Ex Parte Mor et al

Patent Trial and Appeal Board

Feb 13, 2017

13765706 (P.T.A.B. Feb. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/765,706 02/13/2013 Zafrir Mor 1020-1039.3 4910
123590 7590 02/15/2017
n KT TOT FR T P SFR VIFFS T TF>
EXAMINER
P.O. BOX 57651 MONK, MARK T
TEL AVIV, 61576
ISRAEL ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
INFO @DKP AT.CO.IL
daniel@dkpat.co.il
alon@dkpat.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRIMESENSE LTD.1
Appeal 2016-002050
Application 13/765,706
Technology Center 2600
Before BRUCE R. WINSOR, AMBER L. HAGY, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 28—33, 37—42, 46, and 47, which are all of the
pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection within the provisions
of 37 C.F.R. § 41.50(b).
1 Appellant identifies Apple Inc. as the real party in interest. (App. Br. 1.)
The inventors named are Zaffir Mor and Alexander Shpunt.
2 Claims 1—27 have been canceled, and claims 34—36 and 43—45 have been
withdrawn as a result of a restriction requirement. (App. Br. 1.)
Appeal 2016-002050
Application 13/765,706
Introduction
According to Appellant, “[t]he present invention relates generally to
systems and methods for electronic imaging, and specifically to methods of
illumination for enhancing the quality of captured images.” (Spec. 1.)
Claim 28, reproduced below, is exemplary of the claimed subject
28. Optical apparatus, comprising:
a plurality of radiation sources, mounted on a substrate and
configured to emit optical radiation;
a patterning element, comprising a transparency;
collection optics, comprising an array of micro-optics,
which are aligned with the radiation sources so that a respective
micro-optic collects the radiation emitted by each of the radiation
sources and directs the radiation toward the patterning element,
while causing the optical radiation emitted by each of the
radiation sources to pass through a different, respective region of
the transparency so as to form different, respective patterns;
projection optics, which are configured to project the
patterns of the radiation from the patterning element onto a
scene; and
a controller, which is coupled to actuate the radiation
sources sequentially in a pulsed mode, so as to form the different,
respective patterns in succession.
The prior art relied upon by the Examiner in rejecting the claims on
Exemplary Claim
matter:
REFERENCES
appeal is:
Yoshida
Edwards
Shpunt et al.
US 2005/0178950 Al Aug. 18, 2005
US 2006/0044803 Al Mar. 2, 2006
US 2008/0106746 Al May 8, 2008
2
Appeal 2016-002050
Application 13/765,706
REJECTION
Claims 28—33, 37—42, 46, and 47 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shpunt, Edwards, and Yoshida. (Final
Act. 3-15.)
ISSUE
Whether the Examiner erred in combining the teachings of Shpunt
with Edwards and Yoshida in finding the combination teaches or suggests
the invention recited in independent claim 28 and commensurately recited in
independent claim 37.
ANALYSIS
In relation to independent claims 28 and 37, the Examiner finds
Shpunt discloses “a radiation source” and a “patterning element,” in which
the “light source 34 and optical element 36 are used to create a speckle
pattern or other pattern of spots onto object 28 . . . (Final Act. 4 (citing
| 57).) The Examiner also finds:
Shpunt et al discloses structural elements performing a
method of an imaging device projecting light radiated from a
light source through optics, through a patterned element, and
through projection optics onto a subject but does not expressively
[sic: expressly] disclose a plurality of radiation sources,
mounted on a substrate and configured to emit optical radiation;
collection optics, comprising an array of micro-optics, which are
aligned with the radiation sources so that a respective micro­
optic collects the radiation emitted by each of the radiation
sources and directs the radiation while causing the optical
radiation emitted by each of the radiation sources to pass through
a different, respective region and a controller, which is coupled
3
Appeal 2016-002050
Application 13/765,706
to actuate the radiation sources sequentially in a pulsed mode,
so as to form the different, respective patterns in succession ....
(Final Act. 5—6 (emphases added).)
The Examiner finds Edwards discloses “a plurality of radiation
sources” and “collection optics, comprising an array of micro-optics . . . .”
(Final Act. 6 (citing Edwards Figs. 1—3 and Tflf 20-21).) The Examiner
further finds:
Therefore, it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify the circuitry
of Shpunt et al in a manner similar to Edwards. Doing so would
result in the simple substitution of prior art elements to yield
predictable results - namely the ability to provide LED’s on a
substrate to provide an illumination system that reduces the drop
off in flux density as a function of the distance away from the
LED die, as stated by Edwards in paragraph 0024, that would
substitute for light source 34 in Shpunt....
(Final Act. 7.)
