Ex Parte Park

Board of Patent Appeals and Interferences

Jul 28, 2006

09899066 (B.P.A.I. Jul. 28, 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written for publication and is not binding precedent of the Board.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 SE WOONG PARK
___________

Appeal No. 2006-1020
Application No. 09/899,066
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ON BRIEF
___________

Before KRASS, RUGGIERO, and BARRY, Administrative Patent
Judges.

KRASS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the final rejection
of claims 1-28 which are all of the pending claims of the
application.

Appeal No. 2006-1020
Application No. 09/899,066

The invention is directed to a control method for a
CCD camera comprising: controlling movement of a lens by
switching between two sets of pre-stored lens trace data,
each corresponding to one of two photographing modes
selected on the basis of comparing a detected illumination
value to a reference illumination value.
Claims 1 and 21 are illustrative:

1. A control method of a CCD (Charge Coupled Device)
camera having at least one photographing mode, comprising:

pre-storing trace data of a lens for the CCD camera;

detecting an illumination of a photographing region to
be photographed with the CCD camera;

comparing the detected illumination with a reference
illumination value;

setting a photographing mode of the CCD camera on the
basis of comparing the detected illumination with a
reference illumination value; and

controlling a movement of a lens of the CCD camera in
accordance with the set photographing mode by using
corresponding pre-stored trace data of the lens.

21. A control method of a CCD (Charge-Coupled Device)
camera having a lens and a nighttime mode and a daytime
mode, comprising:

pre-storing first and second trace data of a lens for
the CCD camera;

detecting an illumination of a photographing region
to be photographed by a CCD camera;

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converting a photographing mode of the CCD camera into
the daytime mode or the nighttime mode by judging whether
the detected illumination is not less or greater than a
reference illumination value;

loading the first trace data for controlling a lens
of the CCD camera so as to photograph the photographing
region through an OLPF (Optical Low Pass Filter) when the
photographing mode is converted into the daytime mode;

loading the second trace data for controlling the
lens of the CCD camera so as to photograph the
photographing region without imaged light of the
photographing region passing through the OLPF when the
photographing mode is converted into the nighttime mode;
and

adjusting a focus of the lens of the CCD camera on
the basis of the loaded trace data.

The examiner relies on the following references:

Beis 5,172,220 Dec. 15, 1992

Chino 6,046,863 Apr. 4, 2000

Mizoguchi et. al.
(Mizoguchi) 5,959,669 Sep. 28, 1999

Claims 1-5, 9, 11-13, 17 and 26-27 stand rejected
under 35 U.S.C. § 103 as obvious over Beis (U.S. Patent No.
5,172,220) in view of Chino (U.S. Patent No. 6,046,863).
Claims 6-8, 10, 14-16, 18-25 and 28 stand rejected
under 35 U.S.C. § 103 as obvious over Beis in view of Chino
and further in view of Mizoguchi (U.S. Patent No.
5,959,669).

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Application No. 09/899,066

OPINION

We affirm the rejection under 35 U.S.C. § 103 of
claims 1-5, 9, 11-13, 17 and 26-27, and the rejection under
35 U.S.C. § 103 of claims 6-8, 10, 14-16, 18-25 and 28.1
Rejection of Claims 1-5, 9, 11-13, 17 and 26-27
Beis teaches switching between two modes in a CCD
camera (Col. 6 lines 14-16) according to detection of the
incoming light intensity as compared to a threshold light
intensity (Col. 2 lines 17-36) wherein the modes are
defined by insertion or removal of a filter. Specifically,
an infrared filter is inserted when daytime operation is
detected and removed when nighttime operation is detected
(Col. 6 lines 35-45). It is the examiner’s view that Beis
does not teach that insertion or removal of a filter causes
an out-of-focus condition or that such a condition is
correctable by switching between pre-stored zoom trace
data.

