Ex Parte Salvato

Board of Patent Appeals and Interferences

Feb 25, 2010

10307786 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DOMINICK SALVATO
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Appeal 2009-004715
Application 10/307,786
Technology Center 2600
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Decided: February 25, 2010
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Before KENNETH W. HAIRSTON, THOMAS S. HAHN, and, ELENI
MANTIS MERCADER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004715
Application 10/307,786

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Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 to 18 and 25 to 31.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellant’s invention relates to a multimode camera system for a
portable electronic device (e.g., PDA or cell phone) (Figs. 3-5; Abstract;
Spec. 1). More specifically, Appellant discloses and claims a multimode
camera system and method having three lenses with varying focal lengths,
an image sensor repositionable between the three lenses, and a
repositionable cover to cover one of the lenses such that removal of the
cover activates a mode of operation (e.g., camera mode or bar code mode)
(Fig. 5; Spec. 7:20-10:3; claims 1, 25, 27, and 31). The system can also
switch between two modes, each having its own associated software
application, when at least one repositionable lens is adjusted within a
housing of the system (Fig. 5; Spec. 2:1-18; claim 26).
Claims 1 and 26 are representative of the claimed invention, and read
as follows:

1. A multimode camera system, comprising:

a housing;

1 Claims 19 to 24 have been canceled. We note that the Examiner objected
to claims 1, 25, 27, and 31 for informalities (e.g., antecedent basis errors) in
the Final Rejection mailed May 7, 2007 (Final Rej. 3). Such an objection is
petitionable, and not appealable as asserted by Appellant in the Brief (App.
Br. 5-6). See 35 U.S.C. § 134(a); 37 C.F.R. §§ 1.113(a) and 1.181; MPEP
§ 1201. Accordingly, we will not address the merits of the Examiner’s
objection in this Decision.
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at least three lenses each of varying focal length located at disparate
locations within the housing;

an image sensor located within the housing, wherein the image sensor
is repositionable between each of the at least three lenses;

a control component that aligns the sensor with a suitable one of the at
least three lenses based at least in part on a selected mode of operation; and

a repositionable cover that covers one of the at least three lenses, the
removal of the repositionable cover activates a mode of operation.

26. A multimode camera system, comprising:

a housing;

at least one repositionable lens located within the housing, adjusting
the repositionable lens switches between a first software application that
corresponds to a first mode of the multimode camera system to a distinct
second software application that corresponds to a second mode of the
multimode camera system; and

at least one image sensor located within the housing, the at least one
image sensor comprises one of an infinite focal length, a wide angle focal
length, and a macro focal length.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Robb US 6,177,950 B1 Jan. 23, 2001
Nishimura US 6,501,909 B1 Dec. 31, 2002
(filed Jul. 5, 2002)
Sukeno US 6,816,156 B2 Nov. 9, 2004
(filed Mar. 25, 2002)
Fukuda US 7,106,357 B2 Sep. 12, 2006
(filed Aug. 21, 2002)
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Kunihiro2 JP 11-220684 Aug. 10, 1999
(hereinafter, “Shioura”)
Akihiro3 JP 13-209545 Aug. 3, 2001

(i) The Examiner rejected claim 26 under 35 U.S.C. § 102(e) as
anticipated by Fukuda.
(ii) The Examiner rejected claims 1 to 3, 5 to 11, 13 to 18, and 31
under 35 U.S.C. § 103(a) based upon the teachings of Robb, Nishimura, and
Shioura.
(iii) The Examiner rejected claim 4 under 35 U.S.C. § 103(a) based
upon the teachings of Robb, Nishimura, Shioura, and further in view of
Sukeno.
(iv) The Examiner rejected claims 12 and 27 to 29 under 35 U.S.C.
§ 103(a) based upon the teachings of Robb, Nishimura, Shioura, and further
in view of Akihiro.
(v) The Examiner rejected claim 25 under 35 U.S.C. § 103(a) based
upon the teachings of Robb and Shioura.
(vi) The Examiner rejected claim 30 under 35 U.S.C. § 103(a) based
upon the teachings of Robb, Nishimura, Shioura, Akihiro, and further in
view of Sukeno.

