Ex parte Hatase

Board of Patent Appeals and Interferences

Oct 31, 2001

08597035 (B.P.A.I. Oct. 31, 2001)

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publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TAKAYUKI HATASE
____________
Appeal No. 1999-2794
Application No. 08/597,035
____________
HEARD: OCTOBER 9, 2001
____________
Before HAIRSTON, KRASS, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1 and 3-11, which are all the claims remaining in the application.
We reverse.
Appeal No. 1999-2794
Application No. 08/597,035
-2-
BACKGROUND
The invention is directed to an image scanner utilizing a shift register for receiving
charges stored in photosensitive elements, and supplying the charges to an output. Claim
1 is reproduced below.
1. An image scanner comprising:
a photosensitive element array having a plurality of photosensitive elements,
arranged in a primary scanning direction from a first end to a second end, for being
exposed to light from an object to accumulate therein a plurality of charges
respectively;
a shift gate for receiving a transfer command signal and for receiving said
plurality of charges accumulated in said plurality of photosensitive elements and
simultaneously transferring said plurality of charges in response to the transfer
command signal;
a shift register for receiving said plurality of charges simultaneously
transferred from said shift gate, and sequentially outputting said plurality of charges
one by one, starting from one of the plurality of charges accumulated in one of the
plurality of photosensitive elements which is disposed at said first end; and
transfer command signal output means for supplying said transfer command
signal to said shift gate at variable generation intervals of time in accordance with a
length of said object in said primary scanning direction.
The examiner relies on the following references:
Nakajima et al. (Nakajima) 5,033,102 Jul. 16, 1991
Hosokawa 5-37861 Feb. 12, 1993
(published Japanese patent application, with English translation dated Dec., 1993)
Appellant's admitted prior art (the APA).
Appeal No. 1999-2794
Application No. 08/597,035
-3-
Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable over the
APA and Hosokawa.
Claims 3-11 stand rejected under 35 U.S.C. § 103 as being unpatentable over the
APA, Hosokawa, and Nakajima.
We refer to the Final Rejection (mailed Apr. 9, 1998) and the Examiner's Answer
(mailed Jan. 20, 1999) for a statement of the examiner's position and to the Brief (filed
Nov. 19, 1998) and the Reply Brief (filed Mar. 19, 1999) for appellant's position with
respect to the claims which stand rejected.
OPINION
The examiner sets forth the section 103 rejection of claim 1, as being unpatentable
over "Applicant's prior art Fig.12 in view of Hosokawa," on pages 3 and 4 of the Answer.
"Hosokawa...may not have explicitly disclosed a 'transfer command signal' and a means to
generate the signal, but such a signal is inherent in the Hosokawa...system in order for the
system to function efficiently." (Answer at 4.)
Appellant argues (Brief at 6-10) that none of the embodiments of Hosokawa are
disclosed as including a "transfer command signal output means," as required by instant
claim 1. Appellant further argues (Reply Brief at 1-3) that Hosokawa is directed to field
angles related to television standards, and has nothing to do with the length of a scanned
Appeal No. 1999-2794
Application No. 08/597,035
-4-
object in a primary scanning direction, contrary to the claimed "transfer command signal
output means."
We find appellant's arguments to be persuasive. Appellant points out (Brief at 8)
that the claim 1 "transfer command signal output means" refers to structure enabling a
vertical shift -- from the shift gate to the shift register -- rather than a horizontal shift out of
the shift register. Hosokawa's teaching that the frequencies at the horizontal transfer
sections 502 and 505 (Fig. 1) do not have to be equal, as noted on pages 4 and 9 of the
Answer, is inapposite to the requirements of instant claim 1. Additionally, appellant's
arguments in the Reply Brief are well taken. Hosokawa is directed to a different problem
from object scanning. We do not see, on this record, how the Hosokawa reference might
have commended itself to an artisan having knowledge as represented by appellant's
Figure 12, such that the combined teachings would lead to the subject matter of instant
claim 1. We therefore do not sustain the section 103 rejection of claim 1.
For the subject matter of instant independent claim 7, the examiner adds the
teachings of Nakajima to the combination of the APA and Hosokawa. The examiner refers
(Answer at 5-7) to the index levers 14 in place on an image reader, which are used in
defining a valid area EB (Nakajima, Fig. 3) and invalid areas EA and EC. "The examiner
reads the [in]valid area EA and EC as containing the subplurality of photosensitive
elements which are not exposed to light(shaded)." (Answer at 6.) The examiner
reiterates, in the sentence bridging pages 11 and 12 of the Answer, and at page 15, that
Appeal No. 1999-2794
Application No. 08/597,035
-5-
image sensor 27 (Nakajima, Fig. 2) receives light from valid image areas, but not from
invalid image areas.
Appellant argues (Brief at 13-14) that image sensor 27 is not shaded or "blocked"
from the invalid areas. In particular, appellant quotes a section of Nakajima (Reply Brief at
3) that is deemed to disclose that no blocking of light occurs.
Our interpretation of the reference is in accord with appellant's. Nakajima, at least
at column 6, lines 8 through 15, clearly indicates that image sensor 27 receives light from
the invalid image areas. Moreover, the examiner has not pointed out any structure in
Nakajima that might perform the function of "blocking a first plurality of photosensitive
elements from among said plurality of photosensitive elements," as required by instant
claim 7. We therefore do not sustain the rejection of claim 7, nor the rejection of claims 8
and 10, depending from 7. We cannot sustain the rejection of the claims for the additional
reason that we conclude that the basic combination of the APA and Hosokawa is not well
founded, as previously noted herein.
The requirements of instant independent claim 9 include "sequentially outputting a
first subplurality of charges from among said plurality of charges from said shift register
one by one," and "forcibly erasing a second subplurality of charges from among said
plurality of charges remaining in said shift register." The examiner puts forth the position
that Nakajima inherently must have a "reset means" for efficient operation. (See, e.g.,
Answer at 14.) Appellant contests the examiner's finding of inherency (Brief at 15).
Appeal No. 1999-2794
Application No. 08/597,035
-6-
We note that, consistent with appellant's position, the instant specification does not
depict prior art CCD cameras (e.g., Fig. 12) as having a "reset means." We compare
instant Figure 12 with appellant's invention, which includes the reset circuit 62 as shown in
Figure 10.
Our reviewing court has set out clear standards for establishing inherency.
To establish inherency, the extrinsic evidence "must make clear that the
missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill." "Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted).
Appellant having contested the finding of inherency, and absent evidence in the
record establishing that a “reset means” is “necessarily present” in the applied prior art,
we cannot sustain the rejection of claim 9, nor that of dependent claim 11. The Office's
burden in establishing inherency has not been met in the instant case. Finally, we cannot
sustain the rejection of claims 9 and 11 for the additional reason that the basic
combination of the APA and Hosokawa is not well founded, as previously noted herein.
CONCLUSION
Appeal No. 1999-2794
Application No. 08/597,035
-7-
The rejection of claims 1 and 3-11 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-2794
Application No. 08/597,035
-8-
JAMES E LEDBETTER
STEVENS DAVIS MILLER & MOSHER
1615 L STREET N.W. SUITE 850
PO BOX 34387
WASHINGTON , DC 20043-4387