14432891 (P.T.A.B. Nov. 21, 2018)

Ex Parte Schrader

Patent Trial and Appeal BoardNov 21, 2018

14432891 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/432,891 04/01/2015 10948 7590 11/26/2018 Harrington & Smith, Attorneys At Law, LLC 4 Research Drive, Suite 202 Shelton, CT 06484 FIRST NAMED INVENTOR Martin Schrader 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. 884A.0450.Ul(US) 7221 EXAMINER FOSSELMAN, JOEL W ART UNIT PAPER NUMBER 2662 NOTIFICATION DATE DELIVERY MODE 11/26/2018 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): USPTO@hspatent.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN SCHRADER Appeal2018-004103 Application 14/432,891 1 Technology Center 2600 Before BRADLEY W. BAUMEISTER, NABEEL U. KHAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final decision rejecting claims 1, 2, 5-7, 10, 11, 13-18, 33, 38, and 40. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellant identifies Nokia Technologies Oy as the real party in interest. See Appeal Br. 1. 2 Claims 1, 2, 4--8, 10, 11-18, 33, 38, 40, and 41 are pending. Claims 4, 8, 12, and 41 are indicated as allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Final Act. 9. Claims 3, 9, 19-32, 34--37, and 39 are cancelled. See Appeal Br. 2. Appeal2018-004103 Application 14/432,891 STATEMENT OF THE CASE Invention Appellant's invention relates to a light guide to enhance alignment accuracy when multiple captured images are to be combined into a single image. See Spec. 1: 12-30. 3 Exemplary Claims Claims 1, 17, and 33 are independent. Claims 1 and 17 are exemplary and are reproduced below. 1. An apparatus comprising: a light guide element comprising a plurality of input diffraction gratings configured to couple a plurality of incident beams of light into the light guide element and at least one output diffraction grating configured to couple the plurality of beams of light out of the light guide element to at least one image sensor to enable a plurality of images to be captured wherein the light guide element is configured to guide the incident beams of light from the input diffraction gratings to the at least one output diffraction grating via total internal reflection, wherein the light guide element comprises a surface and wherein the plurality of input diffraction gratings are provided on the surface. 17. A method comprising assembling an apparatus, the assembling comprising: configuring a light guide element such that a plurality of input diffraction gratings of the light guide element 3 Throughout this Decision, we refer to: (1) Appellant's Specification filed April 1, 2015 ("Spec."); (2) the Final Office Action mailed March 29, 2017 ("Final Act."); (3) the Appeal Brief filed October 27, 2017 ("Appeal Br."); ( 4) the Examiner's Answer mailed January 10, 2018 ("Ans."); and (5) the Reply Brief filed March 9, 2018 ("Reply Br."). 2 Appeal2018-004103 Application 14/432,891 couple a plurality of incident beams of light into the light guide element and; configuring the light guide element such that at least one output diffraction grating of the light guide element couples the plurality of beams of light out of the light guide element to at least one image sensor to enable a plurality of images to be captured wherein the light guide element is configured to guide the incident beams of light from the input diffraction gratings to the at least one output diffraction grating via total internal reflection, wherein the light guide element comprises a surface and wherein the plurality of input diffraction gratings are provided on the surface. Appeal Br., Claims Appendix i, iii. REFERENCES AND REJECTIONS Claims 17, 18, and 33 stand rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. Final Act. 3. Claims 1, 2, 5, 10, 11, 13-18, 33, 38, and 40 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Moon et al. (US 2003/0081321 Al; pub. May 1, 2003) ("Moon"), Ershov et al. (SUI569786 Al; pub. July 6, 1990) ("Ershov"), and Akutsu et al. (US 2007/0070504 Al; pub. Mar. 29, 2007) ("Akutsu"). Final Act. 4--7. Claims 6 and 7 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Moon, Ershov, Akutsu, and Official Notice. Final Act. 7-8. Our review in this appeal is limited only to the above rejections and the issues raised by Appellant. Arguments not made are waived. See Manual of Patenting Examining ProcedureÂ§ 1205.02 (9th ed., Rev. 08.2017 (Jan. 2018)); 37 C.F.R. Â§Â§ 4I.37(c)(l)(iv) and 4I.39(a)(l). 3 Appeal2018-004103 Application 14/432,891 ANALYSIS Rejection of Claims 17, 18, and 33 UnderÂ§ 101 Issue: Does the Examiner properly reject claim 17 under 35 U.S.C. Â§ 101 as being directed to non-patentable subject matter? The Examiner determines that claim 17 "is[] directed to an abstract idea of arranging camera elements." Final Act. 3; see Ans. 8. The Examiner also determines the claim does not "include additional elements that are sufficient to amount to significantly more than the judicial exception because the method merely amounts to performing steps such as configuring and/or mounting elements of the imaging system." Id. Appellant argues the claimed "method includes structural detail, and performing the method would have measurable physical effects," such as "the physical effect of an apparatus." Appeal Br. 6. The Supreme Court has set forth "a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75- 79 (2012)). According to the Supreme Court's framework, we must first determine whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we must secondly "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (internal citation omitted). The Supreme Court characterizes the second step of the analysis as "a search for an 'inventive concept' - i.e., an element or 4 Appeal2018-004103 Application 14/432,891 combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. (internal citation omitted). With respect to step one of Alice, the "Supreme Court has suggested that claims 'purport[ing] to improve the functioning of the computer itself,' or 'improv[ing] an existing technological process' might not succumb to the abstract idea exception." