Ex parte Kusaka

Board of Patent Appeals and Interferences

Oct 17, 2000

08506804 (B.P.A.I. Oct. 17, 2000)

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The opinion in support of the decision being entered
today was not written for publication journal and is
not precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte YASUSHI KUSAKA
________________
Appeal No. 1998-1901
Application 08/506,804
________________
ON BRIEF
________________
Before JERRY SMITH, RUGGIERO and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 2, 4, 5, 7-10, 12-
14, 16, 17 and 19-25. Claims 3, 6, 11, 15 and 18 have been
indicated to contain allowable subject matter. A first
amendment after final rejection was filed on August 21, 1997
and was denied entry
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by the examiner. A second amendment after final rejection was
filed on September 23, 1997 and was entered by the examiner.

The disclosed invention pertains to the field of image
sensing devices. More particularly, the invention converts a
photoelectric signal indicative of incident light into an
analog signal which is logarithmically proportional to the
photoelectric signal. The analog signal is further adjusted
before being converted to a digital signal. This technique is
described as improving white balance correction of image
signals.
Representative claim 1 is reproduced as follows:
1. An image sensing device comprising:
a photoelectric signal generator which is sensitive to an
incident light and which generates a photoelectric signal
proportional to an intensity of the incident light;
a converter which is connected with said photoelectric
signal generator to receive the photoelectric signal and to
generate a first analog signal which is logarithmically
proportional to the photoelectric signal;
a signal adjusting device which is connected with said
converter to receive the first analog signal and to adjust a
direct-current component of the first analog signal in order
to generate a second analog signal; and
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an A/D converter which is connected with said signal
adjusting device to generate a digital signal based on said
second analog signal.
The examiner relies on the following references:
Cadet et al. (Cadet) 5,138,149 Aug. 11, 1992
Miyatake et al. (Miyatake) 5,241,575 Aug. 31, 1993
The following rejections are before us on appeal:
1. Claim 14 stands rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the invention.
2. Claims 1 and 14 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by the disclosure of Cadet.
3. Claims 2, 4, 5, 7, 16, 17, 19-22, 24 and 25 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the
teachings of Cadet in view of well known prior art.
4. Claims 8 and 23 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Cadet in view
of Miyatake.
5. Claims 9, 10, 12 and 13 stand rejected under 35
U.S.C.
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Application 08/506,804
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§ 103 as being unpatentable over the teachings of Miyatake in
view of Cadet.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the prior art rejections. We have,
likewise, reviewed and taken into consideration, in reaching
our decision, the appellant’s arguments set forth in the
briefs along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that claim 14 is in compliance with the second
paragraph of 35 U.S.C. § 112. We are also of the view that
none of the claims on appeal is properly rejected based on the
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applied prior art. Accordingly, we reverse.
We consider first the rejection of claim 14 under the
second paragraph of 35 U.S.C. § 112. The examiner observes
that if the first through fourth steps are repeated, then the
process will be ongoing and never render a final output result
[answer, page 5]. Appellant responds that the repeating step
is not repeated so that the method ends after nine steps are
performed
[brief, pages 10-11]. The examiner responds that the
repetition of the first through fourth steps creates two
“photoelectric signals,” two “first analog signals,” two
“second analog signals” and two “digital signals,” which
renders the claim indefinite [answer, pages 18-19]. Appellant
responds that there is only one
signal present at the time each of the first through fourth
steps is performed [reply brief, page 7].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
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disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
We will not repeat what is already argued in detail in
appellant’s briefs because we completely agree with the
position argued by appellant. We agree with appellant that
the artisan
having considered the specification of this application would
have no difficulty ascertaining the scope of the invention
recited in claim 14. Therefore, the rejection of claim 14
under the second paragraph of 35 U.S.C. § 112 is not
sustained.
We now consider the rejection of claims 1 and 14 under
35 U.S.C. § 102(b) as being anticipated by the disclosure of
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Cadet. Anticipation is established only when a single prior
art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
Each of claims 1 and 14 recites a device or step of
generating “a first analog signal which is logarithmically
proportional to the photoelectric signal.” Appellant argues
that there is no logarithmic conversion disclosed in Cadet.
The examiner argues that the output of photodiode 2 is
inherently a logarithmic function of the input, or current to
voltage
converter 5 has a logarithmic response, or phase sensitive
detector 6 achieves a logarithmic response by selection of the
gain of programmable gain amplifier 22.
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Once again, rather than burden this record, we simply
refer to appellant’s briefs. Each of the examiner’s positions
is without merit for the reasons identified and explained by
appellant. Therefore, we do not sustain the rejection of
claims 1 and 14 as anticipated by Cadet.
The rejection of claims 2, 4, 5, 7, 8, 16, 17 and 19-
25 under 35 U.S.C. § 103 fundamentally relies on the
examiner’s incorrect understanding of the disclosure of Cadet.
Since Cadet does not disclose that which the examiner
attributes to it, the examiner has failed to establish a prima
facie case of the obviousness of these claims. Miyatake does
not overcome the deficiencies of Cadet as applied to claims 8
and 23. Therefore, we do not sustain the rejection of these
claims under 35 U.S.C.
§ 103.
The rejection of claims 9, 10, 12 and 13 under 35
U.S.C. § 103 is based on Miyatake as the primary reference in
view of Cadet. We agree with appellant that the examiner has
provided no reasonable motivation to combine the teachings of
Miyatake with the teachings of Cadet, and the examiner has not
demonstrated how such a substitution would result in the
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claimed invention anyway. Therefore, we do not sustain the
examiner’s rejection of claims 9, 10, 12 and 13.
In summary, we have not sustained any of the
examiner’s rejections of the claims on appeal. Accordingly,
the decision of the examiner rejecting claims 1, 2, 4, 5, 7-
10, 12-14, 16, 17 and 19-25 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
JOSEPH F. RUGGIERO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JS/ki
Appeal No. 1998-1901
Application 08/506,804
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