Ex Parte Sorebo

Patent Trial and Appeal Board

Mar 27, 2013

11028085 (P.T.A.B. Mar. 27, 2013)

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.
11/028,085 01/03/2005 John H. Sorebo KCX-1471 (21240) 8697
22827 7590 03/28/2013
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
TORRENTE, RICHARD T
ART UNIT PAPER NUMBER
2485
MAIL DATE DELIVERY MODE
03/28/2013 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 JOHN H. SOREBO
____________________

Appeal 2011-009302
Application 11/028,085
Technology Center 2600
____________________

Before THU A. DANG, JAMES R. HUGHES, and GREGORY J.
GONSALVES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30. Claims 2, 4, 5, 8-13, 15-18, 20,
23, 24, and 31-34 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

A. INVENTION
Appellant’s invention relates to using gradient-indexed optics to
detect an object on a moving web (Spec. 1, ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A system for detecting relative position or shape of objects on
an underlying moving web, the system comprising:

a moving web, the web having an upper surface upon which objects
are placed;

a light source positioned above the web that emits light onto the web
and the objects on the web;

a lens positioned above the web, the lens having a radial index of
refraction gradient whereby the index of refraction of the lens varies
gradually within the lens,

the light source being at an angular and height position relative to the
web and the lens such that light from the light source incident on exposed
portions of the web is reflected away from and not received by the lens and
light from the light source incident on an object on the web is reflected to the
lens such that the lens only captures light above a nominal detection level
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when the light is reflected by objects on the web, and not reflected by the
web;

a sensor that receives light from the lens and converts the light to a
signal; and

a controller that receives the signal from the sensor and discerns
position or shape of the object relative to the underlying web from the
signal.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sugiyama US 2004/0135073 July 15, 2004
Sorebo US 2003/0116725 A1 June 26, 2003
Varnerin US 2005/0059255 A1 March 17, 2005

Claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to satisfy the written description
requirement.
Claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Sugiyama, Sorebo and Varnerin.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
concluding that:
1. The claim “and not received by the lens” (claim 1) is not defined in
the Specification; and
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2. The combination of Sugiyama, Sorebo and Varnerin teaches or
would have suggested a “light source” being at an angular and height
position relative to the web and lens “such that light… incident on exposed
portions of the web is reflected away from and not received by the lens” and
“light … incident on an object on the web is reflected to the lens such that
the lens only capture light above a nominal detection level” (claim 1,
emphasis added).

III. FINDING OF FACT
The following Finding of Fact (FF) is shown by a preponderance of
the evidence.
Sugiyama
Sugiyama discloses a device for detecting an object within a field of
detection on the basis of a position of the object, wherein Figure 24 is
reproduced below:
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Figure 24 shows a device 1C positioned above a belt conveyor Cv
which transports an object Ob placed thereon such that a plane including
optical axes Xp and Xr of the projection lens and focusing lens of the optical
head 20 is situated perpendicularly to both surfaces of the belt conveyor Cv
and direction Vx of transportation (p. 14, [0124]).

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IV. ANALYSIS
35 U.S.C. § 112, 1st Paragraph
As to independent claims 1 and 19, the Examiner finds that the
claimed “light from the light source incident in exposed portions… and not
received by the lens” is “not defined in the specification and drawings”
(Ans. 4). In particular, the Examiner finds that “there is a nominal level of
lights received by the lens when there is no object or from the web” and that
“[t]he natural phenomenon of light is lights scatters widely in numerous
directions” (Ans. 9).
However, Appellant points to the Specification which states that “The
lens 26 is positioned relative to the web 18, the light source 22 and the
objects such that the only time light enters the lens above the nominal level
is when the light is reflected from the objects 12 on the web” and “the light
which is reflected from the web 18 (see arrow 110) does not get directed
toward the sensor” (App. Br.7, emphasis omitted). Thus, Appellant
contends that “the present specification does convey to those skilled in the
art, with reasonable clarity, that Appellant possessed the invention” (App.
Br. 6).
Upon review of the record, we agree with Appellant. In particular, we
agree with Appellant that upon reading the Specification, one skilled in the
relevant art would have understood that the inventor was in possession of the
claimed light “and not received by the lens” at the time the application was
filed. Accordingly, we reverse the Examiner’s rejection of independent
claims 1 and 19 and claims 3, 6, 7, 14, 21, 22, and 25-30 dependent
respectively therefrom.

