Ex Parte Ozaki

Board of Patent Appeals and Interferences

Dec 20, 2006

10366458 (B.P.A.I. Dec. 20, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TAKAO OZAKI
__________

Appeal No. 2006-2345
Application No. 10/366,458
____________

HEARD: NOVEMBER 15, 2006
____________

Before THOMAS, SAADAT, and HOMERE, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the Examiner=s final rejection of claims 1, 2 and 4-6. Claim 3
has been canceled.
We affirm.
BACKGROUND
Appellant’s invention is directed to a visible/infrared
imaging camera capable of properly focusing infrared light images
even when the zoom ratio of the zoom lens system is changed.
According to Appellant, light transmitted through the zoom lens
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is separated into visible and infrared components and directed to
the corresponding visible light camera and the infrared light
camera units (specification, paragraph bridging pages 2-3). The
adjustment of focusing of the infrared light image is achieved by
axially moving the infrared light camera so as to adjust its
focusing (specification, page 3). An understanding of the
invention can be derived from a reading of exemplary independent
claim 1, which is reproduced bellow:
1. A visible/infrared virtual studio imaging camera
comprising a zoom lens system; lightwave separating means for
separating light transmitted through said zoom lens system into
visible and infrared light components and emitting thus separated
light components; a visible light camera unit, disposed
downstream of said lightwave separating means for emitting said
visible light component, for capturing a visible light image
formed by said visible light component emitted from said
lightwave separating means; and an infrared light camera unit,
disposed downstream of said lightwave separating means for
emitting said infrared light component, for capturing an infrared
light image formed by said infrared light component emitted from
said lightwave separating means;

said visible/infrared imaging camera further comprising
moving/supporting means for supporting said infrared light camera
unit such that said infrared light camera unit is movable axially
of said infrared light component emitted from said lightwave
separating means, said moving/supporting means moving said
infrared light camera unit so as to adjust focusing of said
infrared light image; and

wherein information about distance from the virtual studio
camera to an object is obtained from the captured infrared light
image.

The Examiner relies on the following prior art references:

Bilbrey et al. (Bilbrey) 6,020,931 Feb. 1, 2000
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Hoshino et al. (Hoshino) 6,339,483 Jan. 15, 2002

Nakamura et al. (Nakamura) 6,812,467 Nov. 2, 2004
(filed Nov. 25, 2002)

