Ex Parte IWAI et al

Patent Trial and Appeal Board

Jun 6, 2016

12485437 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/485,437 06/16/2009
23628 7590 06/08/2016
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
Junichi IW AI
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.
Sl459.71566USOO 3212
EXAMINER
BECK,LERON
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
06/08/2016 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNICHI IW AI, KEISUKE HISANO, and SEIJI OURA
Appeal2015-000382
Application 12/485,437
Technology Center 2400
Before MAHSHID D. SAADAT, JOHN A. EVANS, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-9, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is Sony Corporation.
(App. Br. 2.)
Appeal2015-000382
Application 12/485,437
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to "a stereoscopic image projector and
an adaptor for the stereoscopic image projector." (Spec. 1.) Claim 1 is
illustrative, and is reproduced below:
1. A stereoscopic image projector comprising
an image generator configured to generate three left-eye
wavelength-specific images and three right-eye wavelength-
specific images having different wavelengths by modulating
three light beams having the different wavelengths in spatial
modulators;
an image combiner configured to combine the three left-
eye wavelength-specific images into a single left-eye combined
image and the three right-eye wavelength-specific images into a
single right-eye combined image, wherein both the left-eye
combined image and the right-eye combined image exit a single
exit surface of the image combiner;
a single relay lens configured to receive the left-eye
combined image and the right-eye combined image from the
single exit surf ace of the image combiner and focus a real
image of the left-eye combined image and a real image of the
right-eye combined image that are separated from each other;
a light guide to receive the real image of the left-eye
combined image and the real image of the right-eye combined
image from the relay lens and configured to separately guide
the real image of the left-eye combined image and the real
image of the right-eye combined image in a direction away
from the exit surface of the relay lens;
a left-eye image projection lens configured to project the
real image of the left-eye combined image guided through the
light guide on a screen so that a left-eye image is focused; and
a right-eye image projection lens configured to project
the real image of the right-eye combined image guided through
the light guide on the screen so that a right-eye image is
focused.
2
Appeal2015-000382
Application 12/485,437
Rejections on Appeal
Claims 1-3 and 6-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silverstein (US 2007/0132953 Al; pub. June 14, 2007)
("Silverstein"), Peterson et al. (US 7 ,031,063 B2; issued Apr. 18, 2006)
("Peterson"), Itoh et al. (US 6,310, 723 B 1; issued Oct. 30, 2001) ("Itoh"),
and Kobayashi et al. (US 7,245,430 B2; issued July 17, 2007)
("Kobayashi"). (See Final Office Action (mailed Oct. 31, 2013) ("Final
Act.") 2-17.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silverstein, Peterson, Itoh, Kobayashi, and Inaba
(US 5,947,575; issued Sept. 7, 1999) ("Inaba"). (See Final Act. 10---11.)
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silverstein, Peterson, Itoh, Kobayashi, and Horimai et al.
(US 5,917,798; issued June 29, 1999) ("Horimai"). (See Final Act. 11-12.)
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silverstein, Peterson, Itoh, Kobayashi, and Funfschilling
et al. (US 7,126,654 B2; issued Oct. 24, 2006) ("Funfschilling"). (See Final
Act. 12-14.)
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silverstein, Marks (US 4,596,451; issued June 24, 1996)
("Marks"), Suzuki (US 5,936, 772; issued Aug. 10, 1999) ("Suzuki"),
Kobayashi, and Forrester et al. (US 2003/0120156 Al; Pub. June 26, 2003)
("Forrester"). (See Final Act. 14--17.)
3
Appeal2015-000382
Application 12/485,437
ANALYSIS
Claims 1-8
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
With respect to claim 1, the Examiner finds that Silverstein teaches:
a left-eye image projection lens configured to project the real
image of the left-eye combined image ... ([0068], Fig. 7 shows
a left eye image projector lens for element 2201. This lens
receives the combined image and projects the image on the
screen); and
a right-eye image projection lens configured to project the
real image of the right-eye combined image ... ([0068], Fig. 7
shows a Right eye image projector lens for element 220r. This
lens receives the combined image and projects the image on the
screen).
(Final Act. 6.) Fig. 7 is reproduced below:
621
FIG. 7
Fig. 7 depicts two projection lenses, 621and62r, within modules 2201 and
220r, respectively. Indeed, paragraph 68 of Silverstein teaches that "[ e Jach
