Ex Parte Inukai

Patent Trial and Appeal Board

Aug 8, 2016

11779674 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111779,674 07/18/2007 Hiroaki Inukai
34904 7590 08/10/2016
CANON USA INC INTELLECTUAL PROPERTY DIVISION
15975 ALTON PARKWAY
IRVINE, CA 92618-3731
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10037459US01 2640
EXAMINER
SPINKS, ANTOINETTE T
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
mklein@cusa.canon.com
skalminov@cusa.canon.com
IPDocketing@cusa.canon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROAKI INUKAI
Appeal2014-002305
Application 11/779,674
Technology Center 2600
Before JEAN R. HOMERE, WILLIAM M. FINK, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
FINK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-5, 8, 19, and 20. App. Br. 4.2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The real party in interest is identified as Canon Kabushiki Kaisha. App.
Br. 3.
2 Our decision refers to Appellant's Appeal Brief filed Aug. 19, 2013 ("App.
Br."); the Examiner's Answer mailed Sept. 5, 2013 ("Ans."); Appellant's
Reply Brief filed Nov. 5, 2013 ("Reply Br."); and the original Specification
filed July 18, 2007 ("Spec.").
Appeal2014-002305
Application 11/779,674
STATEMENT OF THE CASE
Appellant's invention relates to an image pickup unit including an
optical low-pass filter. Abstract.
Claim 1 is the independent claim on appeal. Claim 1 is illustrative of
Appellant's invention and is reproduced below, with disputed elements
highlighted for emphasis:
1. An image pickup apparatus comprising:
an image pickup element configured to convert an optical image
of an object into an electrical signal;
an infrared absorption glass which is disposed in front of
the image pickup element;
a monocrystalline plate which is disposed in front of the
infrared absorption glass, wherein the monocrystalline
plate has a high Q value compared with glass;
a vibrating unit configured to vibrate the monocrystalline
plate; and
a holding member configured to hold the monocrystalline
plate and the infrared absorption glass, wherein a rigid
portion of the holding member holds the infrared
absorption glass, wherein the holding member holds the
monocrystalline plate elastically so that only the
monocrystalline plate is vibrated when the vibrating unit
vibrates the monocrystalline plate, and wherein the so that
the infrared absorption glass is not vibrated directly when
the vibrating unit vibrates the monocrystalline plate.
App. Br. 12 (emphasis added).
Claims 1-5, 8, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kawai (US 2005/0174467 Al; Aug. 11, 2005),
Takagi (US 2006/0044447 Al; Mar. 2, 2006), and Scherling (US
2004/0105025 Al; June 3, 2004).
2
Appeal2014-002305
Application 11/779,674
Based on Appellant's arguments, the dispositive issue on appeal is
whether Scherling teaches or suggests, "a monocrystalline plate ... ,
wherein the monocrystalline plate has a high Q value compared with glass"
as recited in independent claim 1. See App. Br. 9-10; Reply Br. 2-3.
ANALYSIS
In rejecting claim 1, the Examiner finds "Kawai-Takagi fails to
explicitly [disclose] wherein the plate is a monocrystalline plate that has a
high Q value compared with glass." Ans. 3. However, citing Scherling's
discussion of a birefringent crystalline quartz plate, the Examiner finds it
would have been obvious to modify Kawai with the monocrystalline plate as
taught by Scherling. Id. at 4 (citing Scherling Abstract, i-f 94).
In response, Appellant contends a person of ordinary skill would not
understand the "birefringent crystalline quartz plate," disclosed in Scherling
to be necessarily monocrystalline or have a high Q value compared with
glass, as claim 1 requires. See App. Br. 9.
The Examiner replies to this argument by noting that Appellant's
claim 2 specifies:
that the monocrystalline plate of claim 1, is a quartz birefringent
plate. This means that a quartz birefringent plate has a high Q
value as compared to glass. Thus, the quartz birefringent plate
of Scherling has a high Q value as compared to glass as well.
Ans. 6-7. Thus, under the Examiner's reasoning, because claim 1 requires a
monocrystalline plate having a high Q value compared with glass, and claim
2 requires the plate of claim 1 to be a birefringent quartz plate, a birefringent
quartz plate-such as disclosed in Scherling-is monocrystalline and has a
high Q value compared to glass.
3
Appeal2014-002305
Application 11/779,674
We do not find this reasoning persuasive. The most than can be
inferred from Appellant's claims is that monocrystalline plates having a high
Q value compared to glass (as in claim 1) can include birefringent quartz
plates having these properties (as in claim 2). However, there is no finding
or explanation that a person of ordinary skill would have understood
Scherling' s birefringent crystalline quartz plate to necessarily teach the
property of being monocrystalline or having a high Q value compared to
glass. For example, Scherling does not use the word monocrystalline or
discuss Q value in discussing "birefringent crystalline quartz plates"
(Scherling i-f 94) or anywhere else. Indeed, the fact that Scherling uses the
word crystalline instead of monocrystalline in conjunction with birefringent
quartz plates may connote "multiple grains" rather than a monocrystalline
structure. Reply Br. 9. On this record, therefore, we find the Examiner's
reasoning and evidence insufficient to support the finding that Scherling, in
combination with Kawai and Takagi, teaches or suggests the disputed
limitation of claim 1. 3
For the foregoing reasons, on this record, we cannot sustain the
Examiner's rejection of claim 1, as well as dependent claims 2-5, 8, 19, and
20.
DECISION
We reverse the Examiner's final rejection of claims 1-5, 8, 19, and
20.
REVERSED
3 In the event of further prosecution, the Examiner may wish to consider
whether additional references discuss the crystallinity properties or Q values
of birefringent quartz plates.
4