1 In response to appellant’s traversal of “newly presented
grounds of rejection” (brief at 10) we note that the
examiner’s remarks of pages 3-7 of the answer are merely
responsive to appellant’s arguments.
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The examiner relies on Chino for the teaching that
zoom tracking of a camera changes based on insertion or
removal of filters due to distinct refractive index of the
filter as compared to air (Col. 4 lines 45-48). Chino
further teaches that such a zoom error may be corrected by
switching between prestored zoom tracking curves (Col. 4
lines 50-52; 62-65) for both filter removed and filter
inserted conditions (curves 40 and 41 respectively as
depicted in Fig. 4). The examiner argues that it would
have been obvious to one of ordinary skill in the art at
the time of the invention to have incorporated the CCD
camera of Beis with the zoom lens of Chino for the purpose
of providing detailed images of far away objects, for
example, to increase the surveillance function thereof
(Answer at page 23).
We have reviewed the evidence before us and we
conclude therefrom that the examiner has presented a prima
facie case of obviousness with regard to the instant
claimed subject matter that has not been successfully
rebutted by appellant. Accordingly, we will sustain the
rejection of claims 1-5, 9, 11-13, 17 and 26-27 under 35
U.S.C. § 103.
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It is reasonable that one of ordinary skill in the art
would have been motivated to improve the function of the
camera of Beis with the zoom lens of Chino for the purpose
of providing enhanced imaging of distant objects. It would
have been especially obvious given that Beis teaches
insertion and removal of optical filters in response to
detected light intensity and that Chino teaches that
insertion and removal of filters from an optical path
results in an out-of-focus condition. A suggestion to
combine references may come from the nature of a problem to
be solved, leading inventors to look to references relating
to possible solutions to that problem. Pro-Mold and Tool
Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1630 (Fed. Cir. 1996). In this case, one of
ordinary skill in the art would have been motivated to
correct the out-of-focus condition caused by the filter
manipulation of Beis by incorporating a zoom lens and
control method as taught by Chino such that the filter
induced focus error of Beis is compensated for by the
prestored zoom tracking curves taught by Chino.

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We further note that a stronger rejection may have
been made based on motivation to modify Chino in view of
Beis; however, we look at the totality of the teachings of
the references and it is apparent to us that the skilled
artisan having both of these teachings before him/her would
clearly have found the instant claimed invention obvious,
within the meaning of 35 U.S.C. § 103.
Appellant argues that the combination of Beis and
Chino involves “improper hindsight reconstruction” and that
the examiner’s motivation involves “nothing more than a
broad, conclusory, speculative statement” (Brief at page
20). Newly presented evidence is provided in the
Examiner’s Answer to support motivation (Answer at page
23). Specifically, Williams teaches that it would be
desirable to incorporate autozoom in a B&W and color CCD
surveillance camera. As alluded to by appellant, if the
citation of a new prior art reference is necessary to
support a rejection, it must be included in the statement
of rejection. Even if the prior art reference is cited to

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support the rejection in a minor capacity, it should be
positively included in the statement of rejection. In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA
1970). However, the Williams reference is not necessary to
support motivation to combine Beis and Chino. The obvious
advantage of providing a surveillance camera with autofocus
zoom together with a specific teaching of compensating a
filter induced out-of-focus with pre-stored zoom data
provides sufficient motivation for the combination of the
cited references. Appellant contends that motivation
involving correction of lens out-of-focus is insufficient
because it is not claimed (Brief at page 21). However, it
is not a requirement that motivation to combine be found
within appellant’s claims. Nevertheless, we note that such
motivation is cited as the primary object of appellant’s
invention (Specification page 1, line 8).
Appellant further argues that the references of Beis
and Chino are concerned with distinctly different problems
and that they function differently (Brief at page 13). The
examiner responds that both references are concerned with
insertion and removal of optical filters from the optical

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path of a camera lens (Answer at page 23). Appellant’s
argument that “hundreds of thousands of camera references
employ filters” is beyond the scope of the inquiry. We
find that both of the cited references are in the same
field of applicant’s endeavor and are reasonably pertinent
to the particular problem with which the applicant was
concerned, namely, insertion and removal of optical filters
from the optical path of a CCD camera for the purpose of
improving picture quality, for example, to prevent picture
quality deterioration or adjust lens sensitivity in view of
changing light intensity.
We further note that appellant merely argues the
references individually. Appellant argues that Beis does
not disclose or suggest use of a zoom lens system or a zoom
lens system with autofocus or a system that uses a neutral
density filter that upsets autofocus (Brief at page 17) and
that Beis indicates no focus error upon insertion or
removal of filters from an optical path (Brief at page 19).
Appellant further argues that Chino fails to disclose or
suggest a surveillance camera system, a fixed focus lens,

