Ex Parte Shimo

Board of Patent Appeals and Interferences

Aug 4, 2010

11481457 (B.P.A.I. Aug. 4, 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 MITSUAKI SHIMO
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Appeal 2009-006655
Application 11/481,457
Technology Center 2800
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and
CARLA M. KRIVAK, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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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 20. We have jurisdiction under 35
U.S.C. § 6(b).
We will sustain the rejections.
Appellant’s disclosed invention concerns imaging optical systems
used in image taking devices such as mobile telephones, digital cameras, and
personal digital assistants (Abstract; Spec. ¶¶ [0002] – [0004]; Fig. 1).
Appellant’s disclosed and claimed invention relates to an imaging optical
system and an image taking apparatus having a plurality of prism elements
including at least one prism element that has “an off-axis optical surface”
(claims 1 and 12) or “one off-axis reflection surface” (claims 13 and 19).
Claim 1 is representative of the claimed invention, and reads as
follows (with emphasis on the argued portion of the claim):

1. An imaging optical system comprising:

a plurality of prism elements through which a light ray advancing
from an object to an imaging device passes, wherein at least one of the prism
elements has an off-axis optical surface;
at least one of the prism elements has a positive power;
an emission surface of one of the prism elements and an incident
surface of at least one of the residual prism elements of the plurality of prism
elements are arranged so as to be opposed to each other;
the number of the prism elements is more than two; and
the light ray which passes through the prism elements is not
intermediately imaged.
(Claim 1 (emphasis added)).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rosin US 3,442,575 May 4, 1969
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Yamaguchi US 2005/0018314 A1 Jan. 27, 2005

(i) The Examiner rejected claim 1 under 35 U.S.C. § 102(b) based
upon the teachings of Rosin.
(ii) The Examiner rejected claims 2 to 8, 12 to 17, and 19 under 35
U.S.C. § 103(a) based upon the teachings of Rosin.
(iii) The Examiner rejected claims 9 to 11, 18, and 20 under 35 U.S.C.
§ 103(a) based upon the teachings of Rosin and Yamaguchi.
In establishing a prima facie case of anticipation under § 102(b), as
well as obviousness under § 103(a), the Examiner relies upon Rosin (Figures
1 and 4; column 3, line 59 to column 4, line 72) as teaching or suggesting a
prism element having an off-axis optical surface and/or an off-axis reflection
surface as recited in claims 1, 12, 13, and 19 (Ans. 3-11). The Examiner
determines (Ans. 10-11) that Rosin teaches an off-axis optical surface that is
a reflection surface whose optical path bending angle is other than 90
degrees or 180 degrees, and thus meets Appellant’s definition provided at
paragraph [0012] of the Specification.
ISSUE
Anticipation
With regard to the anticipation rejection, Appellant argues that Rosin
fails to disclose a prism element with an off-axis optical surface, i.e., one
with a reflection surface whose optical path bending angle is other than 90 or
180 degrees as defined at paragraph [0012] of the Specification (App. Br. 7-
9; Reply Br.1-5).

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Based on Appellant’s arguments, the following anticipation issue is
presented:
Does Rosin teach a prism element that has an off-axis optical surface
as set forth in independent claim 1, and as defined by paragraph [0012] of
the Specification?
Obviousness
With regard to the obviousness rejections of claims 2 to 20, Appellant
argues (App. Br. 9-14; Reply Br. 5) that these claims are not obvious in view
of Rosin (as to claims 2 to 8, 12 to 17, and 19), and Rosin and Yamaguchi
(as to claims 9 to 11, 18, and 20), for the same reasons as claim 1.
Accordingly, the obviousness rejections will stand or fall with the
determination of the anticipation issue with regard to claim 1.

FINDINGS OF FACT (FF)
1. Appellant’s Specification describes off-axis systems as “optical
systems using prism elements having titled reflection surfaces” (Spec.
¶ [0005] as amended December 10, 2007). Rosin discloses that an
“off-axis optical surface is a transmission surface which is off-axis
with respect to advancing light ray, a reflection surface whose optical
path bending angle is other than 90o or 180o, or a reflection surface
having a power off-axis with respect to the advancing light ray.”
(Spec. ¶ [0012] as amended December 10, 2007).
2. Rosin describes an imaging optical system (Figs. 1 and 4) with a
plurality of prism elements 1, 2, 4, and 5 for producing positive power
(col. 3, l. 59 to col. 4, l. 72), including a prism element 2 having a
refracting curved surface 2a” and a titled reflection surface 2’ (col. 3,
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l. 1). Light rays enter prism 1 along a line of sight S as a cone of rays
and is reflected through lateral surface 2b of prism 2, and is again
reflected at point 2” in the reflecting face 2’ of prism 2 (col. 2, l. 54 to
col. 3, l. 5). A cone of rays is then passed and reflected through
objective system 3 in the direction of optical axis B along main axis A
(col. 3, ll. 6-10).

