Ex parte TOH

Board of Patent Appeals and Interferences

Feb 7, 2000

08392160 (B.P.A.I. Feb. 7, 2000)

Application for patent filed February 22, 1995. 1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MINORU TOH
_____________
Appeal No. 1997-3919
Application 08/392,1601
______________
HEARD: JANUARY 11, 2000
_______________
Before JERRY SMITH, FLEMING and FRAHM, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision from the final rejection of claims 1
through 5, all the claims pending in the application.
The present invention relates to an observing apparatus
to be used in a microscope. The only independent claims 1 and
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Application 08/392,160
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5 present in the application are reproduced as follows:
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1. An apparatus for observing an object comprising:
an illuminating optical system for illuminating an object
to be observed with visible light;
an observing optical system for observing the object
positioned within a visual field illuminated by said
illuminating optical system;
an index projecting optical system for projecting index
for focus by luminous flux having wavelength of a visible
area, the index projecting optical system having projecting
luminous flux at least a part of which is common with a
wavelength of illumination luminous flux of said illuminating
optical system;
a first luminous flux restricting means for cutting an
illuminating light of the illuminating optical system;
a second luminous flux restricting means for cutting a
projecting light of the index projecting optical system;
means for controlling said first luminous flux
restricting means and said second luminous flux restricting
means so that the illuminating light and the projecting light
do not overlap with each other on said object, and for
controlling the period the illuminating light is off and the
projecting light is on such that the projecting light is
imperceptible as an after image to a normal human eye; and
means for detecting an image of focus index projected on
said object, said means being capable of detecting luminous
flux of visible wavelength;
wherein relative distance of said object with respect to
the focus index is changed based on the results detected by
said detecting means.
5. An apparatus for observing an object comprising:
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Application 08/392,160
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an illumination optical system for irradiating an
illumination light to an object to be observed;
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an observing optical system for observing the object with
a reflection light of the illumination light irradiated to the
object by said illumination optical system;
a focus index projecting optical system for projecting a
light of focus index to the object to be observed;
means for restricting illumination luminous flux by
intermittently shutting said illumination light, which is
provided in said illumination optical system;
means for restricting luminous flux of focus index by
intermittently shutting said focus index light, which is
provided in said focus index projecting optical system; and
means for detecting focus distance and direction by
synthesizing synchronous timing signals of said illumination
luminous flux restricting means and said focus index luminous
flux restricting means, wherein the position of the object to
be observed is changed based on the signal detected by said
focus detecting means.
The references relied on by the Examiner are:
Salzmann 5,270,527 Dec. 14,
1993
Kinoshita 02-300707 Dec.
12, 1990
(Japanese Published Application)
The specification is objected to under 35 U.S.C. § 112,
first paragraph, because the specification, as originally
filed, does not provide support for the invention as is now
claimed. Claims 1 through 4 stand rejected under 35 U.S.C. §
Appeal No. 1997-3919
Application 08/392,160
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112, first paragraph for the reasons that the specification is
objected to. Claims 1 through 5 stand rejected under 35
U.S.C. § 103 as being unpatentable over Kinoshita and
Salzmann.
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Application 08/392,160
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Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and answer for the
details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claim 5 is properly rejected
under 35 U.S.C. § 103. Thus, we will sustain the rejection of
claim 5 but we will reverse the rejection of claims 1 through
4 for the reasons set forth infra.
In regard to the rejection of claims 1 through 4 under 35
U.S.C. § 112, first paragraph, the Examiner argues that the
specification does not have support for luminous flux having
wavelength of a visible area. On pages 7 and 8 of the brief,
Appellant makes reference to page 5, lines 5 through 7, of the
specification that states that the light source 1 may comprise
"a halogen lamp which emits white light." Appellant argues
that one of ordinary skill in the art would readily recognize
that a halogen lamp would emit luminous flux having a
wavelength of a visible area as set forth in Appellant's
claims.
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"The function of the description requirement [of the
first paragraph of 35 U.S.C. 112] is to ensure that the
inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
describe the claim limitations exactly, . . . but only so
clearly that persons of ordinary skill in the art will
recognize from the disclosure that appellants invented the
processes including those limitations." Wertheim, 541 F.2d at
262, 191 USPQ at 96 citing In re Smythe, 480 F.2d 1376, 1382,
178 USPQ 279, 284 (CCPA 1973). Furthermore, the Federal
Circuit points out that "[i]t is not necessary that the
claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in
the art that applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
citing In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983).
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Upon our review of the specification, we find that the
application does not use the exact words "luminous flux having
wavelength of a visible area." However, 35 U.S.C. § 112 does
not require that the Applicant use the exact words in the
specification that are set forth in the claimed limitations.
Instead, 35 U.S.C. § 112 only requires that it is necessary
