Ex Parte Schofield et al

Patent Trials and Appeals Board

May 28, 2014

90011478 - (D) (P.T.A.B. May. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/011,478 02/07/2011 Kenneth Schofield Q122420 5719
7590 05/29/2014
FREDERICK S. BURKHART
VAN DYKE GARDNER LINN & BURKHART LLP
POST OFFICE BOX 888695
GRAND RAPIDS, MI 49588-8695
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/29/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte MAGNA ELECTRONICS, INC.
_____________

Appeal 2013-004164
Reexamination Control No. 90/011,478
Patent 6,222,447
Technology Center 3900
______________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, DAVID M.
KOHUT, and STANLEY M. WEINBERG, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-004164
Reexamination Control No. 90/011,478
Patent 6,222,447

This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s
rejection of claims 45 and 107
1
of United States Patent 6,222,447
(hereinafter “’447 Patent”). Final Office Action mailed February 24, 2012
(hereinafter “Final Action.”). An oral hearing was conducted with the Patent
Owner on April 24, 2013. A transcript of the oral hearing was made of
record on July 19, 2013.
We have jurisdiction under 35 U.S.C. § 306.
We AFFIRM.

STATEMENT OF THE CASE
This ex parte reexamination proceeding was initiated by a
“REQUEST FOR REEXAMINATION” filed on February 7, 2011, by
William Mandir, Sughrue Mion, PLLC, attorney for a Third-Party
Requester.
The ’447 Patent describes a vehicular rearview vision system.
Claim 45 is illustrative of the invention and reads as follows:
45. A rearview vision system for a vehicle having a gear
actuator, comprising:
an image capture device mounted at the rear of the
vehicle and having a field of view directed rearwardly of
the vehicle, wherein said image capture device comprises
a pixelated imaging array and wherein said pixelated
array comprises a CMOS imaging array;

1
Appellant withdraws claims 4, 32-37, 40-44, 46-56, 59-65, 67-79, 82-99,
102, 106, and 108-185 from consideration and asks the Examiner to cancel
the claims without prejudice. Reply Br. 2. As such, we will not address any
arguments directed toward these claims and also urge the Examiner to cancel
the claims.
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a display system viewable by a driver of the
vehicle which displays a rearward image output of said
image capture device;
a graphic overlayer superimposed on said rearward
image when the gear actuator of the vehicle selects a
reverse gear; and
wherein said graphic overlayer is disabled when
the gear actuator of the vehicle is not in reverse gear.

The following prior art references are applied:
Matsushita Electric Co. JP 60-79889 Oct. 23, 1986
Aisin AW Co. JP 64-14700 Jan. 18, 1989
G. Wang et al., CMOS Video Cameras, IEEE, pp. 100-103 (1991).
Appellant/Patent Owner appeals the Examiner’s following rejection:
Claims 45 and 107
2
are rejected under 35 U.S.C. § 103(a) as obvious
over the combination of JP 64-14700 (hereinafter referred to as “JP ‘700”),
JP 60-79889 (hereinafter referred to as “JP ‘889”), and “CMOS Video
Cameras” (hereinafter referred to as “Wang”).

ISSUES
Did the Examiner err in finding that it would have been obvious to
modify the system of JP ‘700 and JP ‘889 to use the CMOS camera taught
by Wang instead of the CCD camera taught by JP ‘700 and JP ‘889?

2
Since Appellant withdrew claims 4, 32-37, 40-44, 46-56, 59-65, 67-79, 82-
99, 102, 106, and 108-185 (Reply Br. 2) we have removed them from the
rejection statement.
Appeal 2013-004164
Reexamination Control No. 90/011,478
Patent 6,222,447

