Ex parte HORI

Board of Patent Appeals and Interferences

Jun 15, 2000

08221721 (B.P.A.I. Jun. 15, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TOSHIKAZU HORI
________________
Appeal No. 1997-4190
Application No. 08/221,721
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH, and DIXON, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 6 and 8 through 20, all of the claims pending
in the application.
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The invention is directed to a full frame electronic
shutter camera best illustrated by reference to representative
independent claim 1, reproduced as follows:
1. An electronic shutter camera with full frame
resolution, said camera comprising:
a progressive scanning interline transfer charge coupled
device (CCD) for imaging a frame of information;
timing means for generating electronic shutter signals
for controlling the scanning and charge transfer rate for said
CCD;
sync generator means for generating video timing signals;
control means for resetting said timing means and said
sync generator means, said control means including means for
selecting an internal reset mode and an external reset mode of
operation for said timing means and said sync generator means,
said control means further including means responsive to an
externally supplied asynchronous reset signal for resetting
said timing means and said sync generator means;
digital image generating means coupled to said CCD for
generating multiple bit digital image signals;
individual memory means coupled to said digital image
generating means for storing a full frame multi-bit digital
image; and
means for converting said full frame multi-bit digital
image to video signals having a selected format.
The examiner relies on the following references:
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Nishizawa et al. (Nishizawa) 4,531,156 Jul. 23,
1985 Yang et al. (Yang) 4,851,915
Jul. 25, 1989
Hunt et al. (Hunt) 4,896,211 Jan. 23,
1990
Nagasaki et al. (Nagasaki) 5,153,730 Oct. 06,
1992
Kokubo 5,298,734 Mar. 29, 1994
Claims 1 through 6 and 8 through 20 stand rejected under
35 U.S.C. § 103. As evidence of obviousness, the examiner
cites Kokubo, Hunt and Nagasaki with regard to claims 1
through 3, 5, 6 and 8 through 12, adding Yang to this
combination with regard to claim 4. The examiner applies
Kokubo, Hunt and Yang against claims 13 through 20. In new
grounds of rejection entered in the answer, the examiner cites
Kokubo, Hunt, Nagasaki, Yang and Nishizawa with regard to
claims 4 and 16 through 20 and Kokubo, Hunt, Yang and
Nishizawa with regard to claims 13 through 15.
An earlier rejection under 35 U.S.C. § 112, second
paragraph, was withdrawn by the examiner in the answer in
response to an amendment after final.
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Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
At the outset, we note that, in accordance with
appellant’s grouping of the claims at page 8 of the principal
brief, the following claims stand or fall together within each
delineated group: Group I: 1-3, 5, 6, 8-11; Group II: 12;
Group III: 13-15; Group IV: 16-20. Thus, for purposes of this
appeal, we need look at only independent claims 1, 12 and 13
and dependent claim 16.
We turn first to the rejection of independent claim 1.
It is the examiner’s position that Kokubo discloses an
electronic shutter camera with full frame resolution
comprising a scanning interline transfer charge coupled device
(CCD) for imaging a frame of information (column 4, line 12);
a timing means for generating electronic shutter signals for
controlling the scanning and charge transfer rate for the CCD
(column 3, lines 13-21); a sync generator means (7) for
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generating video timing signals; a memory means coupled to the
CCD (column 2, lines 66-67 and Figure 2, item ST) for storing
a full frame image from the CCD; and a means for converting
the full frame image to video signals having a selected format
(column 4, lines 31-34).
The examiner recognizes that Kokubo does not disclose the
claimed control means, the claimed digital image generating
means or the individual memory means coupled to the digital
image generating means for storing a multi-bit digital image.
However, it is the examiner’s position that Hunt supplies all
of the deficiencies of Kobuko and that it would have been
obvious to combine the two teachings. More specifically, it
is the examiner’s position that Hunt discloses a control means
for externally controlling the camera wherein the control
means resets the timing and sync generator means (column 2,
lines 6-18); that Hunt discloses a means for selecting an
internal reset mode and an external reset mode of operation
(column 7, lines 1-5) and that the control means of Hunt
includes a means responsive to an externally supplied
asynchronous reset signal for resetting the timing and sync
generator means (column 3, lines 11-14). The examiner also
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argues that Hunt has a digital image generating means which is
coupled to the CCD for generating multiple bit digital image
signals
"since signals from the CCD are able to be digitized
by the digital image generating means. Furthermore,
a memory for storing the digital signal is clearly
present in Hunt...since the digitized image is
subjected to ‘digital signal processing’(Column 3,
Line 48-49), an operation clearly requiring that the
digitized image data be stored in some fashion in
order
for it to be made available for the subsequent
digital processing operation" [Principal answer-page
6].
Nagasaki is employed by the examiner for the teaching of
incorporating into a photographing unit a digitizing means and
an individual memory means for storing a full-frame multi-bit
digital image because Hunt’s digitizing and memory elements
are housed in a separate enclosure and therefore not part of
the photographing unit itself.
We find that the examiner has not established a prima
facie case of obviousness with regard to the instant claimed
subject matter and, so, we will not sustain any of the
outstanding rejections under 35 U.S.C. § 103.
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While there are many arguments addressed in the three
briefs and two answers and there are many claim limitations