that the application describe the claimed limitations
so that one of ordinary skill in the art would have recognized
from the disclosure that Appellant did indeed possess the
claimed invention. Upon reviewing the claim language as
recited in Appellant's claim 1, we find that the disclosure as
originally filed would have conveyed to those skilled in the
art that Appellant had invented the subject matter now
claimed. Therefore, we will not sustain the Examiner's
rejection of claims 1 through 4 under 35 U.S.C. § 112, first
paragraph.
In regard to the rejection of claims 1 through 4 under 35
U.S.C. § 103, we fail to find that the Examiner has set forth
a prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have
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been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by implications
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 519 U.S. 822 (1996),
citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
On page 12 of the brief, Appellant argues that neither
Kinoshita nor Salzmann teach or suggest an index projecting
optical system for projecting index for focus by luminous flux
having wavelength of a visible area, the luminous index
projecting optical system having projecting luminous flux at
least a part of which is common with the wavelength of
luminous flux of said illuminating optical system as required
by claim 1.
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Appellant points out that Kinoshita and Salzmann disclosed
using IR light source 10 and not a light source that would
provide a wavelength of visible area.
Upon our review of Kinoshita and Salzmann, we find that
neither reference teaches "an index projecting optical system
for projecting index for focus by luminous flux having
wavelength of a visible area, the index projecting optical
system having projecting luminous flux at least a part of
which is common with a wavelength of illumination luminous
flux of said illuminating optical system" as recited in
Appellant's claim 1. We note that neither Kinoshita nor
Salzmann teach an index projecting optical system for
projecting index for focus by a luminous flux having
wavelength of a visible area.
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kinoshita and Salzmann. On page 12 of the
appeal brief, Appellant argues that Salzmann does not teach an
index projecting optical system to be used to project an index
for focus.
As pointed out by our reviewing court, we must first
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Application 08/392,160
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determine the scope of the claim. "[T]he name of the game is
the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). 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, 225 USPQ 1, 5 (Fed. Cir. 1985).
We note that unlike the Appellant's claim 1, Appellant's
claim 5 is not limited to an index projecting optical system
for projecting index for focus by luminous flux having
wavelength of a visible area. In contrast, Appellant's claim
5 recites "a focus index projecting optical system for
projecting a light of focus index to the object to be
observed."
Appellant argues that Salzmann does not teach a focus
index projecting optical system for projecting a light of
focus index to the object to be observed. We note that the
Examiner's rejection does not rely on Salzmann for this
limitation. In contrast, the Examiner relies on Kinoshita for
the limitation of a focus index projecting optical system for
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Application 08/392,160
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projecting a light of focus index to the object to be
observed.
Upon our review of Kinoshita, we find that Kinoshita
teaches on page 4, a pattern projecting optics 4 for
projecting a light of focus index to the object to be
observed. Therefore, we find that Kinoshita's pattern
projection optics 4 meet Appellant's claimed focus index
projecting optic system as recited in Appellant's claim 5.
Therefore, we find that the Appellant has not shown that the
Examiner has erred in making this rejection in regard to
Appellant's claim 5.
We note that Appellant has chosen not to argue any of the
other specific limitations of claim 5 as a basis for
patentability. As stated by our reviewing court in In re
Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991), "[i]t is not the function of this court to
examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior
art." 37 C.F.R. § 1.192(a)(July 1, 1996) as amended at 60
Fed. Reg. 14518 (March 17, 1995), which was controlling at the
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time of Appellants filing the brief, states as follows:
The brief . . . must set forth the authorities and
arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities
not included in the brief may be refused
consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
Also, 37 C.F.R. § 1.192(c)(8)(iv) states:
For each rejection under 35 U.S.C. 103, the argument
shall specify the errors in the rejection and, if
appropriate, the specific limitations in the
rejected claims which are not described in the prior
art relied on in the rejection, and shall explain
how such limitations render the claimed subject
matter unobvious over the prior art. If the
rejection is based upon a combination of references,
the argument shall explain why the references, taken
as a whole, do not suggest the claimed subject
matter, and shall include, as may be appropriate, an
explanation of why features disclosed in one
reference may not properly be combined with features
disclosed in another reference. A general argument
that all the limitations are not described in a
single reference does not satisfy the requirements
of this paragraph.
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Thus, 37 C.F.R. § 1.192 provides that this board is not under
any greater burden than the court which is not under any
burden to raise and/or consider such issues. Therefore, we
are not required to raise and/or consider such issues.
In view of the foregoing, the decision of the Examiner
rejecting claim 5 under 35 U.S.C. § 103 is affirmed; however,
the decision of the Examiner rejecting claims 1 through 4
under 35 U.S.C. § 103 is reversed. In addition, the decision
of the Examiner rejecting claims 1 through 4 under 35 U.S.C. §
112, first paragraph, is reversed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )
MRF/dal
Appeal No. 1997-3919
Application 08/392,160
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