The Examiner additionally finds the combination of Shpunt and
Edwards “do[es] not expressively [sic] teach [‘]and a controller, which is
coupled to actuate the radiation sources sequentially in a pulsed mode, so as
to form the different, respective patterns in succession^] . . . .” (Final Act.
7.) The Examiner finds Yoshida teaches this feature. (Final Act. 7—8 (citing
Yoshida ^fl[ 37—38).) The Examiner also finds “it would have been obvious
to one of ordinary skill in the art at the time the invention was made to
modify the circuitry of Shpunt et al in a manner similar to Yoshida . . . .”
(Final Act. 9.)
Appellant argues “modification of the invention described in the
primary reference, Shpunt, on the basis of the secondary references would
have rendered Shpunt’s illumination assembly incapable of performing its
4
Appeal 2016-002050
Application 13/765,706
intended purpose.” (App. Br. 6.) In particular, Appellant argues:
As is well known in the art (and noted specifically by
Shpunt in paragraph 0003), a diffuser will create a pattern of
spots only when illuminated by coherent light. The requirement
for coherence is reiterated by Shpunt in claims 3, 10, 28 and 35;
and Shpunt’s Figs. 3A/C/D and 6A/C/D all explicitly require a
laser beam to generate the patterns in question (see paragraphs
0040, 0042, 0046, 0048). Shpunt makes no mention at all of the
possibility of using a LED or other incoherent light source in this
context, for the simple reason that in the absence of coherent
illumination, his invention would not be capable of fulfilling its
intended purpose.
Furthermore, all of Shpunt’s embodiments use only a
single laser light source, and for a very good reason: If two (or
more) lasers were used, each laser would generate its own
speckle pattern, different from and incoherent with that of the
other laser(s). In this case, the resulting speckle patterns
projected by the different lasers would simply cancel each other
out, leaving no pattern at all.
(Id.)
Appellant’s arguments are persuasive. The Examiner’s rejection does
not explain why one of ordinary skill, after employing Shpunt’s inventive
concept of using a single coherent light source and a diffuser to project a
pattern, would then instead opt to employ multiple incoherent light sources
along with an additional “array of micro-optics” that “directs the radiation
toward the patterning element,” as taught by Edwards. The rejection appears
to be the result of improper hindsight in which the claims are used as a
roadmap. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). The
Examiner’s findings in the Answer do not overcome this deficiency, as
Appellant persuasively argues in the Reply. (See Ans. 5—18; Reply 2—5.)
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of independent claims 28 and 37, each of
5
Appeal 2016-002050
Application 13/765,706
which requires a “plurality of radiation sources” and “an array of micro­
optics . .. aligned with the radiation sources” that “directs the radiation
toward the patterning element.” Accordingly, we do not sustain the
Examiner’s rejection of those claims or of claims 29—33, 38—42, 46, and 47,
which depend from these independent claims.
NEW GROUND OF REJECTION
We exercise our discretion under 37 C.F.R. § 41.50(b) to enter a new
ground of rejection under 35 U.S.C. § 103(a) as follows:
Independent claims 28 and 37 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Freedman et al., US 2008/0240502 (published Oct. 2,
2008) (hereafter “Freedman”) in view of Edwards and Yoshida.
Freedman, which was cited and relied upon by the Examiner in the
Non-Final Office Action dated December 10, 2014, discloses an optical
apparatus, comprising a radiation source mounted on a substrate and
configured to emit optical radiation, as recited in claim 28 and
commensurately recited in claim 37. In particular, Freedman discloses “an
imaging device 22, which generates and projects a pattern onto an object 28
and captures an image of the pattern appearing on the object.” (Freedman
141.) In one embodiment, Freedman discloses the imaging device
comprises an “illumination assembly 30” that further comprises “a light
source 34 (which may be a point source, such as a laser, without additional
optics, as explained below) and a transparency 36, which are used in
combination to project a pattern of spots onto object 28.” (Freedman 146.)
Notably, Freedman does not suffer from the deficiencies as alleged by
Appellant with regard to Shpunt—namely, teaching only a laser as the light
6
Appeal 2016-002050
Application 13/765,706
source. Rather, Freedman also teaches, in an “alternative embodiment,” an
“illumination assembly 50 which may be used in device 22 in place of
assembly 30” comprising “a non-point light source, such as a light-emitting
diode (LED) 52 with suitable optics 54 and 56.” (Freedman | 54.)
Freedman also discloses a patterning element comprising a transparency as
recited in claims 28 and 37 and projection optics, which are configured to
project the patterns of the radiation from the patterning element onto a
scene, as recited in claim 28 and commensurately recited in claim 37.
(Freedman | 54: “transparency 36 is transilluminated using a non-point light
source, such as a light-emitting diode (LED) 52 with suitable optics 54 and
56 ... to project the image of the pattern from transparency 36 onto object
28 using light from LED 52”).) (See also Non-Final Act. 5—6.)
