Ex Parte Shibuno

Patent Trial and Appeal Board

Mar 24, 2017

14223309 (P.T.A.B. Mar. 24, 2017)

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.
14/223,309 03/24/2014 Koji SHIBUNO 083710-0401 1868
53080 7590 03/28/2017
McDermott Will and Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
BERHAN, AHMED A
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
mweipdocket @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJI SHIBUNO
Appeal 2017-000132
Application 14/223,309
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
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—9, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-000132
Application 14/223,309
Invention
The disclosed and claimed invention relates to “an imaging device, a
camera body, and method for controlling an imaging device.” (Spec. 1).
Representative Claim
1. An imaging device comprising:
an imaging unit that captures light formed into an image
through an optical system, the optical system being configured
such that a user manually houses a lens with operating force by
the user;
an operating unit operated by the user;
a display unit that displays an image; and
a controller for setting a playback mode and an operating
mode other than the playback mode, wherein:
the controller sets the playback mode when the controller
determines that the lens is housed, even if the operating mode
other than the playback mode has been accepted through the
operating unit, the playback mode being an operating mode to
display on the display unit an image represented by image data
stored in a storage medium.
(Contested limitation emphasized in italics and bold.)
Rejections
Rl. Claims 1—9 are rejected under 35 U.S.C. § 112(a), first
paragraph, as failing to comply with the written description requirement.
R2. Claims 1—5, 7, and 8 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Baxter (US
5,546,147; iss. Aug. 13, 1996) andHosoe (US 2012/0098992 Al, publ. Apr.
26, 2012).
2
Appeal 2017-000132
Application 14/223,309
R3. Claims 6 and 9 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Baxter, Hosoe, and
Sekine (US 2010/0073549 Al, publ. Mar. 25, 2010).
CLAIM GROUPING
Based on Appellant’s arguments, we decide the appeal of all claims
rejected under §103 rejection R2 on the basis of representative claim 1. We
decide the appeal of claims 6 and 9 rejected under §103 rejection R3 on the
basis of representative claim 6. We address §112(a) rejection R1 of claims
1—9 separately, infra. To the extent Appellant has not advanced separate,
substantive arguments for particular rejected claims or issues, such
arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We find Appellant’s arguments regarding the appeal of rejection
R1 persuasive. We find Appellant’s arguments regarding the appeal of
rejections R2 and R3 unpersuasive for the reasons discussed infra. We
highlight and address specific findings and arguments for emphasis in our
analysis below.
Rejection R1 under § 112(a) — Written Description
Regarding rejection R1 of claim 1, the Examiner finds:
the limitation in the claim which recites “even if the operating
mode other than the playback mode has been accepted
through the operating unit[”], which is considered to introduce
a new matter, is interpreted by the examiner as: during the
instance of retraction of the lens, inputting by a user other
operation mode, for example a shooting mode, which is not
covered by the scope of the current disclosure as described in
3
Appeal 2017-000132
Application 14/223,309
applicant's disclosure (see Abstract and 10007 and steps 302 and
308 of fig. 3).
(Ans. 3).
Appellant contends, inter alia:
Appellant submits that, at a minimum, FIG. 3 and page 6, lines
9-21 and page 15, line 12 to page 17, line 13 of the specification
as originally filed support the subject matter of claim 1.
(App. Br. 6).
We are persuaded by Appellant’s contention (id.) and find sufficient
written description support in the Specification to demonstrate possession of
the contested claim limitation: “ When the lens in interchangeable lens 101
is housed, camera controller 153 sets digital camera 100 to the playback
mode regardless of whether or not operation to set the playback mode has
been accepted through operating unit 170.'n (Spec. 6,11. 18—21) (Emphasis
added).
We note Examiner did not address Appellant’s specific citations to the
Specification in the Answer. Therefore, for essentially the same reasons
argued by Appellant (App. Br. 6), we reverse the Examiner’s § 112(a)
rejection R1 of claims 1—9.
Rejection R2 of claims 1—5, 7, and 8 under §103
Regarding claim 1, Appellant contends Hosoe fails to teach the
contested limitation because:
Hosoe discloses, in paragraph [0042], that "when the mode
selector switch 205 is set to the playback mode, the lens barrel
unit 202 is retracted" and that "the control unit 302 accesses the
memory control unit 304 to read the recorded image data from
the memory card 305 as a recording medium" (emphasis added).
It is clear from these descriptions that in Hosoe, after the
4
Appeal 2017-000132
Application 14/223,309
playback mode is set, the lens barrel unit is retracted (housed).
(App. Br. 18).
Appellant further contends, inter alia:
the limitation “regardless of whether or not” includes the
situation in which the playback mode is chosen by the user and
the situation in which a mode other than the playback mode is
chosen by the user. In Hosoe, when a mode other than the
playback mode (e.g., shooting mode) is chosen by the user when
the lens barrel is retracted, the camera always proceeds to the
shooting mode.
(App. Br. 18-19).
We observe Hosoe teaches when the mode selector switch is set to the
playback mode, the lens barrel unit is retracted (i.e., the lens is “housed”
when retracted). (Ans. 4—5, citing Hosoe 142: “[w]hen the mode selector
switch 205 is set to the playback mode, the lens barrel unit 202 is
retracted.”).
To the extent the reverse sequence may arguendo be required by the
claim language “the controller sets the playback mode when the controller
determines that the lens is housed . . . ,” we find a modification of the
function sequence described in Hosoe (142) would have been well within
the ordinary level of skill of an artisan, because there are only two possible