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ANALYSIS

Claims 45 and 107
Claims 45 and 107 recite a “rearview vision system… wherein said
image capture device comprises a pixelated imaging array and wherein said
pixelated array comprises a CMOS imaging array.” The Examiner adopted
the Requester’s proposed rejection of claims 45 and 107 over the
combination of JP ‘700, JP ‘889, and Wang, evidenced by Kuban. Ans. 4;
citing Final Office Action mailed February 24, 2012. Patent Owner argues
that it would not have been obvious to one of ordinary skill in the art at the
time of the invention to use the CMOS camera taught by Wang in place of
the CCD camera taught by JP ‘700 and JP ‘889. We disagree with Patent
Owner for the reasons discussed below.
Patent Owner argues that one of ordinary skill in the art would not
have been motivated to use the CMOS camera of Wang in the automotive
vision system of JP ‘700 and JP ‘889 because there is no “teaching or
suggestion or motivation” in Wang to use the CMOS camera in an
automotive vision system. Reply Br. 4. We disagree. Wang teaches that
the CMOS camera is usable in “vision systems,” a fact which tends to
suggest that the CMOS camera is usable in any type of vision system,
including in an automotive vision system. Wang, p. 100. Furthermore, even
if Wang does not provide an explicit teaching, suggestion, or motivation to
use the CMOS camera in an automotive vision system, the Supreme Court
has held that a teaching, suggestion, or motivation in the prior art is but one
of several rationales that may support a conclusion of obviousness. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-416 (2007). In KSR, the Court
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held that “when a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.” Id.
As evidenced by JP ‘700, JP ‘889, and Wang, CCD cameras and CMOS
cameras were known in the field of vision systems at the time of the
invention. In addition, using a CMOS camera instead of a CCD camera
would have achieved the predictable result of reducing the size, cost, and
power consumption of the camera used by the system of JP ‘700 and JP
‘889. Ans. 27; see also Wang, p. 100.
Nonetheless, Patent Owner provides the expert opinion of Dr. Lynam
in an attempt to show that using the CMOS camera of Wang instead of the
CCD camera of JP ‘700 and JP ‘889 would not have achieved predictable
results. Appeal Br. 69. According to Dr. Lynam, “one of ordinary skill in
the subject art in the early 90’s would have viewed CMOS imager
technology to be insensitive in low light conditions (and thus not particularly
suitable for use as a rear backup camera at night), to have inferior image
quality and to be difficult and costly to make.” Lynam Decl. ¶ 32. We do
not find Dr. Lynam’s declaration persuasive. In assessing the probative
value of an expert opinion, we must consider three factors: 1) the interest of
the expert in the outcome of the case, 2) the presence or absence of factual
support for the expert’s opinion, and 3) the strength of any opposing
evidence. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776, F.2d
281 (Fed. Cir. 1985).
Regarding the first factor, Dr. Lynam was employed by Patent Owner
when he provided the expert opinion and therefore has a substantial interest
in the outcome of the case. Ans. 44; see also Lynam Decl. ¶¶ 1-5.
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Regarding the second factor, there is little or no factual support for Dr.
Lynam’s expert opinion. For instance, neither Dr. Lynam nor Patent Owner
has provided any information indicating the approximate level of light
sensitivity needed by a backup camera to suitably operate at night,
3
the
approximate level of light sensitivity of any known CMOS camera, the
approximate cost and quality of any known CMOS camera, or the
approximate cost and quality of any known CCD camera. Regarding the
third factor, Wang provides substantial objective evidence that squarely
contradicts Dr. Lynam’s expert opinion. For instance, Wang teaches that
known CCD cameras were “cumbersome, power-hungry and expensive”
compared to Wang’s CMOS camera. Wang, p. 100. In addition, when
comparing the CMOS camera to known CCD cameras, Wang teaches that
the “picture quality is subjectively excellent, and compares well with
commercially available cameras.” Id. at p. 101. Wang also provides a table
of experimental results showing that the performance of the CMOS camera
meets or exceeds the performance of known CCD cameras in a number of
respects. Id. at p. 103. Based on our above analysis, we agree with the
Examiner that the probative value of the objective evidence provided by
Wang outweighs the probative value of Dr. Lynam’s expert opinion. Ans.
44-46.
Patent Owner also contends that the prior art as a whole teaches the
benefits of using CCD cameras in automotive vision systems and therefore
teaches away from using CMOS cameras in such systems. App. Br. 67. We

3
Taking into account ambient light sources such as buildings, street lamps,
and vehicles (especially the rear lights of the vehicle employing the backup
camera).
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disagree. A teaching of a preferred embodiment does not constitute a
teaching away from a non-preferred embodiment. In re Gurley, 27 F.3d
551, 554 (Fed. Cir. 1994). In addition, Patent Owner argues that using a
CMOS camera in an automotive vision system would render such a system
inoperable at night because CMOS cameras are insufficiently sensitive to
low levels of light.
4
Reply Br. 5. However, Patent Owner has not shown
that a CMOS camera-based automotive vision system would be completely
inoperative at night or that one of ordinary skill in the art would not know
how to modify the CMOS camera to work during the night. More to the
point, Wang teaches that CCD cameras are “cumbersome, power-hungry and
expensive” relative to Wang’s CMOS camera. Wang, p. 100. Thus, there is
motivation to use a CMOS camera in the place of a CCD camera since a
CCD camera-based automotive vision system is too expensive, too bulky,
and too power-hungry to be incorporated into a vehicle.