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35 U.S.C. § 103(a)
Appellant contends that the combination of Sugiyama, Sorebo and
Varnenin “does not disclose the limitation of independent claim 1 that light
from the light source incident on exposed portions of a web is reflected
away from a lens and is not received by the lens” (App. Br. 11).
However, we give the claim its broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). Claim 1 is a system that comprises a “moving web”, a
“light source”, a “lens”, a “sensor”, and a “controller”, wherein the “light
source” is positioned “an angular and height position relative to the web and
the lens”. In claim 1, the light source is positioned “such that” light
therefrom is either reflected away from and not received by the lens or light
is reflected to the lens. That is, claim 1 does not positively recite the “light”
or any structure to provide the particular reflecting function, but instead the
“light” is provided in a “such that” clause. Given the language used, the
“such that” clause is reasonably interpreted to identify the resulting
conditions of the light from the light source that occur when the light source
is placed at a particular position.
Thus, the “such that” clause at issue is akin to a “whereby” clause that
merely states the result of the other features of the claim, such as the light
phenomenon that occurs as the result of the positioning of the light source.
Our reviewing court has concluded that “[a] ‘whereby’ clause that merely
states the result of the limitations in the claim adds nothing to the
patentability or substance of the claim.” Texas Instruments, Inc. v.
International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993).
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Accordingly, although Appellant argues that the prior art “does not
disclose the limitation of independent claim that light from the light source
incident on exposed portions of the web is reflected away from a lens and is
not received by the lens” (App. Br. 11) , such argument is not commensurate
in scope with the substance of the claim. That is, claim 1 merely requires a
system that comprises a “light source” being at “an angular and height
position relative to the web and the lens”.
Sugiyama discloses optical axes of the projection lens and focusing
lens of the optical head situated perpendicularly to both surfaces of the belt
conveyor and direction of transportation (FF). That is, Sugiyama discloses a
projection lens positioned at an angular and height position relative to the
belt conveyor and the focusing lens. We conclude that Sugiyama in
combination with Sorebo and Varnerin at the least would have suggested a
“light source” being at an angular and height position relative to a “web” and
a “lens” as required by claim 1.
Furthermore, we note that Sugiyama discloses that the device
comprising the light source is positioned such that the focusing lens only
captures light reflected by the object on the belt conveyor (FF). Since claim
1 merely defines “a nominal detection level” as the level when light is
reflected by objects on the web, we find no error with the Examiner’s
conclusion that Sugiyama at the least suggests light reflected to a lens such
that the lens only captures light above a nominal detection level (Ans. 4).
We also find no error with the Examiner’s finding that “when
Sugiyama[’s] object Ob is moved, …Xp is now incident off the web Cv”
and the Examiner’s conclusion that, in modifying the light Sugiyama’s light
source with Varnerin’s teaching of using a laser light source, “it is obvious
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that with enough distance Xp between the Sugiyama sensor 1C and the web
Cv, the laser light Xr will be incident beyond the left end of the lens or not
received by the sensor 1C” (Ans. 9-10).
Accordingly, we find no error in the Examiner’s rejection of claim 1
over Sugiyama, Sorebo and Varnerin. Further, claims 3, 6, 7, 14, 19, 21, 22,
and 25-30, which have not been argued separately (App. Br. 12), fall with
claim 1.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-
30 under 35 U.S.C. § 103(a) is affirmed. However, the Examiner’s rejection
of claims 1, 3, 6, 7, 14, 19, 21, 22, and 25-30 under 35 U.S.C. § 112, first
paragraph, is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. 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)(1)(iv).

AFFIRMED

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