viewing axis” as “optical viewing area.”
Reply Br. 11. We accept that correction.
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Application 12/312,032
Claim 6
Appellant does not separately address claim 6. App. Br. 10—26.
Therefore, we sustain the rejection of claim 6 for the same reasons as for
base claims 1 and 5.
Claims 8 and 13—16
The Examiner finds reflecting surfaces 14 and 16 in Hirahara teach or
suggest optical deflection elements arranged side by side in a horizontal
direction, as recited directly or indirectly by claims 8, 13, and 14, and teach
or suggest at least two optical elements arranged side by side in a vertical
direction, as recited directly or indirectly by claims 15 and 16. Ans. 12.
Appellant disagrees. App. Br. 25—26. As discussed below, we determine
the term “side by side” is indefinite and, therefore, reverse pro forma the
standing prior-art rejection of these claims. In re Steele, 305 F.3d 859, 862—
63 (CCPA 1962). We note this is a procedural reversal, rather than one
based upon the merits of the section 103 rejection.
Claim 10
The Examiner finds reflecting surfaces 14 and 16 in Hirahara teach or
suggest the optical deflection elements superimposed in a vertical direction,
as recited directly or indirectly by claim 10. Ans. 12. Appellant disagrees.
App. Br. 25; Reply Br. 12—13. Both the Examiner and Appellant indicate
the figures of Hirahara demonstrate the requisite superimposition or lack
thereof. App. Br. 25; Ans. 12; Reply Br. 12—13.
We construe “superimposed in a vertical direction” to mean to place
or lay over or above an axis parallel to the longitudinal symmetry of the
object under inspection. The Specification does not define the term
“superimposed,” but an ordinary definition is “to place or lay over or above
something.” Merriam Webster, https://www.merriam-
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Application 12/312,032
webster.com/dictionary/ superimpose, last accessed June 12, 2017. The
Specification defines “substantially vertical” as “substantially parallel to the
axis of longitudinal symmetry of the object [under inspection].” Spec. 1.
Therefore, vertical is parallel to the axis of longitudinal symmetry of the
object under inspection.
Reflecting surfaces 14 and 16 in Hirahara are not superimposed in a
vertical direction. In the Hirahara figures, the vertical direction is the
longitudinal axis of embryo 10 under inspection, which is the horizontal axis
of the figures. See Hirahara Figs. 2 and 6. Reflecting surfaces 14 and 16 are
not placed above or lay above one another along this axis, but rather are,
respectively, behind and to the side of embryo 10. Hirahara Fig. 6.
The Examiner also finds mirror 31 in Juvinall is arranged in a vertical
manner and would still have that alignment if an additional lens and mirror
were added to Juvinall. Ans. 12. Even if we were to accept that finding,
however, that would not satisfy the limitation-at-issue, which requires that
the optical deflection elements be superimposed in a vertical direction.
The Examiner does not explain why reflecting surfaces 14 and 16 in
Hirahara or mirror 31 in Juvinall would nevertheless suggest optical
deflection elements superimposed in a vertical direction. Ans. 12.
Accordingly, we do not sustain the rejection of claim 10.
Claims 14 and 16
Appellant argues for the first time in the Reply Brief that claims 14
and 16 are separately patentable. Reply Br. 13. In light of our disposition of
these claims on other grounds, this argument is moot, and we do not address
its timeliness. 37 C.F.R. § 41.41(b)(2).
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Application 12/312,032
NEW GROUND OF REJECTION
Claims 8 and 13—16
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
claims 8 and 13—16 under 35 U.S.C. § 112 12 as indefinite because each
claim directly or indirectly recites the term “side by side.” The Specification
does not define “side by side” and does not use the term in accordance with
any clear ordinary meaning. In particular, the Specification teaches optical
deflection elements 11 in Figure 2 are side by side. Spec. 9. An ordinary
definition of “side by side” is “beside one another.” Merriam-Webster,
https://www.merriam-webster.com/dictionary/side%20by%20sideWebster’s,
last accessed June 12, 2017. Optical deflection elements 11 in Figure 2,
however, are not beside one another, but rather are separated so that light
can pass between them to form view V2. Spec. 7. Accordingly, we
determine the term “side by side” is unclear and claims 8 and 13—16 are
indefinite. In re Packard, 751 F.3d 1307, 1310-1315 (Fed. Cir. 2014).
DECISION
We affirm the rejections of claims 1—7, 9, 11, and 12.
We reverse pro forma the rejection of claims 8 and 13—16.
We reverse the rejection of claim 10.
Pursuant to our authority under 37 C.F.R. § 41.50(b), as a new ground
of rejection, we reject claims 8 and 13—16 under 35 U.S.C. § 112 12.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
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Application 12/312,032
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of
rejection designated in the decision. Should the examiner reject
the claims, appellant may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which
rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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-IN-PART/37 C.F.R, $ 41.50(b)
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