Ex Parte Opmeer

Patent Trial and Appeal Board

Sep 17, 2012

11351086 (P.T.A.B. Sep. 17, 2012)

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.
11/351,086 02/09/2006 Peter Opmeer 3593 1968
7590 09/17/2012
STRIKER, STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743
EXAMINER
CHANG, FANG-CHI
ART UNIT PAPER NUMBER
2852
MAIL DATE DELIVERY MODE
09/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PETER OPMEER
____________________

Appeal 2010-003214
Application 11/351,086
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, and
JASON V. MORGAN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003214
Application 11/351,086

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 11-17 and 19-27, all the claims pending in the application. Claimed
1-10 and 18 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b)(1). We affirm.
Appellant’s Disclosed Invention
Appellant discloses a dome for use in a surveillance camera system
(Spec. 1: 13), wherein the dome has an inner surface and an outer surface
(Spec. 6: 24-25), wherein the dome exhibits a thickness variation (Spec. 4:
15-17).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 11, which is reproduced below with emphases added:
11. A transparent dome for use in a vandal-proof surveillance
camera system, comprising a transparent optical material
having an inner surface and an outer surface, said outer surface
being essentially rotationally symmetrical about a first
symmetry axis and having a first apex located on said first
symmetry axis, said inner surface being essentially rotationally
symmetrical about a second symmetry axis and having a second
apex located on said second symmetry axis, said first symmetry
axis and said second symmetry axis being essentially parallel,
said outer surface and said inner surface exhibiting non-
spherical shapes, wherein said inner surface and said outer
surface are shaped such that the transparent optical material
exhibits a thickness variation, whereby the shape of the inner
surface and the outer surface are optimized by minimizing
optical distortions.

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Application 11/351,086

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The Examiner’s Rejections
The Examiner rejected claims 11 and 19-27 under 35 U.S.C. § 103(a)
as being unpatentable over Jones (US 2006/0024046 A1) in view of Okuno
(EP 1 008 973 A1). Ans. 3-10.
The Examiner rejected claims 12-17 under 35 U.S.C. § 103(a) as
being unpatentable over Jones, Okuno, and Fischer (US 6,349,004 B1).
Ans. 11-14.
Appellant’s Contentions
Appellant contends (App. Br. 5-8; Reply Br. 2-3) that the Examiner
erred in rejecting claims 11 and 19-27 under § 103(a) over the combination
of Jones and Okuno for numerous reasons, including: 1
(1) none of the references teach or suggest said inner surface and said
outer surface are shaped such that the transparent optical material exhibits a
thickness variation (App. Br. 5-6);
(2) none of the references teach or suggest structuring the shape of the
inner surface and the outer surface are optimized by minimizing optical

1 Appellant only presents arguments on the merits with regard to
independent claims 11 and 26, and these claims are argued jointly (see App.
Br. 5-8; Reply Br. 2-3). Like independent claim 11, independent claim 26
also recites “said inner surface and said outer surface are shaped such that
the transparent optical material exhibits a thickness variation, whereby the
shape of the inner surface and the outer surface are optimized by minimizing
optical distortions.”
Appellant argues that claims 12-17 are patentable for the same reasons
as claim 11 from which they depend, and because Fischer fails to cure the
deficiencies of Jones and Okuno (see App. Br. 7-8; Reply Br. 2-3). No
arguments are presented for dependent claims 19-25 and 27.
Thus, separate patentability is not argued for claims 12-17 and 19-27.
We select claim 11 as representative of the group of claims 11-17 and 19-27.
37 C.F.R. § 41.37(c)(1)(vii).
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Application 11/351,086

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distortions (App. Br. 6-7; Reply Br. 2); and
(3) there is no motivation to combine the dome of Jones with the
dome of Okuno (Reply Br. 2-3).

Issue on Appeal
Did the Examiner err in rejecting claims 11 and 19-27 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Jones and
Okuno because:
(i) Jones and Okuno, as combined, do not teach or suggest said inner
surface and said outer surface are shaped such that the transparent optical
material exhibits a thickness variation;
(ii) Jones and Okuno, as combined, do not teach or suggest the shape
of the inner surface and the outer surface are optimized by minimizing
optical distortions; and
(iii) there is no motivation to combine the teachings of Jones and the
teachings of Okuno?

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s contentions in the Appeal Brief (App. Br. 5-8) and the Reply
Brief (Reply Br. 2-3) that the Examiner has erred.
We disagree with the Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellant’s Appeal Brief (Ans. 3-
16). We highlight and amplify certain teachings and suggestions of the
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references as follows.