2 Throughout this decision, we refer to the official translation of Shioura
provided to the USPTO by The McElroy Translation Company and made of
record June 2007 (PTO-07-4186).
3 Throughout this decision, we refer to the official translation of Akihiro
provided to the USPTO by The McElroy Translation Company and made of
record October 2008 (PTO-08-8075).
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Anticipation
With regard to the anticipation rejection of claim 26, the Examiner
relies on Fukuda (see col. 8, ll. 2-9 and 21-24; col. 10, l. 23 to col. 11, l. 4;
housing 10 and lens 28) as teaching the recited limitation of at least one
repositionable lens (28) located within a housing (10), where the lens
switches between a first software application corresponding to a first
operation mode (i.e., normal phone mode) and a second software application
corresponding to a second operation mode (i.e., optical mouse mode) (Ans.
5). Appellant argues (App. Br. 6-8; Reply Br. 2-4) that Fukuda fails to
disclose or suggest the repositionable lens which, when adjusted, switches
between first and second software applications and operation modes as
recited in claim 26.
Obviousness
With regard to the obviousness rejections of claims 1 to 18, 25, and 27
to 31, the Examiner relies on Shioura (see SOLUTION section of English
Abstract) as teaching the recited limitations of a recording device having a
plurality of modes where a repositionable cover of a lens is removed to
activate a mode of operation (Ans. 8, 13, 20, and 23). Appellant argues
(App. Br. 8-10; Reply Br. 4-6) that Shioura fails to disclose or suggest a
repositionable lens cover that, when removed, activates a mode of operation.
Appellant asserts (App. Br. 9) that in Shioura, no events (including mode
operation) occur “at the instance” the cover is removed.
With regard to the obviousness rejection of claim 4, the Examiner
relies on Sukeno (see Figs. 18A-C; col. 11, l. 20 to col. 12, l. 7) as teaching a
user recognition mode (Ans. 15-17). Appellant argues (App. Br. 10-11;
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Reply Br. 5) that Sukeno fails to disclose or suggest a user recognition
mode, and instead determines a location of a user on a screen.

ISSUES
Anticipation

Based on Appellant’s arguments, the following anticipation issue is
presented: Has Appellant shown the Examiner erred in determining that
Fukuda discloses at least one repositionable lens located within a housing,
where the lens switches between a first software application corresponding
to a first operation mode and a second software application corresponding to
a second operation mode, as set forth in claim 26?
Obviousness

Based on Appellant’s arguments, the following two obviousness
issues are presented:
(i) Has Appellant shown that the Examiner erred in determining
that Shioura discloses or suggests a repositionable cover of a
lens is removed to activate a mode of operation, as set forth
in claims 1, 25, 27, and 31?
(ii) Has Appellant shown that the Examiner erred in determining
that Sukeno discloses or suggests an image sensor
configured for a user recognition mode, as set forth in claim
4?