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358-59). Thus, our reviewing court guides that the first step in the Alice inquiry asks whether the focus of the claims is on a specific asserted improvement in computer capabilities or an existing technological process, or, instead, on a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool. Enfzsh, 822 F.3d at 1335-36. Accord McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) ("We therefore look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery."). Applying step one of the Alice analysis, we determine that by extending functionality of a prior art image capturing apparatus by enabling multiple individual images to be combined into a single image with more accurate alignment, the claim improves image-capture technology. See Spec. 15:24--26; see also Enfish, 822 F.3d at 1335. Claim 1 specifically recites extending the functionality by configuring a light guide element "to guide the incident beams of light from the input diffraction gratings to the at least one output diffraction grating via total internal reflection," among other 5 Appeal2018-004103 Application 14/432,891 limitations. Appeal Br., Claims Appendix i, iii. We determine that the claim is directed to a specific improvement of an existing technology. Our determination is supported by the Specification's disclosure that the claimed method achieves benefits over conventional technology, enabling "multiple individual images to be combined into a single image" with more accurate alignment between the images. Spec. 1: 16-19, 15 :24--26. Viewing claim 17 as a whole and in light of the Specification, we find it similar, from a patent-eligibility perspective, to the claims approved in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). The DDR claims were held eligible because they recited a "solution ... necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." 773 F.3d at 1257. Appellant's claimed invention similarly provides a new way to overcome a problem ( the inability to accurately combine multiple individual images into a single image) specifically arising in the realm of image capturing devices. See Spec. 1: 12-30. Thus, according to step one of the Alice test, we determine claim 1 7 is not directed to an abstract idea. Because we find that claim 1 7 is not directed to ineligible subject matter, we do not reach step two of the Alice test. Enfish, 822 F.3d at 1339. We, therefore, do not sustain the Examiner's rejection of claim 17 as being directed to patent ineligible subject matter. We also do not sustain the rejection of claims 18 and 33 under 35 U.S.C. Â§ 101 for similar reasons. 6 Appeal2018-004103 Application 14/432,891 Rejection of Claim 1 Under 35 U.S.C. Â§ 103 Issue 1: Does the Examiner err in finding the combination of Moon, Ershov, and Akutsu teaches or suggests "a light guide element," as recited in claim 1? The Examiner relies on the combination of Moon, Ershov, and Akutsu to teach or suggest "a light guide element," as recited in claim 1. See Final Act. 4--5; Ans. 9--11. Appellant disputes the Examiner's factual findings, arguing "a person skilled in the art would not consider the discontinuous arrangement of mirrors and lenses [ in Moon] to comprise a light guide element." Appeal Br. 11. We are unpersuaded of error. As the Examiner notes, Appellant's argument does not address the actual reasoning of the Examiner's rejection because the Examiner relies on the combination of Moon, Ershov, and Akutsu, rather than on Moon alone, to teach "a light guide element," as recited in claim 1. See Ans. 9 (citing In re Keller, 642 F.2d 413,426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Issue 2: Does the Examiner provide erroneous reasoning in combining the teachings of Moon, Ershov, and Akutsu? Appellant argues "the Examiner is wrong in stating that the person skilled in the art would or could use the combined teachings of these documents (in addition to Akutsu) and arrive at the configuration the Examiner suggests." Appeal Br. 12. Specifically, Appellant argues that "starting from the 'light guide' of Moon ... and using the property of total internal reflection from Ershov would result in" ... "using the diffraction 7 Appeal2018-004103 Application 14/432,891 gratings of Moon to couple light into one of the following: 1. the same input point on a single fibre optic cable, or 2. one fibre optic cable per diffraction grating (i.e. two fibre optic cables)" and thus "[t]he person skilled in the art would not be motivated to attempt" the cited combination. Appeal Br. 12- 13. With respect to the one fibre optic cable per diffraction grating outcome, Appellant argues "the result would require two fibre optic ribbons and hence have two distinct surfaces. This could not possibly be combined with Akutsu to result in two input diffraction gratings on a single surface ( or at least not without a large number of additional steps)." Id. at 13 ( emphasis added). With respect to the "same input point on a single fibre [sic] optic cable" outcome, Appellant argues "additional steps would be required to have two incident beams diffracted into the fibre [sic] optic ribbon simultaneously at the same point in physical space without interference in the resultant image." Id. at 12. We are unpersuaded of Examiner error. Appellant's acknowledge that the Examiner's combination teaches or suggests the claimed configuration for both argued outcomes (1 and 2) that Appellant alleges result from the combination of Moon with Ershov, and Akutsu. Id. (the Examiner's combination "would arrive at the