(i) Jones and Okuno, as combined, teach or suggest said inner surface
and said outer surface are shaped such that the transparent optical material
exhibits a thickness variation
In the Appeal Brief, Appellant argues that none of the references teach
or suggest the inner surface and the outer surface of the transparent optical
material exhibit a thickness variation (App. Br. 6). However, in the Reply
Brief, Appellant concedes that Okuno teaches or suggests the thickness
variation of the transparent optical material (Reply Br. 2).
The Examiner, in rejecting representative claim 11, pointed out that
Okuno teaches the thickness variation (Ans. 5). Okuno teaches the dome
has an edge thickness (Fig. 29, label T11) and a center portion thickness
(Fig. 29, label T12). Okuno further teaches the edge thickness may be about
1.9mm and the center portion thickness may be about 2.4mm (¶ [0030]; Fig.
29; see Ans. 5, 14). Therefore, Okuno discloses a thickness variation (Ans.
5, 14).
We agree with the Examiner (Ans. 5, 14) that Okuno teaches or
suggests the inner surface and the outer surface are shaped such that the
transparent optical material exhibits a thickness variation, because Okuno
teaches the dome has a thickness variation. Okuno discloses that the dome’s
edge thickness may be about 1.9mm at T11 and the dome’s center portion
thickness may be about 2.4mm at T12 (¶ [0030]; Fig. 29).
Accordingly, we will sustain the rejection of representative claim 11,
as well as claims 19-27, over Jones and Okuno. For the same reasons, we
will sustain the rejection of claims 12-17 (which depend from representative
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claim 11) over Jones, Okuno, and Fischer.

(ii) Jones and Okuno, as combined, teach or suggest the shape of the
inner surface and the outer surface are optimized by minimizing optical
distortions
Appellant argues that neither Jones nor Okuno teaches or suggests the
shape of the inner surface and the outer surface are optimized by minimizing
optical distortions (App. Br. 6-7; Reply Br. 2).
The Examiner asserts that Okuno reduces optical distortions (Ans. 5).
Specifically, the Examiner notes that Okuno teaches keeping the gap
between the lens and the inner surface fixed to minimize optical distortions
(Ans. 15). The Examiner notes that Okuno teaches “the inner and the outer
surfaces are related by the specific offset in design, and the resulting dome
keeps the gap G fixed to prevent distortion” (Ans. 15). The Examiner notes
that Okuno teaches “[t]he design of the inner and the outer surfaces of
Okuno's dome allows the gap G mentioned above to remain constant to
reduce optical distortion” (Ans. 15-16).
We agree with the Examiner that Jones and Okuno, as combined,
teach or suggest the shape of the inner surface and the outer surface are
optimized by minimizing optical distortions because Okuno teaches the
thickness difference, which involves optimizing the inner and outer surface
to maintain the constant gap between the lens of the camera and the inner
surface of the dome.

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(iii) There is motivation to combine the teachings of Jones and the
teachings of Okuno2
Appellant argues that because Jones teaches a dome having a non-
spherical surface and Okuno teaches a dome having a spherical surface, one
of ordinary skill in the art would not be motivated to combine the teachings
of Jones and Okuno (Reply Br. 2-3). We disagree with Appellant that the
fact that Jones and Okuno teach differing domes (i.e., spherical versus non-
spherical), acts to vacate any potential motivation to combine. Such analysis
is not the correct manner in determining motivation to combine.
“Under the correct [obviousness] analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (italicized
emphasis added).
The Examiner noted in the rejection that the motivation to combine is
that Okuno “further minimiz[es] optical distortions... [minimizes] the size of
the camera, increase[es] the angle adjustment range of the mirror barrel,
enabling the image pickup device to be easily installed into or pulled out
from the [dome], and reducing cost and enhancing productivity” (Ans. 5).

2 The substantive arguments present for lack of motivation to combine Jones
and Okuno were raised for the first time in the Reply Brief (Reply Br. 2-3)
and are not present in the Appeal Brief.
These belated arguments are new arguments, unaccompanied by a
showing of good cause, and were not raised in response to a change in law
or in response to a new ground of rejection. They could have been made in
the Appeal Brief, but were not. While technically waived, pursuant to our
discretion, we treat these arguments herein.
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The Examiner further noted that Okuno discloses the benefit of maintaining
a constant gap between the lens of the optical and the inner surface of the
dome, by optimizing the shape of the dome, prevents distortion (Ans. 15-
16).
Any one of these benefits satisfies motivation to combine the
teachings of Okuno with the teachings of Jones because each one addresses
a need or problem known in the field of surveillance domes such as:
problems with optical distortions, cameras being too large, problems with
angle adjustment range, amount of work required to install or remove the
camera from the dome, or expense.
Therefore, we disagree with Appellant that there is no motivation to
combine Jones and Okuno because we agree with the Examiner (Ans. 5, 15-
16) that there is motivation; namely, to minimize optical distortions by
maintaining a constant gap between the lens of the optical block and the
inner surface of the dome, to increase the adjustment range, to enable the
camera to be easily installed or removed, and/or to reduce cost or enhance
productivity (Ans. 5, 15-16).

CONCLUSIONS
(1) The Examiner did not err in rejecting claim 11-17 and 19-27 as
being unpatentable over the combination of references because:
(i) Jones and Okuno, as combined, teach or suggest said inner
surface and said outer surface are shaped such that the transparent
optical material exhibits a thickness variation;
(ii) Jones and Okuno, as combined, teach or suggest the shape
of the inner surface and the outer surface are optimized by minimizing
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Application 11/351,086

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optical distortions; and
(iii) there is motivation to combine the teachings of Jones and
the teachings of Okuno.
(2) Claims 11-17 and 19-27 are not patentable.

DECISION
The Examiner’s rejections of claims 11-17 and 19-27 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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