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FINDINGS OF FACT (FF)
1. Appellant describes and claims a portable electronic device having a
multimode camera system (Figs. 3, 5, and 11-13) including a housing
205, three lenses 520, 525, and 530, a repositionable image sensor
505, a processor 1305 (i.e., control component), and a repositionable
cover 1240. Different ones of the lenses are employed in order to
provide different focal lengths associated with different modes of
operation provided to a user (Spec. 2:1-10; Abstract). The modes of
operation may include bar code reading, still picture imaging, video
conferencing, and user recognition modes such as facial recognition
and iris recognition (Spec. 2:9-10).
2. Fukuda describes a cellular phone (Fig. 1A) having a multimode
camera system (Figs. 11 and 26) including a repositionable lens
(adapter optical system 28 including lenses 28A and 28B) located
within a case 10, where the lens optical system 28 switches between a
first software application corresponding to a first operation mode and
a second software application corresponding to a second operation
mode (Figs. 1A, 1B, 9-13, and 21A-E; col. 7, l. 5 to col. 8, l. 24; col.
9, ll. 31-37; col. 10, l. 23 to col. 11, l. 4). Processor or CPU 38
controls the system so that image pickup element 18A can operate
with lenses 18B, 28A, and/or 28B in order to employ differing focal
lengths associated with different user operational modes such as
normal camera mode and optical mouse mode (see Fig. 13).
3. Shioura describes a recording device (see at least Figs. 6 and 8)
operating a picture and voice recording mode by setting the recording
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mode (step S107) when it is determined that a lens cover LC is not
mounted on a lens 201 at the time of recording (step S102; see
generally ¶¶ [0008]-[0013], [0028], [0029], [0037], and [0085]-
[0098]; Abstract).
4. Sukeno describes an image sensor 12 in an imaging device (Fig. 17)
where different lenses 11 and 21 are selected depending upon a mode
of operation (see Figs. 15, 18A-C, and 21A-C; col. 11, l. 12 to col. 12,
l. 7; Abstract). In Sukeno, an imaging state detecting portion 10
detects a subject or user’s position as being either in a back-light state
or a front-light state (each requiring different focal lengths and being
associated with either a close range shot or a wide range shot) and
determines exposure and image processing accordingly (Abstract; col.
1, l. 60 to col. 2, l. 17; col. 5, ll. 49-53; col. 10, ll. 12-24).

PRINCIPLES OF LAW
Claim Construction
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053-54 (Fed. Cir. 1997).

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Anticipation
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Obviousness
Appellant has the burden, when on appeal to the Board, to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
The Examiner’s articulated reasoning for an obviousness rejection
must possess a rational underpinning to support the legal conclusion of
obviousness. Kahn, 441 F.3d at 988.

