Ex Parte Smith

Board of Patent Appeals and Interferences

Mar 7, 2008

10742044 (B.P.A.I. Mar. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN DAVIDSON SMITH
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Appeal 2007-3357
Application 10/742,044
Technology Center 2600
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Decided: March 7, 2008
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Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-29, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant invented an optical system for sensing the motion of a
movable surface including a non-contacting optical motion sensor (Spec. 3-
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Application 10/742,044

5). An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced as follows:
1. An optical system for sensing the motion of a movable
surface, the system comprising:

a lens assembly adapted to magnify an image of a movable
surface;

a light source;

an image processing unit adapted to obtain images of the
movable surface and convert those images into motion data, the image
processing unit placed on the opposite side of the lens from the
movable surface; and

a motion evaluation unit electronically connected to the image
processing unit and adapted to evaluate the motion data obtained from
the image processing unit,

wherein the system does not contact the movable surface.

The Examiner relies on the following prior art references:
Lemelson US 4,653,109 Mar. 24, 1987
Tullis US 6,222,174 B1 Apr. 24, 2001

The rejections as presented by the Examiner are as follows:
Claims 1-4, 9, 10, 12-16, 21, 22, 24-26, 28, and 29 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Lemelson.
Claims 5, 6, 17, 18, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lemelson.
Claims 7, 8, 11, 19, 20, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lemelson and Tullis.
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Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lemelson in view of the Official Notice taken by the
Examiner regarding the use of a self-contained battery.1
Rather than repeat the arguments here, we make reference to the Brief
(filed April 28, 2006) and the Answer (mailed June 5, 2006) for the
respective positions of Appellant and the Examiner.

We affirm.

ISSUES
1. Under 35 U.S.C § 102(b), with respect to the appealed claims 1-4, 9,
10, 12-16, 21, 22, 24-26, 28, and 29, does Lemelson anticipate the
claimed subject matter by teaching all of the claimed limitations?
2. Under 35 U.S.C § 103(a), with respect to the appealed claims 5-8, 11,
17-20, 23, and 27, would the ordinarily skilled artisan have found it
obvious to modify Lemelson alone, with Tullis, or in view of the
Examiner’s Official Notice to render the claimed invention
unpatentable?

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issues involved
in the appeal.
1. As illustrated in FIG. 1A, Lemelson describes a support
platform 20, such as a table, conveyor belt or the like, shown with an object

1 The Official Notice taken by the Examiner remains undisputed in the
absence of Appellant’s arguments thereagainst.
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or assembly 21 thereon defining a portion of the observed field with respect
to detector 26D. (Col. 3, ll. 59-63).
2. Lemelson discloses a system 10E for the automatic and
computerized motion analysis of an object or objects in an image field,
which move into and out of the image field such as on a conveyor being
scanned by one or more television cameras or an image field or a portion of
such image field which is changing in content as the result of one or more
flows of material or other form of image generating means which includes a
portion or portions thereof in motion. (Col. 4, ll. 20-28).
3. In Figure 1B, an illumination source 25 is arranged on the other
side of an object 21 on the conveyor or movable platform 20, to transmit the
illuminating or detection radiation directly to a detector 26D located in the
housing on the other side of the conveyor. (Col. 4, ll. 12-16).

PRINCIPLES OF LAW
1. Scope of claims
Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003). The claim construction
analysis begins with the words of the claim. See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Claims will be
given their broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification are not to be read
into the claims. In re Etter, 756 F.2d 852, 858 (Fed. Cir. 1985).
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2. Anticipation
A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference. See In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).
Anticipation of a claim requires a finding that the claim at issue “reads on”
a prior art reference. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).

3. Obviousness
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
1. 35 U.S.C. § 102 Rejection
Appellant disagrees with the Examiner’s findings in Lemelson with
respect to sensing the motion of “a movable surface,” as recited in claims 1
and 13, and the absence of sensing anything other than the movable surface
or, as recited in claim 25, the conveyor belt (Br. 4). Appellant further argues
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that in Lemelson it is the “object,” and not the support platform, that is in the
observed field (id.).
The Examiner points to column 4, lines 20-28 of Lemelson and asserts
that the motion analysis is performed on a moving object or the conveyor
belt (Ans. 10). The Examiner further argues that Lemelson teaches the
claimed movable surface, in its broadest reasonable interpretation, as an
object moving in and out of the image field (id.).
Based on our review of Lemelson and the breadth of the recited
language in claims 1 and 13, we disagree with Appellant’s argument that the
claimed “movable surface” does not read on the object and the platform of
Lemelson defining a portion of the image field. The claims merely require
imaging of a movable surface without specifying what the surface
corresponds to. Therefore, either object 21 or platform 20 of Lemelson, or a
combination of both of them, can form a movable surface.
Additionally, Lemelson discloses that the platform or the conveyor
belt with an object on it defines a portion of the observed field (FF 1). The
image field is further described by Lemelson as the image of an object on a
conveyor belt moving in and out of the field (FF 2). Therefore, while the
purpose of Lemelson is obtaining information about the object, the discussed
image field includes both the object and the conveyor belt as the object
moves in and out of the field. As such, Lemelson obtains images of a
movable surface, which may be a surface of an object on the conveyor belt,
as well as images of the conveyor belt.
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Lemelson, the Examiner’s 35 U.S.C.
§ 102(b) rejection of independent claims 1, 13, and 25, as well as dependent
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claims 2-4, 9, 10, 12, 14-16, 21, 22, 24, 26, 28, and 29 which are not
separately argued by Appellant, is sustained.
2. 35 U.S.C. § 103 Rejection
With respect to the rejection of the remaining claims, in addition to
the arguments made with respect to the claimed movable surface and the
teachings of Lemelson, Appellant further relies on a Declaration by
Appellant filed April 28, 2006 to show the presence of objective evidence of
nonobviousness of the claimed invention (Br. 6-7). Appellant asserts that
the problems associated with the conventional motion sensors that require
contact with the moving parts of the conveyor belt, as detailed in the
Declaration, establish the long-felt need in the aggregate industry for the
claimed optical sensor (Br. 7).
However, a review of the Declaration produces no additional detail
beyond what Lemelson discloses with respect to the image sensor position to
overcome the obviousness rejections. The Declaration merely outlines the
problems with sensors that require contact with the moving parts and their
high failure rate due to contamination (Decl. 1-2). Such considerations are
moot in view of the arrangement disclosed by Lemelson showing an image
sensor for providing images of a moving surface on a conveyor belt, which
is set apart from the conveyor belt and requires no contact with the moving
parts (FF 1-3).
Therefore, as we find Appellant’s Declaration to be ineffective as the
evidence of unobviousness to overcome the prima facie case of obviousness
set forth by the Examiner, we find no error in the Examiner’s position with
respect to the obviousness rejections. For the above reasons, since it is our
opinion that the Examiner has established a prima facie case of obviousness
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based on Lemelson alone, its combination with Tullis, or in view of the
Examiner’s Official Notice, the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 5-8, 11, 17-20, 23, and 27, argued together by Appellant (Br. 6-8), is
sustained.

CONCLUSION
On the record before us, Appellant has failed to show that the
Examiner erred in rejecting claims 1-29. In view of our analysis above, we
affirm the Examiner’s decision rejecting claims 1-4, 9, 10, 12-16, 21, 22, 24-
26, 28, and 29 under 35 U.S.C. § 102 and rejecting claims 5-8, 11, 17-20,
23, and 27 under 35 U.S.C. § 103.
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).

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AFFIRMED

eld

THOMAS & RARING, P.C.
536 GRANITE AVENUE
RICHMOND VA 23226
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