Freedman does not expressly disclose a plurality of radiation sources,
as recited in claims 28 and 37. As the Examiner finds, and we agree,
Edwards teaches a plurality of radiation sources as LED light structural
elements, and also teaches an array of microlenses that are aligned with the
LEDs. (See Edwards 124, Figs. 1—3, depicting radiation sources / LCDs 1:
“a micro-lens array 9, positioned above [the die with LEDs], having lens
elements 10, which align with the LED dies 1 . . .”).) As the Examiner also
finds, and we agree, “the micro-optics lens elements” taught by Edwards
are aligned with the radiation LED 1 sources so that a respective
micro-optic lens element[] 10 collects the radiation emitted by
each of the radiation source LED’s 1 and directs the radiation
while causing the optical radiation emitted by each of the . . .
LED 1 sources to pass through a different respective region
because each respective micro-optic lens element[] 10 collects
the radiation emitted from respective LED’s 1 and directs it
separately from the other micro-optic lens elements 10.
(Final Act. 6—7.)
7
Appeal 2016-002050
Application 13/765,706
We find that Freedman, as modified by Edwards to utilize a plurality
of radiation sources (e.g., LEDs), teaches or suggests collection optics,
comprising an array of micro-optics, which are aligned with the radiation
sources so that a respective micro-optic collects the radiation emitted by
each of the radiation sources and directs the radiation toward the patterning
element, while causing the optical radiation emitted by each of the radiation
sources to pass through a different, respective region of the transparency so
as to form different, respective patterns, as recited in claim 28 and
commensurately recited in claim 37. (E.g., Freedman || 46, 54; Edwards
Figs. 1—3 and 124; see also Final Act. 6—7.) We also find one of ordinary
skill in the art, at the time the invention was made, would have been
motivated to combine Freedman with Edwards, as doing so would result in
the simple substitution of prior art elements to yield predictable results—that
is, utilizing multiple radiation sources (e.g., LEDs) and corresponding
optics, instead of a single radiation source. See also In re Harza, 274 F.2d
669,11A (CCPA 1960) (noting that “mere duplication of parts has no
patentable significance unless a new and unexpected result is produced”).
Freedman, as modified by Edwards, does not expressly teach or
suggest a controller, which is coupled to actuate the radiation sources
sequentially in a pulsed mode, so as to form the different, respective patterns
in succession, as recited in claim 28 and commensurately recited in claim
37.
As the Examiner finds, and we agree, Yoshida teaches “controlling an
array of LCD’s that produce flashes toward different areas of a scene.”
(Final Act. 9.) In that regard, we adopt the Examiner’s more detailed
findings regarding Yoshida’s teachings as stated in the Final Action at pages
8
Appeal 2016-002050
Application 13/765,706
8—9. We further find it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify the teachings of
Freedman and Edwards with the teachings of Yoshida, as the combination
would result in an improvement for an electronic imaging system equipped
with an image sensor device having a sequential exposure rolling shutter that
enables a lighting unit comprising LED elements to produce flashes at a high
emission frequency and a high electric power saving efficiency, as stated by
Yoshida in paragraph 10. (See also Final Act. 9.) We also find it would
have been obvious to one of ordinary skill at the time the invention was
made to combine a camera with an image exposure method using a flash unit
such that the image exposures are performed using a rolling shutter that
corresponds to the activation of the flash unit, as disclosed by Yoshida, with
an illumination assembly projecting a pattern of light onto an object using a
plurality of light sources, as taught by the combination of Freedman and
Edwards, so as to make it possible to perform 3D reconstruction quickly and
accurately using a transparency that projects a pattern onto an object. (See
Non-Final Act. 7—11.)
For the foregoing reasons, we find the combination of Freedman,
Edwards, and Yoshida teaches or suggests the limitations of independent
claims 28 and 37, and we, therefore, issue a new ground of rejection of those
claims under 35 U.S.C. § 103(a).
With regard to dependent claims 29-33, 38—42, 46, and 47, we note
that we are primarily a reviewing body, rather than a place of initial
examination. The fact that we did not enter new grounds of rejection for the
claims that depend from claims 28 and 37 should not be construed to mean
that we consider those claims to be patentable or directed to patent-eligible
9
Appeal 2016-002050
Application 13/765,706
subject matter. Rather, we leave it to the Examiner to make that
determination should further prosecution occur in this case.
DECISION
For the above reasons, the Examiner’s rejection of claims 28—33, 37—
42, 46, and 47 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for independent claims 28 and 37 under 35 U.S.C.
§ 103(a).
Regarding the new rejection, section 41.50(b) of 37 C.F.R. provides
that “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
Section 41.50(b) also provides that Appellant, [WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION], must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED
37 C.F.R, $ 41.50(b)
10