PRINCIPLES OF LAW
“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
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053-54 (Fed. Cir. 1997). “[T]he specification ‘is always highly relevant to
the claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.’” Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
We agree with all of the Examiner’s findings with regard to the
anticipation rejection of claim 1, as well as the obviousness rejections of
claims 2 to 20 (Ans. 3-11). We adopt the Examiner’s findings of fact and
conclusions of obviousness as our own, along with some amplification of the
Examiner’s explanation of the teachings of Rosin (see FF 2). See In re Fine,
837 F.2d 1071, 1073 (Fed. Cir. 1988); In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
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We will sustain the Examiner’s rejections of (i) claim 1 based upon
the teachings of Rosin; (ii) claims 2 to 8, 12 to 17, and 19 based upon the
teachings of Rosin; and (iii) claims 9 to 11, 18, and 20 based upon the
teachings of Rosin and Yamaguchi, for the reasons that follow.
Anticipation
Turning first to the anticipation rejection of claim 1, we are not
persuaded by Appellant’s arguments (App. Br. 8; Reply Br. 1-5) that Rosin
fails to teach a prism element having an off-axis optical surface. The
Examiner is correct (Ans. 10-11) that Rosin teaches an optical surface of a
prism 2 (e.g., reflection face 2’) that meets the definition found in
Appellant’s Specification at paragraph [0012] of “a reflection surface whose
optical path bending angle is other than 90o or 180o” (see FF 1). Broadly
interpreted, Rosin’s prism 2 having a titled reflection surface 2’ (see FF 2)
meets the “off-axis optical surface” limitation of claim 1. Am. Acad. of Sci.
Tech Ctr., 367 F.3d at 1364.
Appellant’s contentions (Reply Br. 2-5) that the Examiner has
incorrectly defined an “‘optical path’” to include peripheral light rays that
are reflected at angles other than 90 or 180 degrees are unpersuasive. The
phrase “optical path” does not occur in claim 1. Nor does this phrase even
occur in paragraph [0112] of the Specification which Appellant relies upon
(see Reply Br. 3-4) to show that an optical path should be defined as “the
path of the entirety of the light flux, not a portion of the light flux” (Reply
Br. 4). The phrases “optical path,” “light flux,” and “entirety of the light
flux” do not occur in claim 1, or in any of the language found at paragraphs
[0012] and [0112] of Appellant’s Specification (see generally Spec. ¶¶
[0012] and [0112]). Inasmuch as “optical path bending angle” is defined
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and described in paragraph [0012] of the Specification and claim 1 as
originally filed, we find that Rosin’s prism 2 having reflecting surface 2’
encompasses the off-axis optical surface recited in claim 1. Am. Acad. of
Sci. Tech Ctr., 367 F.3d at 1364; Phillips, 415 F.3d at 1315.
Appellant has not persuaded us that Rosin fails to teach a prism element with
an off-axis optical surface as set forth in independent claim 1. Because (i)
the portions of the claims and Specification (see Spec. ¶ [0012]) relied upon
by Appellant do not limit the claims to an optical path as being defined as a
path of light flux in its entirety, and (ii) Rosin discloses a reflection surface
with an optical path bending angle that is other than 90 degrees or 180
degrees, we find that Rosin discloses a prism element with an off-axis
optical surface as set forth in independent claim 1, and defined by paragraph
[0012] of the Specification. Accordingly, we conclude that the Examiner
did not reversibly err in rejecting claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Rosin and we will sustain the rejection of
this claim.
Obviousness
Because Appellant has not disputed the merits of the obviousness
rejection of claims 2 to 8, 12 to 17, and 19 other than to contend (App. Br. 9-
12; Reply Br. 5) that these claims are not obvious in view of Rosin for the
same reasons as claim 1 (that Rosin fails to disclose or suggest an off-axis
optical surface), we will sustain the obviousness rejection of claims 2 to 8,
12 to 17, and 19 for similar reasons provided supra with regard to the
anticipation rejection of claim 1.
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Because Appellant has not disputed the merits of the obviousness
rejection of claims 9 to 11, 18, and 20 other than to contend (App. Br. 12-14;
Reply Br. 5) that (i) these claims are not obvious in view of Rosin and
Yamaguchi for the same reasons as discussed supra with regard to claim 1
(that Rosin fails to disclose or suggest an off-axis optical surface), and (ii)
Yamaguchi fails to cure the deficiencies of Rosin, we will sustain the
obviousness rejection of claims 9 to 11, 18, and 20 for similar reasons
provided supra with regard to the anticipation rejection of claim 1.

ORDER
The decision of the Examiner rejecting claims 1 to 20 is affirmed.
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

KIS

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