Claims 1 and 5 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bilbrey and Nakamura.
Claims 2, 4 and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bilbrey, Nakamura and Hoshino.
We make reference to the briefs and answer for the
respective positions of Appellant and the Examiner. Only those
arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose
not to make in the briefs have not been considered (37 CFR
§ 41.37(c)(1)(vii)).
OPINION
With respect to the rejection of claim 1, Appellant argues
that since Bilbrey includes no teaching or suggestion of loss of
distance data with changing zoom ratio, the reason to combine
references must have come from Appellant=s invention (brief, page
7). Appellant further asserts that Nakamura is outside of the
field of visible/infrared virtual studio imaging cameras, as
recited in claim 1, which is used to determine the distance from
the camera to objects in the field of view (brief, page 8). With
respect to the claimed moving support means, Appellant further
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argues that Nakamura’s teachings relate to the conceptual
possibility of a moveable infrared light sensor but actually
inserts and removes a glass plate into and out of the optical
path in order to change the focal point (brief, page 10).
In response to Appellant’s arguments, the Examiner asserts
that Nakamura suggests moving the infrared sensor in response to
the lens varied magnification in order to obtain infrared and
visible light images without blurring (answer, page 7). The
Examiner further concludes that moving the infrared sensor in the
visible/infrared virtual studio imaging camera of Bilbrey would
have been obvious to the skilled artisan (id.). With respect to
Appellant’s assertion of Nakamura being non-analogous art, the
Examiner points to the teachings in both references related to
infrared and visible imaging and concludes that the references
are reasonable pertinent to the particular problem Appellant is
concerned with (answer, page 8). The Examiner adds that since
Nakamura may be relied on for all of its teachings including
“nonpreferred” embodiments, there is sufficient suggestion to one
of ordinary skill in the art for moving the infrared sensor in
the direction of the optical axis to absorb the variations in the
focal position (answer, paragraph bridging pages 8-9).
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After a review of the references, we find the Examiner’s
analysis of the references, their relevance to the claimed
subject matter and the position taken with respect to
unpatentability of the claims to be reasonable. In that regard,
we are guided by the Federal Circuit 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. The court
states in In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443,
1445-46 (Fed. Cir. 1992) that in order to rely on a reference as
a basis for obviousness rejection, the reference must either be
in the field of the applicant’s endeavor or, if not, then be
reasonably pertinent to the particular problem with which the
inventor was involved such that an inventor would reasonably be
motivated to consult in order to solve the problem confronting
the inventor. See In re Deminski, 796 F.2d 436, 442, 230 USPQ
313, 315 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036, 202
USPQ 171, 174 (CCPA 1979).
Nakamura detects a visible image and an infrared image for
determining a positional relationship between the two images
(col. 2, lines 19-27). However, in case of using a variable
magnification lens in detecting the infrared image, Nakamura
identifies that excessive variations in the focal position result
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in blurred images (col. 3, lines 56-64). As pointed out by the
Examiner and outlined in MPEP § 2123, although not identified as
a preferred embodiment, Nakamura suggests moving the infrared
sensor in the direction of the optical axis when the
magnification is varied (col. 3, lines 65-67). While the
complicated structure of a moveable infrared sensor may justify
using a transparent element to vary the focal position (col. 4,
lines 1-3 & 19-22), Nakamura, nonetheless, recognizes moving the
infrared sensor as a way to absorb variations in the focal
position, which is pertinent to the problems identified by
Appellant (specification, paragraphs [0005] and [0008]).
Therefore, contrary to Appellant’s position (reply brief, page
4), one of ordinary skill in the art would not be led away from
moving the infrared sensor suggested by the alternative
embodiment in Nakamura, particularly when complexity is not an
obstacle.
A motivation to combine prior art references may be found in
the nature of the problem to be solved. Ruiz v. A.B. Chance Co.,
357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004).
Also, evidence of a suggestion, teaching, or motivation to modify
a reference may flow from the prior art references themselves,
the knowledge of one of ordinary skill in the art, or, in some
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cases, from the nature of the problem to be solved. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999); Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996). Therefore,
motivation or suggestion is not merely what the references
disclose, but whether a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the
prior art, and motivated by the general problem facing the
inventor, would have been led to make the combination recited in
the claims. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1337 (Fed. Cir. 2006).
We further disagree with Appellant’s arguments (brief, page
14) with respect to lack of recognition by Nakamura of the
problem of obtaining reliable distance data. As discussed above,
the Examiner relies on Nakamura for teaching a moveable infrared
sensor in response to variations in the focal position whereas
processing the images to obtain the distance information is
taught by Bilbrey where the obtained image is processed on a
pixel-by-pixel basis for generating the depth information (col.
27, lines 7-10 and 37-43). We note that this finding is
consistent with Appellant’s own disclosure related to processing
the image information from the visible and the infrared cameras
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into image processor 17 in order to obtain distance information
(specification, paragraph [0019]).
Therefore, we remain unpersuaded by Appellant’s arguments
that any error in the Examiner=s determination, based on the
overall disclosures, teachings, and suggestions of the prior art,
and the level of skill in the art, regarding the obviousness of
the claimed subject matter has occurred. Accordingly, as the
Examiner has established a prima facie case of obviousness, we
sustain the 35 U.S.C. § 103(a) rejection of claims 1 and 5.
Turning now to the rejection of claims 2, 4 and 6, we note
that Appellant’s arguments in support of patentability of these
claims include assertions similar to those addressed above with
respect to claim 1 (brief, pages 11-12). Appellant further
argues that Nakamura’s movement is without any antecedent
correlation between the zoom ratio and the infrared sensor
position (brief, page 12). We disagree and find the teachings
and suggestions in Nakamura to be sufficient for the ordinary
skilled in the art to recognize the correlation between the
movement of the infrared sensor and the focal position of its
zoom lens (col. 3, line 45 through col. 4, line 3).
Additionally, we agree with the Examiner’s rationale (answer,
page 12) for relying on Hoshino as an example of known automated
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moving/support means for controlling the movement of the infrared
sensor by motor and its corresponding switches. As such, and for
the reasons similar to those underlying our conclusion with
respect to claim 1, we find that the Examiner has set forth a
reasonable case of prima facie obviousness and the 35 U.S.C.
§ 103 rejection of claims 2, 4, and 6 over Bilbrey, Nakamura and
Hoshino should be sustained.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1, 2 and 4-6 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEAN R. HOMERE )
Administrative Patent Judge )

MDS/rwk

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