which might be addressed by us, we will address just two of
the instant claim limitations which are exemplary of the
deficiencies of the applied references.
Each of the claims requires a control means for resetting
the timing means and the sync generator means. Independent
claims 1 and 13 are even more specific in reciting that the
control means includes means responsive to an externally
supplied asynchronous reset signal for resetting both the
timing means and the sync generator means. Claim 1 also
includes means for selecting an internal reset mode and an
external reset mode.
As appellant points out [top of page 12 of the principal
brief], Hunt discloses only that a timing means is responsive
to an externally supplied asynchronous reset signal. However,
the sync generator means, 62, is not coupled to the externally
supplied reset signal. From Hunt’s description and Figures 1A
and 1B, appellant appears to be correct since Hunt never
describes the sync generator means, 62, as being responsive to
an externally supplied asynchronous reset signal and we find
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no suggestion that the skilled artisan would make the sync
generator means responsive thereto. The examiner counters by
contending, in the principal answer, page 28, that it is not
sync generator means, 62, in Hunt on which the examiner relies
for the teaching of the claimed “sync generator means,” but,
rather, the examiner identifies the multi-normal pulse pattern
generator, element 74-MNPPG, of Hunt as the claimed sync
generator means.
While appellant has not responded to this argument of the
examiner, even though two further reply briefs were filed, the
examiner has not convinced us that the MNPPG of Hunt
constitutes the claimed sync generator means. The examiner
contends that MNPPG of Hunt supplies both the timing and sync
signals for control of the CCD, pointing to column 7, lines
12-20 and lines 39-44. However, our review of those sections
of Hunt, directed to an asynchronous trigger mode and the
passing of MNPPG signals to vertical line drivers and the
generation of clock signals via the MNPPG, reveals nothing
suggestive of the claimed control means for resetting both the
timing means and the sync generator means wherein the timing
means generates electronic shutter signals and the sync
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generator means generates video timing signals. While there
appears to be an external reset signal in Hunt, the examiner
has not persuaded us that this external reset signal resets
both the timing means and a sync generator means, as claimed.
In fact, the examiner leaves it unclear as to why it is
believed that the MNPPG of Hunt provides the claimed sync
generator means.
The examiner also apparently relies on mode select, 94,
of Hunt for providing the claimed “means for selecting an
internal reset mode and an external reset mode of operation
for said timing means and said sync generator means.” Yet, it
is not clear, from either the disclosure of Hunt or the
examiner’s rationale, why Hunt’s mode select, 94, is thought
to have the claimed capability.
Independent claims 1 and 12 also require a “digital
image generating means coupled to said CCD for generating
multiple bit digital image signals.” We agree with appellant
that neither Kokubo nor Hunt appears to disclose or suggest
such a generating means. The examiner agrees that Kokubo
fails to teach this limitation but contends that Hunt, while
not explicit, must have such a digital image generating means
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because a digital memory is present and Hunt digitizes image
data which is then processed and analyzed, pointing to column
3, lines 46-56 of Hunt. Reference to that portion of Hunt
reveals that digital signal processing is done on the
resultant video signal. Thus, the digital processing in Hunt
is performed after the image is achieved and it is performed
on the video signal. But, as set forth in instant claims 1
and 12, the digital image generating means is coupled to the
CCD and it generates the multiple bit digital image signals.
It does not generate a video signal and then digitally process
the video signal as does Hunt. As explained by appellant, at
pages 12-13 of the principal brief, there is no teaching in
Hunt “of the necessity or desirability of incorporating into a
camera such as the Kokubo camera a digital memory upstream of
the video processing analog circuitry.”
Moreover, while, in our view, Hunt is lacking a teaching
or suggestion of certain claimed elements which are also
deficient in Kokubo, even if, arguendo, Hunt taught or
suggested all that the examiner contends, the examiner has not
satisfactorily explained how/why the references would have
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been combined by the artisan. The mere fact that the
references both relate to industrial applications of
photographing items on a moving conveyor belt, is not, per se,
enough. The examiner has not provided us with sufficient
reason for the artisan, viewing both of these teachings, to
have modified Kokubo in any manner with the teachings of Hunt.
What, exactly, in Kokubo, is the examiner suggesting should be
modified and why? While the principal answer is a lengthy
one, in our view, the examiner never successfully comes to
grips with a convincing reason to make the modifications
alleged to have been obvious.
While the examiner relied on various other references for
different claim limitations, since, in our view, the Yang,
Nagasaki and Nishizawa references do not supply the
deficiencies of the Kokubo/Hunt combination, we will not
sustain any of the rejections of the claims under 35 U.S.C. §
103 based on various combinations of references.
Since each of the independent claims have, at least, one
or more of the limitations discussed supra, which limitations
are not seen to be taught or suggested by the various
combinations of applied references, we see no need for
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“beating a dead horse” by addressing other claim limitations
which may not be adequately taught or suggested by the applied
references.
The examiner’s decision rejecting claims 1 through 6 and
8 through 20 under 35 U.S.C. 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
ek/rwk
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