Ex Parte Huelsen et al

Patent Trial and Appeal Board

Dec 19, 2016

13141279 (P.T.A.B. Dec. 19, 2016)

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.
13/141,279 10/07/2011 Michael Huelsen 10191/6578 3948
24972 7590 12/21/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
TRUONG, NGUYEN T
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL HUELSEN, ULRICH SEGER, MATTHIAS KARL,
ANNETTE FREDERIKSEN, ROLAND SCHMID, WERNER UHLER, and
NORBERT HOG
Appeal 2016-000309
Application 13/141,279
Technology Center 2400
Before ST. JOHN COURTENAY III, MARC S. HOFF, and SCOTT E.
BAIN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-
Final Rejection of claims 16—30. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal “relates to a camera
system for detecting a state of a vehicle window pane.” (Spec. 11).
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Application 13/141,279
Representative Claim
16. A camera system for detecting a state of a vehicle window pane,
comprising:
a camera having an image sensor and at least one lens,
wherein the image sensor is configured to detect a first radiation
emitted by vehicle surroundings and for outputting image
signals;
a radiation source to emit a second optical radiation, at least
a portion of the emitted second optical radiation being detectable
by the image sensor as a function of a state of the window pane;
and
[L] a shielding element that prevents direct illumination of
the image sensor and the at least one lens by the second optical
radiation;
wherein the camera system is arranged in such a way that a
state of the vehicle window pane is determinable on the basis of
the image signals output by the image sensor during
measurements in which the vehicle window pane is illuminated
differently by the second optical radiation.
(Contested limitation L is emphasized).
Rejection
Claims 16—30 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Heenan et al. (US
2005/0206511 Al; Sept. 22, 2005) in view of Frenzel et al. (WO
2006/015905; Feb. 2, 2006). (Non-Final Act. 3).
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Grouping of Claims
Based on Appellants’ arguments in the principal Brief, we decide the
appeal of claims 16—30 on the basis of representative claim 16. See 37
C.F.R. § 41.37(c)(l)(iv). To the extent Appellants have not advanced
separate, substantive arguments for the remaining claims on appeal, such
arguments are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
action from which this appeal is taken, and (2) the findings, legal
conclusions, and explanations set forth in the Answer in response to
Appellants’ arguments. (Ans. 8—10). However, we highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Regarding contested limitation L, Appellants focus their arguments on
the following principal contentions: (1) “Frenzel does not disclose a
shielding element that is used to prevent direct illumination of the image
sensor by the second optical radiation as required by claims 16, 29, and 30”
(App. Br. 4), and (2): “Frenzel does not disclose a shielding element that is
used to prevent direct illumination of at least one lens by the second optical
radiation, as required by claims 16, 29, and 30.” (App.Br. 5).
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Claim Construction
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). Appellants contest limitation L:
[L] a shielding element that prevents direct illumination of
the image sensor and the at least one lens by the second
optical radiation',
As an initial matter of claim construction, we broadly but reasonably
construe the contested shielding element (“a shielding element that prevents
direct illumination of the image sensor and the at least one lens by the
second optical radiation;”) as a structural element of the claimed “camera
system” (apparatus) that Appellants contest, not in terms of structure (or
any defined structural arrangement within the apparatus), but rather in terms
offunction.
Nor does the contested “shielding element” limitation recite additional
limitations such as “configured to” or “adapted to” that might impose a
structural limitation, such that the structural components of the “shielding
element” must be “capable of’ performing the contested functions. 1 Absent
such limiting language, our reviewing court guides that the patentability of
an apparatus claim “depends on the claimed structure, not on the use or
purpose of that structure.” Catalina Marketing Int 7., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also
1 See In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir.
2016) (“We have noted that the phrase ‘adapted to’ generally means ‘made
to,’ ‘designed to,’ or ‘configured to,’ though it can also be used more
broadly to mean ‘capable of’ or ‘suitable for.’”) (internal citations omitted).