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or identification of an object of interest for zooming or
tracking in a surveillance operation (Brief at page 19).
This line of argument is immaterial because 35 U.S.C. § 103
does not require the presence of each and every limitation
of the claim in each combined reference in an obviousness-
type rejection. That is, one cannot attack references
individually where the rejection is based on a combination
of references. In re Merck, 800 F.2d 1091, 1097, 231 USPQ
375, 380 (Fed. Cir. 1986). Appellant has merely pointed to
the deficiencies in the primary reference of the
limitations for which the secondary reference is relied
upon. With respect to appellant’s argument that Chino only
discloses adjusting focus upon insertion or removal of a
filter and not upon selection of a daytime or nighttime
mode (Brief at page 22), we note that the filter of Chino
is inserted or removed upon selection of a daytime or
nighttime mode.
Regarding appellant’s allegation of examiner admission
(Brief at pages 17-18), we note that it is not an admission
to state that the zoom lens of Chino may be incorporated

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into the camera of Beis without incorporation of an ND
filter. Appellant has ostensibly argued that the
examiner’s combination “teaches away” and that it would
have been physically impossible given teachings of only one
filter in each reference. However, the test for
obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of
the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ
871 (CCPA 1981). In this case, the autofocus lens and
control of Chino may be incorporated in the CCD camera of
Beis without inhibiting the function of the image sensors.
Furthermore, the zoom control of Chino does not require
incorporation of the particular neutral density filter.
One of ordinary skill in the art would have known that the
zoom control method of Chino could be integrated into the
light detection method of Beis while using the infrared
filter of Beis, the neutral density filter of Chino, or any
equivalent filters related to improving picture quality,

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for example, to prevent picture quality deterioration or
adjust lens sensitivity in view of changing light
intensity. A mere difference between the filter types of
Beis and Chino does not preclude a combination of Beis’s
light intensity mode and Chino’s zoom control method,
especially considering that the method of Chino solves the
very problem known, at the time of the invention, to be
caused by Beis’s changing light intensity modes, namely,
focus error.
Accordingly, the examiner’s decision rejecting claims
1-5, 9, 11-13, 17 and 26-27 under 35 U.S.C. § 103 is
affirmed.
Rejection of Claims 6-8, 10, 14-16, 18-25 and 28

The examiner relies on the combination of Mizoguchi
with Beis and Chino for a method of incorporating an
optical low pass filter (OLPF). Mizoguchi teaches a method
of inserting an OLPF when photographing in color to
eliminate false color and removing an OLPF when
photographing in black and white to attain high resolution
(Col. 8 lines 35-50).
Appellant argues that Mizoguchi fails to teach this
method; however appellant is merely pointing to an
alternative method in the background of Mizoguchi involving
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swapping a crystal LPF with one of different properties for
the proposition that Mizoguchi fails to teach inserting an
OLPF when photographing in color to eliminate false color
and removing an OLPF when photographing in black and white
to attain resolution (Brief at page 25).
Appellant further argues that Mizoguchi fails to
disclose “day-night photographing”; however, Mizoguchi
necessarily involves this method because it teaches
consideration of the photographic conditions unique to the
particular day (Col. 19 lines 51-61) within the context of
changing camera modes in accordance with detected light
intensity.
With respect to appellant’s arguments that Mizoguchi
is directed to the imaging of different objects and that
the combination involves improper hindsight, we note that
Mizoguchi is only relied upon for the method of using an
OLPF to improve image quality in a CCD camera. It would
have been obvious to one of ordinary skill in the art at
the time of the invention to have incorporated an OLPF in
the combined method of Beis and Chino for the purpose of
eliminating false color and attaining high resolution,
especially given that it would have been a trivial matter
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to switch between various types of filters for use in an
autofocus method for a CCD camera.
Accordingly, the examiner’s decision rejecting claims
6-8, 10, 14-16, 18-25 and 28 under 35 U.S.C. § 103 is
affirmed.

DECISION
The rejection of Claims 1-5, 9, 11-13, 17 and 26-27 as
obvious over Beis (U.S. Patent No. 5,172,220) in view of
Chino (U.S. Patent No. 6,046,863) is sustained. The
rejection of claims 6-8, 10, 14-16, 18-25 and 28 as obvious
over Beis in view of Chino and further in view of Mizoguchi
(U.S. Patent No. 5,959,669) is sustained.
Accordingly, the decision of the examiner is affirmed.
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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

ERROL A. KRASS
Administrative Patent Judge )
)
)
)BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )

EAK/ce

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Appeal No. 2006-1020
Application No. 09/899,066

BIRCH STEWART KOLASCH & BIRCH
P.O. BOX 747
FALLS CHURCH, VA 22040-0747

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