Ex Parte Pance

Patent Trial and Appeal Board

May 4, 2016

12238564 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/238,564 09/26/2008
65015 7590 05/06/2016
Treyz Law Group
870 Market Street, Suite 984
SAN FRANCISCO, CA 94102
FIRST NAMED INVENTOR
Aleksandar Pance
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.
P6457US1 1811
EXAMINER
GARCES-RNERA, ANGELL
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEKSANDAR P ANCE
Appeal2014-008484
Application 12/238,564
Technology Center 2600
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008484
Application 12/238,564
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3--4, 6-11, 13-15, and 18-19. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. An image projection system, comprising:
at least one data capture device configured to
transmit captured data to an image processing system
configured to receive the captured data;
a primary image output device configured to
receive image data from the image processing system;
a secondary image output device configured to
receive image data from the image processing system;
an enclosure surrounding at least the at least one
data capture device, the primary image output device and
the secondary image output device;
at least two depth sensors configured to transmit
measurements to the image processing system;
wherein the image processing system is
additionally configured to employ the captured data
from the at least one data capture device and the
measurements from the at least two depth sensors to
correct for image distortion.
Rejections on Appeal
1. The Examiner rejected claims 1, 3, 7-8, 10-11, and 13-14 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Weiner et
2
Appeal2014-008484
Application 12/238,564
al. (US 6,930,669 B2; Aug. 16, 2005), and Sunakawa et al.
(US 6,310,662 B 1; issued Oct. 30, 2001). 1
2. The Examiner rejected claims 4, 6, 9, 15, and 18-19 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Weiner,
Sunakawa, and Appellant's admitted prior art (hereinafter "AAPA").
Appellant's Contention
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Examiner admits that Sunakawa discusses its alleged
distance sensors as part of a first embodiment and its alleged
image capture device as part of a second embodiment (citation
omitted). The Examiner also agrees that Sunakawa neither
teaches nor suggests combining data from the two to "correct for
image distortion," as required by independent claim 1 (citation
omitted). Rather, the Examiner alleges that one of ordinary skill
in the art would have been motivated to combine these two
technologies in a single apparatus as "increasing the number of
sensors in a system ... will increase the system accuracy (citation
omitted)."
The Assignee respectfully submits that the Examiner has
impermissibly employed hindsight in arriving at his
conclusion, his analysis of one of ordinary skill in the art, and
his statement of the recognized problem or need in the art.
[T]he Assignee respectfully submits that the Examiner's
assertion that "increasing the number of sensors in a system ...
will increase the system accuracy" (citation omitted) is incorrect.
1 Separate patentability is not argued for claims 3--4, 6-11, 13-15, and 18-
19. Except for our ultimate decision, these claims are not discussed further
herein.
3
Appeal2014-008484
Application 12/238,564
Increasing the number of sensors in a system does not
necessarily increase system accuracy. Unless such a system
includes the ability to use one sensor to correct for the error of
another, the accuracy of a system is still tied to the most error
prone sensor. Combining sensors in some fashions may in fact
multiply the errors of the individual sensors. Merely adding
sensors without identifying how they should be combined
serves no useful purpose. One of skill in the art would not
randomly increase the number of sensors in a system hoping
that the accuracy of the system would improve absent some
indication of how to combine the multiple sensors in order to
increase accuracy.
Further, Sunakawa in no way indicates that either embodiment
suffers from error. Absent some kind of indication that either
embodiment suffers from error, one of skill in the art would
have no reason to randomly combine the two systems in an
attempt to reduce such error. Accordingly, the Assignee
respectfully submits that the Examiner has used impermissible
hindsight to fashion a motivation that did not exist and is not
supported by any facts or references of record.
\X/ithout some teaching, reference or suggestion that provides
some indication of a benefit of using both the camera and the
distance sensors to perform image correction on the same image,
the evidence of record simply does not support the Examiner's
contention that one of ordinary skill in the art would have any
motivation to utilize both a camera and distance sensor to
perform image correction on the same image. The Assignee
respectfully submits that the only motivation in the record is
found in the present application. If anything, the Sunakawa
reference teaches away from such a combination by treating
the camera and distance sensor separately.
Appeal Br. 7-8, emphasis added.
2. In the Reply Brief, further as to above contention 1, Appellant also
contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
4
Appeal2014-008484
Application 12/238,564
[l]ncreasing the number of sensors in a system does not
necessarily increase accuracy. There is no indication in