ANALYSIS
Anticipation: Fukuda and Claim 26
Appellant’s arguments (App. Br. 6-8; Reply Br. 2-4) that Fukuda fails
to disclose or suggest a repositionable lens which, when adjusted, switches
between first and second software applications and operation modes, are
unconvincing in light of our findings with respect to Fukuda (FF 2). Fukuda
describes a multimode camera system (Figs. 11 and 26) including a
repositionable lens (adapter optical system 28 including lenses 28A and
28B) located within a housing 10, where the lens optical system 28 switches
between a first software application corresponding to a first operation mode
(e.g., normal phone and camera mode) and a second software application
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corresponding to a second operation mode (e.g., optical mouse mode) (FF
2).
Claim 26 would be reasonably understood by one of ordinary skill in
the art to encompass Fukuda’s lens and camera system for switching
between modes because the phrase “repositionable lens” as used in the claim
includes the operation in Fukuda of swiveling the lid 12 of housing 10 on
cellular phone in Figure 1. Thus, we find no error in the Examiner’s reliance
on Fukuda as teaching the repositionable lens of a multimode camera system
(Ans. 5; see FF 2), at least to the extent this feature is broadly recited in
claim 1. See Am. Acad. of Sci. Tech. Cir., supra. Appellant has not shown
that the Examiner erred in determining that Fukuda discloses at least one
repositionable lens located within a housing, where the lens switches
between a first software application corresponding to a first operation mode
and a second software application corresponding to a second operation
mode, as set forth in claim 26.
Accordingly, we will sustain the Examiner’s anticipation rejection of
claim 26.
Obviousness: Shioura and Claims 1, 25, 27, and 31
Independent claims 1, 25, 27, and 31 each recites a “repositionable
cover” or “cover” that covers a lens, where the removal of the cover
activates “a mode of operation” (see claims 1, 25, 27, and 31). With respect
to each of these independent claims, as well as claims 2, 3, 5 to 11, 12 to 18,
and 28 to 30 which depend respectively therefrom, the Examiner relies upon
Shioura (Ans. 8, 13, 20, and 23) as teaching such a lens cover that activates a
mode of operation (see rejections (ii) and (iv)-(vi) listed supra at page 4).
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We are not persuaded by Appellant’s arguments (App. Br. 8-10;
Reply Br. 4-6) that Shioura fails to disclose or suggest a repositionable lens
cover that, when removed, activates a mode of operation. Appellant’s
contention (App. Br. 9) that in Shioura, no events (including mode
operation) occur “at the instance” the cover is removed is unpersuasive
inasmuch as this argument is not commensurate in scope with the claimed
invention set forth in independent claims 1, 25, 27, and 31.
We agree with the Examiner (Ans. 29) that claims 1, 25, 27, and 31 do
not require that the removal of the cover immediately or directly activates a
mode of operation, only that it occurs. In light of our findings with respect
to Shioura (FF 3), we find no error in the Examiner’s reliance (Ans. 8, 13,
20, and 23) on Shioura as teaching the recited limitation of a repositionable
cover that covers at least one lens, where the removal of the cover activates a
mode of operation. Appellant has not adequately shown that the Examiner
erred in determining that Shioura discloses or suggests a repositionable
cover of a lens that is removed to activate a mode of operation, as set forth in
claims 1, 25, 27, and 31.
We will therefore sustain the Examiner’s obviousness rejections of
claims 1, 25, 27, and 31, and claims 2, 3, 5 to 11, 12 to 18, and 28 to 30,
which depend respectively therefrom.
Obviousness: Sukeno and Claim 4
Claim 4 recites a “user recognition mode.” As described in
Appellant’s Specification, a user recognition mode is commonly known in
the art as a mode for determining the identity of a user such as by facial
recognition or iris recognition (see FF 1). One of ordinary skill in the art
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may also understand that fingerprint recognition could be another type of
user recognition.
We find the Examiner’s reliance (Ans. 14-17 and 30) on Sukeno as
teaching a user recognition mode to be misplaced; and, we find Appellant’s
contentions (App. Br. 10-11; Reply Br. 5) that Sukeno instead teaches
determining the location of a user (to control exposure or luminance) to be
persuasive. Sukeno discloses determining the location of a user and does not
determine the identity of a user (FF 4). Sukeno is silent as to any user
recognition, at least to the extent such a feature is defined by Appellant in
the Specification and as known to those of ordinary skill in the art.
The Examiner has failed to provide findings of fact commensurate
with the claim scope, and articulated reasoning possessing a rational
underpinning to support the legal conclusion of obviousness. Kahn, 441
F.3d at 988. Accordingly, we will not sustain the Examiner’s obviousness
rejection of claim 4.

CONCLUSIONS
Anticipation
Appellant has not adequately shown that the Examiner erred in
determining that Fukuda discloses at least one repositionable lens located
within a housing, where the lens switches between a first software
application corresponding to a first operation mode and a second software
application corresponding to a second operation mode, as set forth in claim
26.
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We conclude that Appellant has not adequately shown the Examiner
erred in rejecting claim 26 under 35 U.S.C. § 102(e).
Obviousness
Appellant has not adequately shown that the Examiner erred in
determining that Shioura discloses or suggests a repositionable lens cover
that is removed to activate a mode of operation, as set forth in claims 1, 25,
27, and 31.
Appellant has shown that the Examiner erred in determining that
Sukeno discloses or suggests an image sensor configured for a user
recognition mode, as set forth in claim 4.
Appellant has not shown the Examiner erred in rejecting claims 1 to 3,
5 to 18, 25, and 27 to 31 under 35 U.S.C. § 103(a). However, Appellant has
shown the Examiner erred in rejecting claim 4 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner rejecting claims 1 to 3, 5 to 18, and 25
to 31 (see rejections (i), (ii), and (iv)-(vi) listed supra at page 4) is affirmed.
The decision of the Examiner rejecting claim 4 (see rejection (iii) listed
supra at page 4) is reversed. Accordingly, the decision of the Examiner is
affirmed-in-part.

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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-IN-PART

KIS

MOTOROLA, INC.
1303 EAST ALGONQUIN ROAD
IL01/3RD
SCHAUMBURG, IL 60196