Evidence of Nonobviousness Based on Secondary Considerations
Patent Owner argues that there is substantial evidence of
nonobviousness based on secondary considerations. Specifically, Patent
Owner provides evidence of the following secondary considerations: 1)
commercial success, 2) long-felt need and failure of others, 3) skepticism of
experts, 4) unexpected results, 5) copying by others, and 6) licensing. The

4
According to this logic, claims 45 and 107 are not enabled because the
specification of the ‘447 Patent does not teach one of ordinary skill in the art
how to overcome the allegedly known low light insensitivity of CMOS
cameras.
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evidence pertaining to each secondary consideration is separately discussed
below.

Commercial Success
Dr. Lynam attests that CMOS camera-based automotive vision
systems supplied by Patent Owner accounted for 35% of the North
American market for automotive vision systems in 2010. Dr. Lynam also
attests that CMOS cameras accounted for only 10% of the world-wide
market for cameras shortly after the time of the invention and 90% at some
point thereafter. Appeal Br. 108; Reply Br. 13; see also Lynam Decl. ¶ 83.
The Examiner finds that Patent Owner has failed to establish that Schofield’s
use of a CMOS camera caused Patent Owner’s 35% share of the market for
automotive vision systems in 2010. Ans. 52. We agree with the Examiner.
Patent Owner bears the initial burden of proving that there is a nexus
between the claimed invention and the commercial success. Ormco Corp. v.
Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). In the instant
case, the automotive vision system of claims 45 and 107 comprises two
features: a CMOS camera for generating rearview images and a graphic
overlay superimposed on the images when a gear actuator of a vehicle
selects a reverse gear. Patent Owner has failed to present evidence that
Patent Owner’s 35% share of the market for automotive vision systems in
2010 was due to the CMOS camera feature and not the graphic overlay
feature. Furthermore, Patent Owner has not provided sufficient evidence of
the notion that Schofield’s use of CMOS cameras in one particular market
sparked the commercial success of CMOS cameras in every other market.

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Long-felt Need and Failure of Others
Again relying on the expert opinion of Dr. Lynam, Patent Owner
argues that “for years leading up to the early 1990s, the automotive industry
had long-sought an economical and effective camera-based backup system.
Ans. 46; see also Lynam Decl. ¶¶ 23, 25, and 85. The Examiner finds that
any long-felt need was satisfied by Wang. Ans. 52. We agree with the
Examiner. Any long-felt need must not have been satisfied by another
before the invention by Schofield. Newell Companies v. Kenney Mfg. Co.,
864 F.2d 757, 768 (Fed. Cir. 1988). As discussed earlier, the relevant field
is that of vision systems, not automotive vision systems. To the extent there
was a long-felt need in the field of vision systems for something cheaper,
smaller, and less power-hungry than existing CCD camera-based vision
systems, Wang satisfied that need by developing a cheaper, smaller, and less
power-hungry CMOS camera-based vision system. Wang, p. 100.
Furthermore, we are not persuaded that the camera-based backup systems of
JP ‘700 and JP ‘889 did not satisfy the long-felt need.

