Ex Parte Kadohara

Patent Trial and Appeal Board

Jun 27, 2016

13407090 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/407,090 02/28/2012
26272 7590 06/29/2016
PATENT DOCKET CLERK
COWAN, LIEBOWITZ & LATMAN, P.C.
114 WEST 47th STREET
21st FLOOR
NEW YORK, NY 10036
FIRST NAMED INVENTOR
Terutake KADOHARA
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.
B588-554A (25792.107) 2034
EXAMINER
CUTLER, ALBERT H
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
AXC@CLL.COM
DXO@CLL.COM
RAM@CLL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERUTAKE KADOHARA
Appeal2014-009776
Application 13/407,090
Technology Center 2600
Before JASON V. MORGAN, MELISSA A. HAAPALA, and
NABEEL U. KHAN, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 6-11. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Appeal2014-009776
Application 13/407,090
CLAHvIED Il'IJVENTION
"The present invention relates to an image sensing apparatus which
senses an object image." Spec. p. 1, 11. 11-12. Independent claim 6,
reproduced below, is illustrative of at-issue subject matter (emphasis added).
4-5.
6. An image sensing apparatus comprising:
an image sensing element includes a first light receiving
area and a second light receiving area, wherein the first light
receiving area is formed on an image pickup surface of a
semiconductor substrate by a first divisional joint exposure
operation and the second light receiving area is formed on an
image pickup surface of the semiconductor substrate by a second
divisional joint exposure operation, wherein pixel signals
obtained by the first light receiving area and the second light
receiving area are read out from the image sensing element via a
same channel;
a correction device which corrects difference between
output levels of pixel signals output from the first light receiving
area via the same channel and output levels of pixel signals
output from the second light receiving area via the same channel,
wherein the difference between levels of the signals is a level
difference caused by a shift between the first divisional joint
exposure operation and the second divisional joint exposure
operation; and
a control device which controls to write a signal corrected
by said correction device to a memory without classification
between the pixel signals output from the first light receiving
area and the pixel signals output from the second light receiving
area.
OBJECTION AND REJECTIONS
Claim 6 stands objected to because of lack of clarity. Non-Final Act.
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Application 13/407,090
_..,.,., • / 1 1 1 , "1 • , "1 "1 - ,_ TT r"I ,-..,., n 1 1 - r- , "1 lAanns b-11' stanas reJectea unaer j) u.:s.c. s l lL, nrst paragrapn,
as failing to comply with the written description requirement. Non-Final
Act. 5-6.
Claims 6-9 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saito (US 7,042,491 B2; iss. May 9, 2006) and
Matsumura (US 4,560,863; iss. Dec. 24, 1985). Non-Final Act. 6-11.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saito, Matsumura, and Lin (US 6,069,973; iss. May 30,
2000). Non-Final Act. 11-12.
ISSUES
Appellant's contentions present us with the following issues:
A) Did the Examiner err in objecting to claim 6 because a control
device which controls to write a signal corrected by said correction device
to a memory without classification between the pixel signals output from the
first light receiving area and the pixel signals output from the second light
receiving area ("without classification" limitation) lacks clarity and
precision?
B) Did the Examiner err in finding the Specification lacks support for
the "without classification" limitation?
C) Did the Examiner err in finding the combination of Saito and
Matsumura, and in particular Saito, teaches or suggests a first divisional
1 The Examiner only lists claim 6 as being rejected under 35 U.S.C. § 112,
first paragraph. Non-Final Act. 5-6; Ans. 3--4. However, claims 7-11 also
contain the "without classification" limitation by virtue of their dependency.
We find the Examiner's failure to identify the dependent claims in the
header of the rejection is harmless error.
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Appeal2014-009776
Application 13/407,090
joint exposure operation and a second divisional joint exposure operation
("divisional joint exposure" limitations), as recited in claim 6? 2
ANALYSIS
First Issue-Claim 6 Objection
Claim 6 is objected to because the "without classification" limitation
lacks clarity and precision. Non Final Act. 4-5. The Examiner further finds
"the metes and bounds" of the limitation cannot be determined and cites to
the Manual of Patent Examining Procedure (MPEP) § 2 l 73.05(a)(I). Ans.
