Ex Parte KUJI et al

Patent Trial and Appeal Board

Nov 29, 2018

15114202 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/114,202 07/26/2016
26304 7590 12/03/2018
KATTEN MUCHIN ROSENMAN LLP
575 MADISON A VENUE
NEW YORK, NY 10022-2585
FIRST NAMED INVENTOR
Takuya KUJI
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.
SCED 25.842 9295
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
nycuspto@kattenlaw.com
samson.helf gott@kattenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKUY A KUJI, YUICHI MACHIDA, TAKESHI Y AMAGISHI,
KANAME KOSUGI, and JUN SAKAMOTO
Appeal2018-004713
Application 15/114,202
Technology Center 2800
Before DONNA M. PRAISS, N. WHITNEY WILSON, and
AVEL YN M. ROSS, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
April 5, 2017 decision finally rejecting claims 16, 17, and 19--22. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 The Appellant is the Applicant, Sony Interactive Entertainment Inc., which
is also identified as the real party in interest (Appeal Br. 2).
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Application 15/114,202
CLAIMED SUBJECT MATTER
Appellant's disclosure is directed to a stereoscopic object formed
from first and second sheets that transmit infrared radiation (Spec. ,r 9). A
rear face of the first sheet is opposed to a front face of the second sheet (id.).
An information code is marked on a front or rear face of the second layer
using an infrared absorbing or reflecting material (id.). Details of the
claimed invention are set forth in independent claims 16, 20, and 22; claim
16 is exemplary and reproduced below from the Claims Appendix of the
Appeal Brief:
16. A stereoscopic object made from a material that transmits
infrared radiation, the stereoscopic object comprising:
a front layer covered with a material that transmits
infrared radiation and does not transmit visible radiation;
a rear layer covered with a material that absorbs infrared
radiation; and
a code section formed on the [sic] a front surface of the
rear layer made from an infrared reflecting material.
REJECTIONS
I. Claims 16, 17 and 20-22 are rejected under 35 U.S.C. § 103 as
unpatentable over Venkatesha 2 in view of Lee. 3
II. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable
over Venkatesha in view of Lee, and further in view ofHwang. 4
2 Venkatesha et al., US 2014/0209685 Al, published July 31, 2014.
3 Lee et al., US 2014/0267760 Al, published Sept. 18, 2014.
4 Hwang et al., US 2013/ 0020393 Al, published Jan. 24, 2013.
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DISCUSSION
Because we decide this appeal based on an issue common to both of
the rejections, we focus our discussion on the rejection of claim 16 over
Venkatesha in view of Lee.
The Examiner finds that Venkatesha teaches a stereoscopic object
made from a material that transmits infrared radiation (Final Act. 2, citing
Venkatesha ,r 15). The Examiner further finds that Venkatesha teaches a
layer covered with a material that absorbs infrared radiation and a code
section made from an infrared reflecting material (Final Act. 3). The
Examiner also finds that V enkatesha does not disclose the front layer being
infrared transmitting and the rear layer being infrared absorbing, but that Lee
teaches these features (Final Act. 3, citing Lee ,r 8). According to the
Examiner, it would have been obvious to incorporate this feature of Lee into
Venkatesha's object, because such a combination would aid in allowing only
desired wavelengths through (Final Act. 3).
Appellant argues, inter alia, that the rejection should be reversed
because Lee and Venkatesha are non-analogous art (Appeal Br. 3).
In order to be properly relied upon in an obviousness analysis, a prior
art reference must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (i) the reference must be from the same field of
endeavor as the claimed invention; or (ii) the reference must be reasonably
pertinent to the particular problem with which the inventor is involved.
Innovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011 ). "A reference is reasonably pertinent if it, as a result of its subject
matter, 'logically would have commended itself to an inventor's attention in
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considering his problem."' K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364,
1375 (Fed. Cir. 2012) (citing Innovention Toys, 637 F.3d at 1321).
Appellant argues that Lee is not in the same field of endeavor as
Venkatesha (Appeal Br. 3--4). In particular, Appellant contends that Lee is
directed to a permanent filter for use in cell phones to block lens flare, which
is not the same field of endeavor as Venkatesha, which is directed to covert