configuration the Examiner suggests"). Appellant's arguments that the Examiner's reasoning is erroneous, thus, rely on the assertion that the cited combination of references, for both possible outcomes 1 and 2, would require additional steps to teach all of the limitations of claim 1. See id. at 12-13. But the apparatus of claim 1 uses the transition term "comprising." The transition "comprising" in a claim indicates that the claim is open-ended and allows for additional elements or 8 Appeal2018-004103 Application 14/432,891 steps. See Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1380 (Fed. Cir. 2001) ("It is fundamental that the use of th[ e] phrase [ comprising] as a transitional phrase 'does not exclude additional unrecited elements, or steps."' ( citation omitted)); see also Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). Consequently, claim 1 does not exclude the unspecified "additional steps," upon which Appellant's arguments are premised and these arguments fail because they are not commensurate with the scope of the claim. See In re Self 671 F.2d 1344, 1348 (CCPA 1982). Issue 3: Does the Examiner err in finding the combination of Moon, Ershov, and Akutsu teaches or suggests "wherein the plurality of input diffraction gratings are provided on the surface," as recited in claim 1? Appellant disputes the Examiner's factual findings arguing "Akutsu does not teach that the input diffraction gratings (plural) are provided on a surface: Akutsu only teaches one input diffraction grating (singular) provided on a surface .... No combination of documents gives the faintest impression that one could have two input diffraction gratings on one surface." Appeal Br. 14. The Examiner responds that "[t]he combination of Moon, Ershov, and Akutsu, as a whole, clearly discloses that the input diffraction gratings (plural) are provided on a surface" because "Moon discloses a plurality of [input] diffraction gratings (24/54), and Akutsu discloses that the diffraction gratings are provided on the surface, as claimed (figs 1 and 12b )." Ans. 11. 9 Appeal2018-004103 Application 14/432,891 We are unpersuaded of error. Appellant's argument does not address the actual reasoning of the Examiner's rejection because the Examiner relies on the combination of references rather than on Akutsu alone, to teach "the plurality of input diffraction gratings are provided on the surface," as recited in claim 1. Appellant next argues Akutsu teaches away from the claimed combination because "Akutsu instructs that 'the collimated beam group enters and exits from the light guide plate from one optical surface"' Appeal Br. 14. We find Appellant's argument unpersuasive. Even assuming Appellant's assertion that Akutsu teaches light enters and exits from one surface of the light guide plate is accurate, Appellant fails to sufficiently explain why this fact would preclude a second input diffraction grating from being placed on the same surface. Accordingly, Appellant does not proffer sufficient evidence or argument that Akutsu criticizes, discredits, or otherwise discourages the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Issue 4: Is the combination of Akutsu and Ershov non-combinable with Moon? Appellant argues the combination Akutsu and Ershov is not combinable with Moon because "Ershov requires the presence of optics between the input diffraction grating and the fibre optic ribbon" and "[i]t would not be possible to provide the optics as required if the input diffraction grating was provided on the surface of the fibre [sic] optic 10 Appeal2018-004103 Application 14/432,891 ribbon." Appeal Br. 15. Appellant, thus, contends "that the Examiner has used almost exclusively hindsight reasoning." Id. at 17. Appellant's argument is premised on a "physical" or "bodily" incorporation of limitations of one reference into the other. However, this is not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See Keller, 642 F.2d at 425. Rather than express obviousness as the physical incorporation of a structure from one reference into the structure of another reference, the prior art should be viewed as a combination of teachings from different sources, and the use of those teachings by one of ordinary skill in the art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007) ("[a] person of ordinary skill is also a person of ordinary creativity, not an automaton," and "in many cases ... will be able to fit the teachings of multiple patents together like pieces of a puzzle."). Thus, we find Appellant's argument unpersuasive because the rejection does not require physically incorporating Akutsu and Ershov's features into the structure of Moon. Instead, the Examiner rejects the claim as unpatentable over the combined teachings of the references. Accordingly, we determine the Examiner has provided sufficient motivation for modifying Moon based on the teachings of Akutsu and Ershov, without resorting to impermissible hindsight reasoning. See Final Act. 6. 11 Appeal2018-004103 Application 14/432,891 We, therefore, sustain the Examiner's 35 U.S.C. Â§ 103(a) rejection of claim 1. We also sustain, for similar reasons, the Examiner'sÂ§ 103(a) rejection of independent claims 17 and 33, which are argued nominally separate from independent claim 1. See Appeal Br. 18-38. Appellant does not argue dependent claims 2, 5-7, 10, 11, 13-16, 18, 38, and 40 separately, and, therefore, these claims fall with their respective independent claims. See Appeal Br. 18. DECISION We reverse the Examiner's rejections of claims 17, 18, and 33 under 35 U.S.C. Â§ 101. We affirm the Examiner's rejections of claims 1, 2, 5-7, 10, 11, 13- 18, 33, 38, and 40 under 35 U.S.C. Â§ 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision to reject all of the pending claims. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12