Sunakawa that either embodiment alone has any inaccuracies
that need to be ameliorated by the addition of another sensor
or that combining the sensors of the two separate
embodiments would ameliorate such an inaccuracy.
Sunakawa in no way contemplates combining the two
embodiments and one of skill in the art would not be
motivated to combine the two embodiments in order to
ameliorate an inaccuracy not suspected to exist without any
indication that combining the two separate embodiments
would ameliorate such an unsuspected inaccuracy.
If the Examiner were correct that the distance sensor and the
CCD camera embodiments of Sunakawa perform the same
function and that the CCD camera embodiment is more
accurate because it uses the actual image, one of skill in the art
would be motivated to use the more accurate CCD camera
embodiment rather than combining the more accurate CCD
camera embodiment with a less accurate distance sensor
embodiment.
Further, the Examiner argues that there is nothing in the claim
or the specification that suggests combining the results in any
way (citation omitted). However, the claim and specification
(see at least paragraphs 0039-0043 of the published
application) both describe employing both "the captured data
from the at least one data capture device and the
measurements from the at least two depth sensors to correct
for image distortion. "As such, the results are combined in
that they are both used to correct for image distortion.
Reply Br. 2-3, emphasis added.
5
Appeal2014-008484
Application 12/238,564
Issue on Appeal
1. Did the Examiner err in rejecting claim 1 as being
unpatentable?
PRINCIPLES OF LAW
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation to combine references in
order to show obviousness. See KSR Int'l Co., v. Teleflex Co., 550 U.S. 398,
419 (2007). Instead, a rejection based on obviousness only needs to be
supported by "some articulated reasoning with some rational underpinning"
to combine known elements in the manner required by the claim. Id. at 418.
Further, "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416.
A • l-.. . . l-.. l-. 1 •
Fl.. suggestion, teac_L_L1ng, or mot1vat1on to comu1ne t_L_Le re_Levant prior art
teachings does not have to be found explicitly in the prior art, as "the
teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references .... The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art." Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290-91 (Fed. Cir. 2006) (citing
In re Kahn, 441F.3d977, 987-88, (Fed. Cir. 2006)).
"Combining two embodiments disclosed adjacent to each other in a
prior art patent does not require a leap of inventiveness." Boston Scientific
Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
6
Appeal2014-008484
Application 12/238,564
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which the appeal is
taken (Final Act. 2-10); and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 2-20) in response to the Appellant's Appeal
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following.
As to Appellant's above contentions 1 and 2, we are not persuaded the
Examiner erred. Appellant does not challenge the Examiner's findings that
Sunakawa's first embodiment discloses image correction using
measurements of distance sensors, and Sunakawa's second embodiment
discloses image correction using image data captured from a charge-coupled
device ("CCD") camera. See Final Act. 4. Instead, Appellant argues that
there is no teaching, motivation or suggestion to combine the two separate
embodiments of Sunakawa because Sunakawa fails to provide any indication
of a benefit of using both the distance sensors and the CCD camera to
perform image correction on the same image. Appeal Br. 8; Reply Br. 2.
This argument is not persuasive. We agree with the Examiner that the
combination is simply a combination of known elements according to
known methods (i.e., using measurements from the distances sensors and
image data from the CCD camera to generate correction values) that yield no
more than predictable results (i.e., image correction). Ans. 4--5. Thus, the
7
Appeal2014-008484
Application 12/238,564
Examiner was not required to find that Sunakawa explicitly discloses a
motivation to combine the two embodiments of Sunakawa.
Further, Sunakawa implicitly discloses a motivation to combine the
two embodiments because Sunakawa discloses an objective to increase an
accuracy of image correction for an apparatus, even in a scenario where a
distance to a projection plane and an inclination have changed. See
Sunakawa col. 12, 11. 18-24, 36-40. We agree with the Examiner that, by
combining the two embodiments of Sunakawa, an accuracy of image
correction for an apparatus can be increased, as the apparatus can use the
data from both the distance sensors and the CCD camera to more accurately
measure the distance to, and an inclination of, a projection plane, which, in
tum, increases an accuracy of generated correction values. See Final Act. 4;
Ans. 5-7, 9-10. Accordingly, we sustain the rejection of claim 1.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3--4, 6-11, 13-
15, and 18-19 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 3--4, 6-11, 13-15, and 18-19 are not patentable.
DECISION
We affirm the Examiner's rejections of claims 1, 3--4, 6-11, 13-15,
and 18-19 as being unpatentable under 35 U.S.C. § 103(a).
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).
8
Appeal2014-008484
Application 12/238,564
AFFIRMED
9