Skepticism of Experts
Patent Owner argues that using CMOS cameras in automotive vision
systems was not viewed as being “technically feasible” at the time of the
invention because CMOS cameras were viewed as being insensitive in low
light conditions, having inferior image quality, and being costly to make.
Appeal Br. 102-103; see also Lynam Decl. ¶ 32. The Federal Circuit has
held that “evidence that the combination was not viewed as technically
feasible… is evidence of unobviousness.” Arkie Lures, Inc. v. Gene Larew
Tackle, Inc., 119 F.3d 953, 958 (Fed. Cir. 1997). However, in Arkie Lures,
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the Federal Circuit clarified that the term “technically feasible” refers to
“manufacturing uncertainties” such as the potential for “violent explosions”
that render the manufacturing process “unsafe.”
5
119 F.3d at 957. In the
instant case, evidence of the low light insensitivity, poor image quality, and
high cost of CMOS cameras at the time of the invention does not raise doubt
that a CMOS camera-based automotive vision system can be manufactured.
Citing a 1998 “Ward’s Autoworld” article, Patent Owner further
contends that experts other than Dr. Lynam expressed concerns that it is
“just too expensive” to use a CMOS camera in an automotive vision system
at the time of the invention. Appeal Br. 103; see also Lynam Decl. ¶ 86.
However, the expert in the article is merely stating that CCD cameras are too
expensive for use in automotive vision systems. As discussed earlier, Wang
addressed this problem by developing a vision system that uses a CMOS
camera instead of a CCD camera. Wang, p. 100. In addition, even assuming
that the article can somehow be construed as saying that CMOS cameras are
too expensive for use in automotive vision systems, the cost of CMOS
cameras is not by itself sufficient to discourage one of ordinary skill in the
art from incorporating CMOS cameras into automotive vision systems for
another reason, such as reduced size and/or power consumption as is taught
by Wang. Id. See also In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983)
(“additional expense associated with the addition of inhibitors would not
discourage one of ordinary skill in the art”).

5
The invention at issue in Arkie Lures was a fishing lure manufactured using
a combination of salt and plastic. Two manufacturers testified that “it is
unsafe to mix chemicals such as salt with plastic, because such mixing can
cause violent explosions.” Id. at 955.
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Lastly, Patent Owner argues that Japanese automakers waited for
years after the invention to incorporate CMOS backup cameras into their
vehicles because they were skeptical that CMOS backup cameras would
prove reliable in real-life usage in the field through all seasons and climates.
Appeal Br. 103; see also Lynam Decl. ¶ 82. However, Japanese automakers
could have delayed not for reasons of reliability, but for economic reasons.
That businessmen would not make a combination for economic reasons does
not mean that persons skilled in the art would not make the combination
because of some technological incompatibility. Only the latter fact would be
relevant. Orthopedic Equipment Co. v. United States, 702 F.2d 1005, 1013
(Fed. Cir. 1983).

Unexpected Results
Patent Owner argues that by combining a CMOS camera with an
automotive vision system, the inventor achieved the unexpected commercial
success. Appeal Br. 104; see also Lynam Decl. ¶ 90. However, evidence of
unexpected results must be evidence that the combination yields
unexpectedly improved properties or properties not present in the prior art.
In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1989). Accordingly, evidence of
commercial success is not evidence of unexpected results.

Copying by Others
Patent owner contends that commercial products on the road today are
substantial replicas of products made in accordance with the present
invention. Appeal Br. 105-106; see also Lynam Decl. ¶¶ 81 and 88.
However, Patent Owner has not provided sufficient evidence of copying that
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Patent 6,222,447

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is not based on conjecture, i.e., independent development or without
knowledge of the ‘447 Patent.

Licensing
Patent Owner argues that a major OEM requested and was granted a
license to the ‘447 Patent, but no specific evidence of such is presented.
Appeal Br. 111; see also Lynam Decl. ¶ 89. Thus, we do not find Patent
Owner’s argument to be persuasive.

It follows that Patent Owner has not shown that the Examiner erred in
concluding that it would have been obvious to modify the system of JP ‘700
and JP ‘889 to use the CMOS camera taught by Wang instead of the CCD
camera taught by JP ‘700 and JP ‘889. As such, and for all of the reasons
stated supra we sustain the Examiner’s rejection of claims 45 and 107.

CONCLUSION
The Examiner did not err in finding that it would have been obvious
to modify the system of JP ‘700 and JP ‘889 to use the CMOS camera taught
by Wang instead of the CCD camera taught by JP ‘700 and JP ‘889.

SUMMARY
We affirm the Examiner’s decision to reject claims 45 and 107 as
obvious over the combination of JP ‘700, JP ‘889, and Wang.

Appeal 2013-004164
Reexamination Control No. 90/011,478
Patent 6,222,447

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AFFIRMED

alw

PATENT OWNER:
FREDERICK S. BURKHART
VAN DYKE GARDNER LINN & BURKHART LLP
POST OFFICE BOX 888695
GRAND RAPIDS, MI 49588-8695

THIRD PARTY REQUESTER:
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, NW
SUITE 800
WASHINGTON DC 20037