orders for performing the two recited functions. (Claim l).1 * * *
Our reviewing court guides: Where “the problem is known, the
possible approaches to solving the problem are known and finite, and the
1 “The person of ordinary7 skill in the art is a hypothetical person who is
presumed to know the relevant prior art.” In re GPAC, 57 F.3d 1573, 1579
(Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
5
Appeal 2017-000132
Application 14/223,309
solution is predictable through use of a known option,” a solution that is
obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544
F.3d 1341, 1351 (Fed. Cir. 2008), citing KSRInt7 Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007). See also Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1364 (stating the number of options must be “small or
easily traversed.”).
Here, because there are only two possible sequences for performing
the respective functions of determining a lens is housed (retracted) and
setting the playback mode of the imaging device, and because we find an
artisan would have known how to accommodate the respective arrangements
with predictable results,2 we conclude the Examiner’s proffered substitution
would have at least been “obvious to try.”
Moreover, as a matter of claim construction, we note Appellant
attempts to distinguish the contested limitation in apparatus claim 1 (“An
imaging device”) in terms of function, not structure. Regarding apparatus
claims generally, 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'I, 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 Paragon Solutions, LLC v. Timex Corp., 566
F.3d 1075, 1090 (Fed. Cir. 2009). “[AJpparatus claims cover what a device
is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc.,
909 F.2d 1464, 1468 (Fed.Cir.1990).
2 See KSR, 550 U.S. at 416 (2007).
6
Appeal 2017-000132
Application 14/223,309
Here, we conclude the recited conditional use of the controller of
claim 1 (i.e., when the controller determines the lens is housed (retracted)
then the controller sets the playback mode) does not further limit claim 1
(and the claims which depend therefrom) to a particular structure.
Nor does a broad but reasonable interpretation of claim 1 preclude
the controller from setting the playback mode at other times, even when the
lens is not retracted or “housed” (e.g., when the lens is extended).
Further, if the controller never determines that the lens is housed
(retracted) during operation of the imaging device, then the functional claim
language recited after the conditional temporal (“when”) limitation is never
reached: “even if the operating mode other than the playback mode has
been accepted through the operating unit, the playback mode being an
operating mode to display on the display unit an image represented by
image data stored in a storage medium.'1'’ (Claim 1) (Emphasis added). 3
Although independent method claim 7 is argued separately (App. Br.
21—24), we note claim 7 recites the contested limitation of claim 1 in
commensurate form and the same reasoning applies. Further regarding the
conditional language recited in claim 7 (“setting the playback mode when it
is determined that the lens is housed”), we note that conditional steps
employed in a method claim need not be found in the prior art if, under the
broadest reasonable interpretation, the method need not invoke those steps.
See Ex Parte Schulhauser, No. 2013-007847, 2016 WL 6277792 at *4
(PTAB April 28, 2016) (precedential) (holding “The Examiner did not need
3 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).
7
Appeal 2017-000132
Application 14/223,309
to present evidence of the obviousness of the remaining method steps of
claim 1 that are not required to be performed under a broadest reasonable
interpretation of the claim . . . see also Ex parte Katz, No. 2010-006083,
2011 WL 514314, at *^N5 (BPAI Jan. 27, 2011).4
Applying this reasoning here, we conclude the broadest reasonable
interpretation of method claim 7 includes situations that fail to satisfy the
temporal (“when it is determined that the lens is housed”) condition
precedent, and in those situations, the contested language following the
condition precedent is not performed.
Therefore, based upon the claim construction and findings above, on
this record, we are not persuaded of error in the Examiner’s reliance on the
combined teachings and suggestions of Baxter and Hosoe to teach or suggest
the contested limitation of representative claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us the Examiner erred regarding rejection R2 of claim
1 or claim 7. Therefore, we sustain the Examiner’s obviousness rejection R2
of representative independent claim 1, and we likewise sustain rejection R2
the associated grouped claims which fall with claim 1. See Claim Grouping,
4 See also, e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court's interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration
Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
8
Appeal 2017-000132
Application 14/223,309
supra.
Rejection R3 of Claims 6 and 9 under §103
Appellant raises similar arguments urging the patentability of
independent apparatus claim 6, disputing a temporal conditional limitation
commensurate to the contested conditional limitation recited in claim 1.
(App. Br. 19—21). Accordingly, for the same reasons discussed above
regarding apparatus claim 1, we sustain the Examiner’s rejection R3 of
representative independent claim 6, and rejection R3 of associated grouped
dependent claim 9, that falls with claim 6. See Claim Grouping, supra.
Conclusions
For the reasons discussed above, and based upon a preponderance of
the evidence, we are persuaded the Examiner erred in rejecting all claims
under rejection R1 under § 112(a) (written description).
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, we are not persuaded the Examiner
erred regarding rejections R2 and R3 under 35 U.S.C. § 103, of all claims
rejected thereunder.
9
Appeal 2017-000132
Application 14/223,309
DECISION
We reverse the Examiner’s rejection R1 of claims 1—9 under § 112(a)
(written description).
We affirm the Examiner’s rejections R2 and R3 of claims 1—9 under
35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. §41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
10