12.
The Board normally only considers matters affecting the merits of the
invention, i.e., the rejections of claims. See 37 C.F.R. § 41.3l(c); MPEP
§ 1201 ("The Board will not ordinarily hear a question that should be
decided by the Director on petition .... ") However, the Board may address
a rejection improperly characterized as an objection, i.e., a de facto rejection.
See In re Haas, 486 F.2d 1053, 1056 (CCPA 1973) ("An examiner's adverse
action of this nature is a rejection, a denial of substantive rights. Review
thereof must fall within the jurisdiction of the board"); see also In re
Searles, 422 F.2d 431, 435 (CCPA 1970) (holding an Examiner's adverse
decision is properly reviewable by the Board when the review requires the
exercise of technical skill and legal judgement in order to evaluate the facts
presented, interpret the requirements of the relevant statute, and weigh the
facts against those requirements). We determine the Examiner's objection is
2 The identified issue is dispositive of the rejections under 35 U.S.C.
§ 103(a). We therefore do not reach other issues presented by Appellant's
contentions against this rejection.
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Appeal2014-009776
Application 13/407,090
a de facto rejection under 35 U.S.C. § 112, second paragraph, and requires
the exercise of legal judgement to evaluate the facts presented and interpret
the statutory requirements. Accordingly, we determine the objection is
properly before us.
The Examiner finds the "without classification" limitation lacks metes
and bounds because:
Appellant's original disclosure does not teach what
"classification" between pixel signals means. . . . The notion of
classifying between pixel signals has many different meanings in
the art, and one having ordinary skill in the art at the time of the
invention would not be able to discern what meaning the
"classification" recited in claim 6 pertains to without any
corresponding discussion of "classification" in the original
disclosure. Therefore, claim 6 lacks clarity and precision ....
The metes and bounds of what storing pixel signals "without
classification" means cannot be determined based on the lack of
any discussion as to what "classification" entails in the original
specification and drawings.
Ans. 11-12.
Appellant contends claim 6' s "without classification" limitation
would be understood as follows:
[The limitation c ]learly refers to controlling the writing of data
so that pixel signals are written into a memory without
differentiating, or classifying, between pixel signals that are
output from different light receiving areas. That is, after the pixel
signals accumulated by different light receiving areas are
corrected, these pixel signals are written into the memory without
distinguishing between pixel signals output from one light
rece1vmg area and pixel signals output from another light
rece1vmg area.
App. Br. 12-13.
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Appeal2014-009776
Application 13/407,090
Section 112, second paragraph, of 35 U.S.C. requires the applicant to
distinctly claim the subject matter which the applicant regards as his
invention. A claim fails to meet the statutory requirement if the language in
the claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention. In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014). We agree with Appellant that the term
"classify" has an ordinary and customary meaning, which is commonly
understood as "to arrange in classes" or "to assign ... to a category." Reply
Br. 2. Thus, the "without classification" limitation precludes arranging or
categorizing the pixel signals, when writing the signals to memory, based on
whether the signals are sourced from the first light receiving area or second
light receiving area. Although the claims do not preclude classifying on
other characteristics, such an omission does not render the claim unclear, but
simply broad, and "breadth is not to be equated with indefiniteness." In re
Miller, 441F.2d689, 693 (CCPA 1971).
Appellant persuades us the Examiner errs in finding the "without
classification" limitation is unclear. Accordingly, we do not sustain the
objection of claim 6.
Second Issue-35 U.S.C. § 112, First Paragraph
The Examiner finds Appellant's Specification does not provide
adequate support for the "without classification" limitation so to reasonably
convey to one skilled in the relevant art that the inventor had possession of
the claimed invention. Non-Final Act. 5-6. Appellant identifies the
Specification's page 10, line 10-page 11, line 6 and page 11, lines 7-13 for
written description support. App. Br. 13-14. Appellant contends these
disclosures convey all pixel signals, i.e., sourced from both light receiving
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Appeal2014-009776
Application 13/407,090
areas, as stored to a singular frame memory and as thus not classified
according to the light receiving areas. Id.
