Ex Parte Kerschner

Board of Patent Appeals and Interferences

Nov 22, 2002

08888339 (B.P.A.I. Nov. 22, 2002)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD K. KERSCHNER
____________
Appeal No. 2000-0930
Application No. 08/888,339
____________
ON BRIEF
____________
Before BARRETT, DIXON, and BARRY, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on the Request for Rehearing, filed Aug. 15, 2002, from our
decision affirming-in-part the examiner's final rejection of claims 1-28 under 35 U.S.C.
§§ 102 and 103.
We have carefully considered appellant’s arguments in the request, however, we
are not persuaded that our decision on the record before us was in error. Appellant
argues at page 7 of the Request for Rehearing that the conclusion paragraph does not
agree with the text of the decision. We agree with appellant that the conclusion
Appeal No. 2000-0930
Application No. 08/888,339
2
paragraph erroneously indicated claims 25 and 27 as being reversed, but it was clear
from the text of the decision at page 6 that we sustained the examiner’s rejection based
upon our finding of an aperture stop in Vogeley.
BACKGROUND
The appellant's invention relates to a catadioptric lens system for a scanning
device. An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. An optical assembly for a photoelectric imaging apparatus in which a light path
extends between an object which is to be imaged and a photosensor array, said optical
assembly comprising:
said photosensor array;
at least one optical component arranged along said light path;
said at least one optical component including a lens; and
wherein said lens comprises a catadioptric lens.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Vogeley 4,003,642 Jan.18, 1977
Claims 1-4 and 12-16 were rejected under 35 U.S.C. § 103 as being anticipated
by Vogeley. Claims 5-11 and 17-28 were rejected under 35 U.S.C. § 103 as being
unpatentable over Vogeley.
Appeal No. 2000-0930
Application No. 08/888,339
3
In the decision, we affirmed the decision of the examiner to reject claims 1-3 and
12-15 under 35 U.S.C. § 102; we reversed the decision of the examiner to reject claims
4 and 16 under 35 U.S.C. § 102; we affirmed the decision of the examiner to reject
claims 25 and 27 under 35 U.S.C. § 103, and we reversed the decision of the examiner
to reject claims 5-11 and 17-24, 26 and 28 under 35 U.S.C. § 103.
With this said, appellant argues that we misapprehended the scope of
appellant’s claims, and the independent claims 1 and 12 “require two-dimensional
imaging.” (See Request for Rehearing at page 3.) Appellant argues that In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983) and In re Bond, 910 F.2d
831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990) provide guidance as to interpreting
the claims in light of appellant’s specification. We agree with appellant that claims must
be interpreted in light of the disclosed invention, but we are not willing to extend the
interpretation of elements and limitations that are neither impliedly set forth in the
language of the claim nor expressly recited in the disclosed invention. Appellant has
not identified what specific language in the claims is to be interpreted to limit the
claimed invention to two dimensional imaging. While appellant cites to various
occurrences in the specification of a “scanning device” (Request for Rehearing at pages
4-7), we do not agree that these disclosures change the scope of the claimed invention.
Appellant argues that we found that Vogeley discloses only a one dimensional image,
but that “scanning” involves two dimensional images. (See Request for Rehearing at
Appeal No. 2000-0930
Application No. 08/888,339
4
page 6.) We disagree with appellant. Rather, we found that Vogeley teaches two
dimensional imaging within the optics and the two dimensional image is compressed
into a one dimensional image by the optics. (Decision at page 3.)
We are not persuaded that we erred in our interpretation of the language of
independent claims 1 and 12. Appellant has the burden of identifying a clear error
(points misapprehended or overlooked) in the decision. (See 37 CFR § 1.197(b).) We
find that appellant has not identified any points misapprehended or overlooked in the
decision. Therefore, we decline to modify our decision beyond clarification of the
correct status of dependent claims 25 and 27.
CONCLUSION
In light of the foregoing, the appellant's request for rehearing is granted to the
extent of reconsidering our decision, but is denied with respect to making any change
thereto.
Appeal No. 2000-0930
Application No. 08/888,339
5
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REQUEST FOR REHEARING - DENIED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JD/RWK
Appeal No. 2000-0930
Application No. 08/888,339
6
IP ADMINISTRATION
LEGAL DEPARTMENT 20BN
HEWLETT-PACKARD COMPANY
P O BOX 10301
PALO ALTO, CA 94303-0890