bar code pattern design (Appeal Br. 3--4).
Appellant's argument in this regard is persuasive. The Examiner
states that the references are in the same field of endeavor because each
"describe infrared filters" (Ans. 5). However, even if the Examiner's
statement were supported by the record, it would not support a determination
that the references were in the same field of endeavor. (We discuss below
whether the references are reasonably pertinent to the problem with which
the inventors were concerned). In this case, Venkatesha is directed to
"[ d]evices, methods, and systems for covert bar code pattern design and
decoding" (Venkatesha, Abstract). In our judgment, this is not in the same
field as Lee, which is directed to an infrared light filter for a cell phone
camera. Bar code pattern design and infrared light filters for cell phone
cameras are not in the same field.
With regard to the second prong of the analogous art test, the
Examiner contends that because both references describe infrared filters, a
person of skill in the art seeking information about infrared filtering would
have looked at both references (Ans. 6). The analogous-art test requires a
showing a reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was concerned
in order to rely on that reference as a basis for rejection. In re Oetiker, 977
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Application 15/114,202
F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being
reasonably pertinent to the problem based on the judgment of a person
having ordinary skill in the art. Id. ("[I]t is necessary to consider 'the reality
of the circumstances, '-in other words, common sense-in deciding in
which fields a person of ordinary skill would reasonably be expected to look
for a solution to the problem facing the inventor.") (quoting In re Wood, 599
F.2d 1032, 1036 (CCPA 1979)); In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006); see also In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) ("A
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem.").
The Examiner determines that "because the cited art discloses infrared
filters and because infrared filters are part of the claimed invention, the cited
art would have 'logically ... commended itself to an inventor's attention in
considering his problem"' and, therefore, that the art is "reasonably
pertinent" and hence properly combined (Ans. 6-7).
Appellant argues that Venkatesha does not relate to or use the term
infrared filters (Reply Br. 2). The Examiner cites the following passage of
V enkatesha as support for the finding that V enkatesha discloses an infrared
filter: "the detector code can include consecutive NIR [ near infrared]
absorptive and/or NIR reflective materials" (Ans. 6, citing Venkatesha ,r 26).
According to the Examiner, these consecutive NIR absorptive and reflective
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materials "can be used to allow certain wavelengths of light through" (Ans.
6, citing Venkatesha ,r 28).
However, Venkatesha describes the use of covert (i.e., not visible to
the human eye) barcodes, which are made up of alternating strips of NIR
absorptive and reflective material, as shown in FIG. la:
100~
102·1 104 102·2
Fig. IA shows a bar code having a pattern design in accordance with the
disclosure of Venkatesha.
Thus, the "consecutive NIR absorptive and/or NIR reflective
materials" cited by the Examiner are in the same layer relative to the
incoming radiation, shown in Figure IA above. Accordingly, contrary to the
Examiner's findings, the consecutive absorptive and reflective materials do
not act as a filter of infrared radiation.
As a consequence, we conclude that the preponderance of the
evidence of record does not support the Examiner's finding that Venkatesha
discloses infrared filters. Because the Examiner's determination that
Venkatesha "is reasonably pertinent to the claimed invention" is based on
this erroneous finding, we conclude that Appellant has persuasively
demonstrated (in combination with our conclusion the references are not in
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the same field of endeavor as the claimed invention) that Venkatesha and
Lee are non-analogous art.
Accordingly, we reverse each of the rejections, as each relies on the
combination of Venkatesha and Lee.
CONCLUSION
We REVERSE the rejection of claims 16, 17 and 20-22 under
35 U.S.C. § 103 as unpatentable over Venkatesha in view of Lee.
We REVERSE the rejection of claim 19 under 35 U.S.C. § 103 as
unpatentable over Venkatesha in view of Lee, and further in view of Hwang.
REVERSED
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