The "without classification" limitation is a negative limitation.
Negative claim limitations are adequately supported when the specification
describes a "reason to exclude the relevant limitation." Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
The sections of the Specification cited by Appellant describes storing
the pixel data in frame memory, transferring the contents of the pixel
memory to a camera digital signal processor, and temporarily storing the
contents of the frame memory in a work memory. Spec. p. 10, 1. 10 to p. 11,
1. 13. Contrary to Appellant's argument, the cited sections do not provide a
reason to exclude writing to memory based on a classification between pixel
signals output from the first or second light receiving area. Thus, Appellant
fails to persuade us that the Specification provides written description
support for the "without classification" limitation. Accordingly, we sustain
the rejection of claim 6 under 35 U.S.C. § 112, first paragraph, and of claims
7-11, which contain the same recitation.
Third Issue-35 U.S.C. § 103(a)
The Examiner relies on Saito to teach the "divisional joint exposure"
limitations recited in claim 6. Ans. 15-16. In particular, the Examiner
relies on Saito's sensor arrays l la, l lb as teaching claim 6's "divisional
joint exposure" limitations because the "light receiving areas (11 a, 11 b)
... are separate line sensor portions ... and require separate lenses[.]" Ans.
15-16 (citing Saito col. 4, 11. 8-21; Figs. 1, 7); see also Non-Final Act. 6-7.
Appellant argues the use of separate line sensors does not teach or suggest
divisional joint exposure operations. App. Br. 15-16.
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Application 13/407,090
Before addressing the contentions, we first address the scope of the
"divisional joint exposure" limitation. Figure 8 of Appellant's Specification
explains joint exposure. Spec. p. 8, 1. 19. The description of Figure 8
notably explains:
[Figure] 8 schematically shows one image sensing element such
as a CCD which is constituted by joining in three-divisional
exposure (to be referred to as joint exposure hereinafter).
In [Figure] 8, one image sensing element is divided into
three, left, center, and right regions. The regions are exposed to
individual masks and finally joined into one image sensing
element. In [Figure] 8, joint exposure is executed in a vertical
structure of a semiconductor layer, on-chip color fil[t]er layer,
and on-chip microlens layer to constitute an image sensing
element equal in size to the film.
Spec. p. 4, 1. 26-p. 5, 1. 10. The Specification further describes a resulting
"joint" as contiguously abutting the image portions respectively detected by
the joined imaging regions, stating: "As shown in [Figure] 2A, the image
sensing element undergoes joint exposure at two, right and left joints, and
one image sensing element is constituted by joining three, left, center, and
right regions." Id. at p. 12, 11. 20-23. In light of the description of the
Specification, we detennine "divisional joint exposure operation" requires
divisional exposure operations of abutting Uoint) image regions of a singular
image.
Saito discloses a rangefinder that determines the deviation between
respective images of stereoscopically-configured sensor arrays l la, 11 b (i.e.,
between images capturing the same object but detected from slightly
different positions) and calculates the distance to the imaged object as a
function of the deviation. Saito col. 1, 11. 14-55; col. 5, 11. 25-49. We agree
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Application 13/407,090
with Appellant that the cited sections of Saito describe the separate line
sensors each "sense an image of the same object." App. Br. 16 (emphasis
added). The Examiner has not shown Saito's cited sensor arrays l la, l lb
constitute an image sensing element whereby distinct imaging regions are
configured to collectively detect a singular image; that is, so as to
respectively detect contiguous image portions Uoint).
For the reasons stated above, we agree with Appellant that the
Examiner has not shown Saito teaches claim 6's "divisional joint exposure"
limitation. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejections
of: (i) claim 6 over Saito and Matsumura; (ii) dependent claims 7-9 and 11
over Saito and Matsumura; and (iii) dependent claim 10 over Saito,
Matsumura, and Lin.
DECISION
The decision of the Examiner objecting to claim 6 is reversed.
The decision of the Examiner rejecting claims 6-11under35 U.S.C.
§ 112, first paragraph, is affirmed.
The decision of the Examiner rejecting claims 6-11 under 35 U.S.C.
§ 103(a) is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision rejecting claims 6-
11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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