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Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir.
2009). Thus, we conclude the contested functional limitations performed by
the “shielding element” do not limit the structure of the apparatus of claim 1,
under a broad but reasonable interpretation. 2
We further construe the scope of the indefinite article “a” (i.e., “a
shielding element”) under the preamble transitional term “comprising” as
broadly but reasonably covering one or more shielding elements.3
To the extent our reviewing court may give full patentable weight to
the contested functions performed by structure of the “shielding element”
recited in claim 16, we focus our analysis on the question of whether the
corresponding structure(s) relied on by the Examiner in Frenzel for teaching
or suggesting the “shielding element” would have been capable of
performing the contested functions.
2 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
3 “[T]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’
in patent parlance carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising.’ That ‘a’ or ‘an’ can mean
‘one or more’ is best described as a rule, rather than merely as a presumption
or even a convention. The exceptions to this rule are extremely limited: a
patentee must ‘evince[] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’ The
subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to
the same claim term does not change the general plural rule, but simply
reinvokes that non-singular meaning.” See SanDisk Corp. v. Kingston
Technology Co., Inc., 695 F.3d 1348, 1360 (Fed. Cir. 2012) (citing Baldwin
Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1342 (Fed. Cir. 2008)).
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First Principal Contention Regarding Limitation L
“[L] a shielding element that prevents direct illumination
of the image sensor and the at least one lens by the second
optical radiation;” (Claim 16) (Emphasis added).
Appellants urge: “Frenzel does not disclose a shielding element that is
used to prevent direct illumination of the image sensor by the second optical
radiation as required by claims 16, 29, and 30” (App. Br. 4).
In support of Appellants’ first principal contention, Appellants
contend “the purpose of circuit carrier 10 [(Frenzel Fig. 1; Abstract)] is not
to serve as preventing direct illumination of the sensing portion of the
semiconductor, especially since no illumination would reach the surface of
the sensor in any case.” (App. Br. 5).
This argument is unavailing because “neither the particular motivation
nor the avowed purpose of the [Appellants] controls” in an obviousness
analysis. KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). It is
sufficient that the references suggest the claim limitations, although the
Appellants’ particular purpose was different from that of the references. In
re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372
F.2d 535, 538—39 (CCPA 1967)). “Obviousness is not to be determined on
the basis of purpose alone.” In re Graf, 343 F.2d 11 A, 111 (CCPA 1965).
This reasoning is applicable here. Therefore, even if arguendo
Frenzel’s circuit carrier 10 (Fig. 1) is directed to a different purpose (i.e., is
not intended to shield light source 5 from first semiconductor element 12
(image sensor)), we nevertheless find a preponderance of the evidence (the
structural arrangement depicted in Frenzel, Fig. 1) suggests that the structure
of Frenzel’s circuit carrier 10 (Fig. 1) would have been capable of
performing such shielding, within the meaning of Appellants’ claim 1.
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Moreover, on this record, we find the evidence cited by the Examiner
(Frenzel Fig. 1, circuit carrier 10, Non-Final Act. 4; Ans. 9) sufficient to
show that the natural result flowing from the structural arrangement
depicted in Frenzel’s Figure 1 would have resulted in the performance of the
questioned function, such that the contested functional limitation would have
been obvious under 35 U.S.C. § 103. See PAR Pharm., Inc. v TWIPharms.,
Inc., 773 F.3d 1186, 1194—95 (Fed. Cir. 2014).
Second Principal Contention Regarding Limitation L
“[F] a shielding element that prevents direct illumination of
the image sensor and the at least one lens by the second
optical radiation;” (Claim 16) (Emphasis added).
Appellants argue “Frenzel does not disclose a shielding element that is
used to prevent direct illumination of at least one lens by the second optical
radiation, as required by claims 16, 29, and 30.” (App.Br. 5).