4
Appeal2015-000382
Application 12/485,437
modulation apparatus 2201and220r has a corresponding projection lens 621
and 62r." The Examiner also finds that Silverstein teaches:
a single lens configured (Fig. 2, element 62) to receive the left-
eye combined image and the right-eye combined image from
the single exit surface of the image combiner (Silverstein
shows in fig 2 a relay lens, element 62, that receives the
combined left and right eye images (element 64).
(Final Act. 6.) Here the Examiner is pointing to element 62 of Fig. 2 for the
single relay lens as recited in claim 1. Fig. 2 is reproduced below:
40
230
FIG. 2
Fig. 2 depicts an embodiment with one projection lens.
Appellants contend that the Examiner fails to point to a single relay
lens and the left- and right-projection lenses as recited in claim 1. (App. Br.
9-11.) Specifically, Appellants contend that elements 621 and 62r of Fig. 7
and element 62 of Fig. 2 are different representations of the same lens. (Id.)
Therefore, according to Appellants, elements 621 and 62r and element 62 "of
Silverstein cannot teach both the 'single relay lens' and the 'projection
5
Appeal2015-000382
Application 12/485,437
lens[ es]' of claim 1, which are two clearly distinct lenses within the claimed
projector." (App. Br. 10.) The Examiner disagrees that projection lenses
621 and 62r in Fig. 7 are the same as projection lens 62 in Fig. 2. (Ans. 17-
18.) We agree with Appellants that the Examiner fails to point to a "single
relay lens" and the left- and right- projection lenses of claim 1 because
element 62 in Fig. 2 and elements 621 and 62r in Fig. 7 are different
representations of the same lens. It is improper for an Examiner to use a
single structure/ element in the cited reference to disclose two separate
claimed elements. Ex parte Weideman, No. 2008-003454; App. No.
10/035,334, slip op. 7 (BPAI Jan. 27, 2009) ("[I]t is improper to rely on the
same structure in the Lohr reference as being responsive to two different
elements ... in claim 1. "). The Examiner suggests that Fig. 2 and Fig. 7 each
teach a different embodiment, and therefore do not depict the same lens.
(Ans. 17-18.). However, even under this reading, we are not persuaded that
"these elements [are] arranged as in the claim under review.'' In re Bond,
910 F.2d 831, (Fed. Cir. 1990). (See also Reply Br. 5-6.) Moreover, the
Examiner has not provided any rationale for why a person of ordinary skill
in the art would arrange these elements as in claim 1. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.").
The Examiner further determines that "there is another lens, element
38 [in Fig. 4], which can be interpreted as a relay lens that is distinct [from]
the projection lenses in the same projection apparatus." (Ans. 18.) Fig. 4 is
reproduced below:
6
Appeal2015-000382
Application 12/485,437
FIG. 4
Fig. 4 is a block diagram showing a left- or right-channel modulation
apparatus. Appellants contend that even if element 38 is a relay lens, Fig. 4
would still not teach "a single relay lens" because Fig. 4 teaches two relay
lenses. (Reply 6.) Specifically, element 38 is only associated with the left-
eye image, therefore, there will necessarily be another lens associated with
the right-eye image. (Id.; Silverstein i-fi-159-60.) We agree with Appellants
that Fig. 4 also does not teach the "single relay lens" and the "projection
lens[ es]" of claim 1. 2
2 Since we agree with at least one of the arguments advanced by Appellants,
we need not reach the merits of Appellants' other arguments.
Because we do not sustain the Examiner's rejection for the reasons discussed
herein, we need not address Appellants' further arguments. See Beloit Corp.
v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on "a single
dispositive issue").
7
Appeal2015-000382
Application 12/485,437
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1. Thus, we also do not sustain the 35 U.S.C. § 103(a)
rejection of claim 1, or of claims 2-8 (which depend from claim 1 ).
Claim 9
The Examiner finds that lens 62 of Fig. 2 in Silverstein teaches "a
single relay lens configured to receive ... " as recited in claim 9. (Final Act.
14.) Appellants contend that this limitation is missing because "lens 62 of
FIG. 2 is actually two lenses 621 and 62r, one for each of the two images
(i-f68), as shown in FIG. 7, FIG. 14 and FIG. 15." (Id.) As discussed above
regarding claim 1, we agree with Appellants that element 62 in Fig. 2 and
elements 621 and 62r in Fig. 7 are different representations of the same lens.
Therefore, for the foregoing reasons, we are persuaded of Examiner error in
the rejection of claim 9 and do not sustain the 35 U.S.C. § 103(a) rejection
of claim 9.
DECISION
The decision of the Examiner to reject claims 1-9 is reversed.
REVERSED
8