Ex Parte Pfeffer et alDownload PDFPatent Trial and Appeal BoardDec 16, 201411994573 (P.T.A.B. Dec. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NICOLA BETTINA PFEFFER and PIETER JOHANNES QUINTUS VAN VOORST VADER ____________ Appeal 2012-008919 Application 11/994,573 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Examiner rejected claims 1, 3–8, 10, and 11. Claims 2 and 9 were cancelled. (App. Br. 3). Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention “relates to a digital image capturing device and to a computer program loadable in a controller of such a digital image capturing Appeal 2012-008919 Application 11/994,573 2 device.” (Spec. 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A digital image capturing device for capturing a scene comprising: a two-dimensional array of light-exposable cells capable of capturing said scene; one or more light-emitting diodes capable of illuminating said scene; a controller arranged to sequentially expose one or more of said light exposable cells of said two-dimensional array to capture said scene and to selectively vary the illumination of various parts of said scene by said one or more light-emitting diodes during capturing of said scene in synchronism with the exposure of one or more of said cells; and optical means capable of directing light emitted by said one or more light emitting diodes, wherein said controller is arranged to control said optical means to selectively vary the illumination of said various parts of said scene. (Contested limitations emphasized). REJECTIONS A. Claims 1, 3, 5, 8, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Rantanen (US 2003/0007088 A1, Jan. 9, 2003), Takehana (US 4,740,806, Apr. 26, 1988), and Wheeler (US 5,126,778, June 30, 1992). B. Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable the combined teachings and suggestions of Rantanen, Takehana, Wheeler, and Nozaki (US 2005/0088538 A1, Apr. 28, 2005). Appeal 2012-008919 Application 11/994,573 3 C. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable the combined teachings and suggestions of Rantanen, Takehana, Wheeler, and Ng (US 2006/0126326 A1, June 15, 2006). D. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable the combined teachings and suggestions of Rantanen, Takehana, Wheeler, and Bloom (US 2006/0245643 A1, Nov. 2, 2006). GROUPING OF CLAIMS Based on Appellants’ arguments, we decide the appeal of rejection A of claims 1, 3, 5, 8, and 10 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1 We address rejections B–D separately, infra. ANALYSIS We consider all of Appellants’ arguments and evidence presented. We disagree with Appellants’ contentions regarding the Examiner’s rejections A–D of all claims on appeal. 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 Answer in response to arguments made in Appellants’ Appeal Brief. (Ans. 4–10). We highlight and address specific findings and arguments below. 1 Appellants filed a Notice of Appeal on February 10, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-008919 Application 11/994,573 4 Rejection A As an initial matter of claim construction, a question arises as to how much patentable weight, if any, should be given the contested functional limitation: “to selectively vary the illumination of various parts of said scene . . . ,” as recited in representative claim 1. Claim 1 does not include any specific details regarding the computer code and requisite algorithms required to arrange a controller to perform the contested statement of intended use.2 Our reviewing court guides the patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). See also Superior Indus., Inc. v. Masaba, Inc., 553 F. App’x 986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (“[A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (U.S. 1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter 2 “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. Appeal 2012-008919 Application 11/994,573 5 whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”).3 Assuming, arguendo, our reviewing court may give full patentable weight to the contested functional limitations, we find the preponderance of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for the reasons discussed below. Regarding claim 1, Appellants contend: “Because Rantanen, et al. does not enable the disclosure of a controller as set forth in claim 1, Applicants respectfully submit that Rantanen, et al. cannot be applied as a reference in a rejection.” (App. Br. 9). However, we observe the Examiner’s stated ground of rejection relies on Wheeler’s microprocessor controller 110 (Fig. 9; col. 5, ll. 53–55), and not Rantanen, to teach or suggest the contested controller. (Ans. 6). See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references). Because Appellants have not rebutted the Examiner’s specific findings (Ans. 6), we need not reach the issue of whether Rantanen inherently teaches the contested controller to decide this appeal. 3 Superior Indus., 553 F. App’x 986, is a non-precedential opinion of the Court of Appeals for the Federal Circuit. However, we consider the concurring opinion by former Chief Judge Rader as guiding because it cites precedential authority in support. Appeal 2012-008919 Application 11/994,573 6 Appellants again attack Rantanen in isolation regarding the remaining contested limitations: “to selectively vary the illumination of various parts of said scene by said one or more light-emitting diodes during capturing of said scene in synchronism with the exposure of one or more of said cells.” (Claim 1). We note the Examiner’s rejection A is based on the combined teachings and suggestions of Rantanen, Takehana, and Wheeler. Appellants fail to rebut the Examiner’s specific findings regarding Takehana and Wheeler. (Ans. 5–6, 10–11). Takehana teaches, “Lighting circuit 21 is arranged to be responsive to a command from microcomputer 20 to selectively actuate a proper one of the plurality of infrared light emitting diodes IR1, IR2, IRn . . . .” (Col. 3, l. 65 – col. 4, l. 1, emphasis added). Thus, we find Takehana would have taught or suggested “selectively vary[ing] the illumination of various parts of said scene by said one or more light-emitting diodes during capturing of said scene in synchronism with the exposure of one or more of said cells” (claim 1). We find Takehana varies the illumination within the broadest reasonable interpretation of claim 1 when the LEDs (light emitting diodes IR1, IR2, IRn) are switched such that they “successively emit light in response to the command from microcomputer 20” (col. 5, ll. 10–11) to “capture” the scene (using infrared light) to find the “range to an object for use in an automatic focusing camera.” (Abstract, Fig. 1). We decline Appellants’ invitation to read limitations from the Specification into independent claims 1 and 8 on appeal. Our reviewing court guides: “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace ‘different Appeal 2012-008919 Application 11/994,573 7 subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). This reasoning is applicable here. On this record, we are not persuaded the Examiner’s claim interpretation is overly broad or unreasonable. Appellants urge that independent claim 8 is patentable for at least the same reasons as claim 1. (App. Br. 13). However, we are not persuaded the Examiner erred in rejecting claim 1 for the reasons discussed above. Appellants’ arguments notwithstanding (App. Br. 6–13; Reply Br. 4–11), on this record, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Accordingly, we sustain rejection A of representative claim 1, and the grouped claims which fall therewith under rejection A. (See Grouping of Claims, supra). Rejections B–D Appellants urge the remaining dependent claims rejected under rejections B–D “are patentable for at least the same reasons as claims 1 and 8, respectively, and in view of their additionally recited subject matter.” (App. Br. 13–14). However, Appellants advance no arguments regarding the additionally recited subject matter. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). We find no deficiencies in the rejection of claims 1 and 8 for the reasons discussed above regarding Appeal 2012-008919 Application 11/994,573 8 rejection A. Therefore, we sustain the Examiner’s rejections B–D of all remaining claims on appeal. DECISION We affirm the Examiner’s rejections A–D of claims 1, 3–8, 10, and 11 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED msc Copy with citationCopy as parenthetical citation