Regarding Appellants’ second principal contention (id. ), we find a
preponderance of the evidence supports the Examiner’s finding: “As shown
in the figure 1, a shielding element (i.e. mirrors 26 or 28) [] is used to
prevent direct illumination of at least one lens (i.e. lens 16) by the second
optical radiation (i.e. light 5)).” (Ans. 4). As found by the Examiner in the
statement of rejection, “[t]he light 5 illuminates the windshield 40 then the
image is reflected by the mirrors 26 and 28 to the image sensor 12.” (Non-
Final Act. 4). Because of such reflection from the windshield, we find
direct illumination is prevented through the shielding element(s) (i.e.
mirrors 26 or 28).
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Reply Brief
In the Reply Brief (3) Appellants again urge that the elements 26 or
28 in Frenzel relied on by the Examiner are directed to a different purpose:
In addition to the foregoing, the Examiner asserts at pages 9 to
10 of the Examiner’s Answer that the “mirrors 26 and 28
provided in Figure 1 of Frenzel can also be a shield element to
prevent direct illumination of the image sensor by the second
optical radiation.” The Examiner’s newly presented assertion,
in which the mirror(s) are the shielding element, is incorrect.
Appellants first note that the Examiner has improperly
mischaracterized the reference numerals in Frenzel. According
to paragraphs [30] to [32] of a machine translation of Frenzel,
item 28 is in fact a “half-mirror” (i.e., a beam splitter) or a
“prism”, while item 26 is instead a lens. Regardless, the
Examiner’s assertion is incorrect because item 28 (and/or the
combination of item 28 and the lens 26) does not shield a
surface of the semiconductor element. Items 26 and 28 are
instead used in a traditional sense—to focus and reflect (and
pass certain wavelengths of) light. As shown in Figure 1, light
reflected off of the windshield is focused onto the half-mirror
28 by lens 26. The light is then, in relevant part, reflected off of
item 28 onto a portion of the semiconductor element 12.
Frenzel, at no point, describes that the placement of items 26
and 28 is for the purpose of preventing direct illumination of
semiconductor 12.
(Reply Br. 3) (Emphasis added).
As previously cited, “neither the particular motivation nor the avowed
purpose of the [Appellants] controls” in an obviousness analysis. KSR, 550
U.S. at 419. Thus, we find a preponderance of the evidence supports the
Examiner’s legal conclusion of obviousness, regardless of whether elements
26 and 28 depicted in Frenzel (Fig. 1) are half-mirrors, prisms, or lens, or
some combination thereof.
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As depicted in Frenzel’s Figure 1, light passing from light source 5
through element 26 (e.g., a lens) is reflected off windshield 40 of the motor
vehicle, before passing through element 26 (e.g., a lens). The same light
path is applicable for element 28, even assuming arguendo that element 28
is a half-mirror or beam splitter as argued by Appellants. (Reply Br. 3).
Because the light emitted from light source 5 is reflected off
windshield 40 before passing through either element 26 or 28, we find the
evidence cited by the Examiner (Frenzel, Fig. 1, elements 26 and 28; Non-
Final Act. 4; Ans. 10) sufficiently depicts structures capable of performing
the contested function, such that the natural result flowing from the
structural arrangement depicted in FrenzeFs Figure 1 would have resulted in
the performance of the questioned function. Therefore, we conclude the
contested functional limitation would have been obvious under § 103. PAR
Pharm., Inc. 773 F.3d at 1194—95.
For the aforementioned reasons, we are not persuaded of error
regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness for ah contested issues on appeal. We find the
Examiner’s conclusion of obviousness is supported by a preponderance of
the evidence. Accordingly, we sustain the rejection of representative claim
16.
Remaining Claims
Appellants advance no separate, substantive arguments regarding the
remaining claims on appeal. (App. Br. 6). Arguments not made are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, claims 17—30 fall with
representative claim 16. Accordingly, we sustain the Examiner’s rejection
of the remaining claims on appeal.
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DECISION
We affirm the Examiner’s rejection of claims 16—30 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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