Ex Parte Tojo

Board of Patent Appeals and Interferences

Sep 21, 2009

10343446 (B.P.A.I. Sep. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKAHIRO TOJO
____________

Appeal 2009-004674
Application 10/343,446
Technology Center 2600
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Decided: September 21, 2009
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Before JOHN C. MARTIN, KARL D. EASTHOM, and CARL W.
WHITEHEAD, JR. Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals1 under 35 U.S.C. § 134 from the Final Rejection of
claims 1, 2, 4, 6, 7, 9, and 11 (App. Br. 4). No other claims are pending.
(Br. 3). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s disclosed invention comprises a camera having an
amplifying circuit and an auxiliary light (Abstract). When the brightness,
detected by a photometry means, is higher than a reference value, no
amplification occurs (Spec. 16:8-12).2 Appellant states that the photometry
means is a camera CPU 11 (see App. Br. 5; Fig. 1).
Exemplary claim 1 follows:
1. A photographing apparatus, comprising:
auxiliary lighting means for lighting a subject;
photographing means for photographing the subject;
a zoom lens portion for varying the amount of light entered into the
photographing means corresponding to a focal distance of the zoom lens
portion;
amplifying means for amplifying a picture signal that is output from
the photographing means with an amplification factor that has been set; and
photometry means for measuring the brightness of the subject,
wherein when the brightness measured by the photometry means is
higher than a predetermined value, a setting of the amplification factor is not
changed, and wherein when the subject is photographed with the auxiliary

1 Appellant’s Brief (filed Mar. 31, 2008) (“App. Br.”) and Reply Brief (filed
July 29, 2008) (“Reply Br.”), and the Examiner’s Answer (mailed June 17,
2008) (“Ans.”) are referenced here.
2 The original Specification (filed Jan. 31, 2003) is referenced here.
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lighting means, a setting of the amplification factor of the amplifying means
is changed corresponding to the focal distance.

The Examiner relies on the following prior art references:
Takagi US 5,231,447 July 27, 1993
Konishi US 2001/0004271 A1 June 21, 2001
(filed Dec. 15, 2000)
The Examiner rejected:
Claims 1, 4, 6, 7, 9, and 11 as anticipated under 35 U.S.C. § 102(e)
based on Konishi; and
Claim 2 as obvious under 35 U.S.C. § 103(a) based on Konishi and
Takagi.

ISSUE
Appellant states (App. Br. 5, 6) that claims 1, 2, and 6, and claims 7, 9
and 11, fall together. Claims 1 and claim 7 present similar issues as argued
by Appellant. Claim 1 is selected to represent claims 4 and 6, while claim 7
is selected to represent claims 9 and 11.3 Appellant contests (App. Br. 8) the
Examiner’s finding that Konishi4 discloses that amplification does not
change when a measured brightness is higher than a predetermined value.
This contention raises the following issue: Did Appellant show that the
Examiner erred in finding that Konishi discloses “wherein when the
brightness measured by the photometry means is higher than a
predetermined value, a setting of the amplification factor is not changed,” as
set forth in claim 1?

3 See 37 C.F.R. § 41.37(c)(1)(vii).
4 Appellant mistakenly refers to “Konish” in the Brief and Reply Brief.
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FINDINGS OF FACT (FF)
Konishi
1. “Light reflected from the subject is inputted to the light receiving
sensor” (¶ 0046). “When the amount of external light incident on the light
receiving sensor 28 is insufficient, the switch 30 is turned on, and a strobe
26 is turned on” (¶ 0047).
2. “When brightness required to obtain a subject image having
predetermined brightness is not obtained from external light, the switch 30 is
controlled by the integrating circuit 29 such that the strobe 26 is turned on
(YES at step 42)” (¶ 0066).
3. If at step 42, the strobe is not turned on, the process represented in
Figure 5 proceeds to step 47 without increasing the gain at step 45. Only if
the strobe is turned on (“Y” at step 42), does the process ultimately proceed
to step 45 (“INCREASE GAIN”). (Fig. 5).
4. “When brightness required to obtain a subject image having
predetermined brightness is obtained by external light, the subject is imaged
without using the strobe 26 (No at step 42, and step 47)” (¶ 0080).
5. When the strobe is on, the gain amplification may or may not
occur, depending on an irradiation distance of the strobe as compared to the
distance to a subject of the photography (¶ 0078-79).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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In an appeal from a rejection for anticipation, the Appellant must
explain which limitations are not found in the reference. See Gechter v.
Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (“[W]e expect that the
Board's anticipation analysis be conducted on a limitation by limitation
basis, with specific fact findings for each contested limitation and
satisfactory explanations for such findings.”)(emphasis added). See also In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (citation omitted).
Under § 103, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). If the
Examiner makes such a showing, the burden then shifts to Appellant to
overcome the prima facie case with argument and/or evidence. Kahn, 441
F.3d at 985-86; Oetiker, 977 F.2d at 1445. Obviousness is then determined
on the basis of the evidence as a whole and the relative persuasiveness of the
arguments. Oetiker, 977 F.2d at 1445.

ANALYSIS
Appellant’s argument that Konishi does not disclose the claim 1
limitation, “wherein when the brightness measured by the photometry means
is higher than a predetermined value, a setting of the amplification factor is
not changed,” is not persuasive. Appellant contends that:
. . . Konish [sic] arguably teaches that, when the amount of
external light incident on the light receiving sensor 28 is
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insufficient, the switch 30 is turned on, and a strobe 26 is turned
on.
. . . .
The Office Action contends that it is inherent that “a
predetermined value” must exist for determining sufficiency;
this predetermined value can be an arbitrary number so that the
brightness measured by photometry means is higher (Office
Action at page 2).
. . . .
The mere fact that a certain thing may result from a
given set of circumstances is not sufficient to show an inherent
anticipation [citation omitted].
. . . the Office Action must provide rationale or evidence
tending to show inherency. M.P.E.P. §2112(IV).
. . . .
However, the Office Action fails to cite any teaching
within Konish [sic] for showing that a setting of the
amplification factor is not changed when the brightness
measured by the light receiving sensor 28 IS HIGHER THAN A
PERDETERMINED VALUE.
(App. Br. 8-9).
These contentions do not rebut the Examiner’s rationale. When the
background light is sufficient, i.e., “when the brightness measured by the
photometry means is higher than a predetermined value” as set forth in claim
1, Konishi’s strobe is not turned on (FF 4; Ans. 3-4, 6). That is, Konishi
states that when a “predetermined brightness is obtained by external light,
the subject is imaged without using the strobe 26” (FF 4). A “predetermined
value” reads on a “predetermined brightness” – a value that the camera
measures to determine that the background light is too high to turn on the
strobe (see FF 1-4; Ans. 6)
As the Examiner reasoned (Ans. 3-4, 6), when the strobe is not turned
on (i.e., “when the brightness measured by the photometry means is higher
than a predetermined value” as claim 1 requires), Konishi’s camera circuit
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does not amplify the signal - because step 45 in Figure 5 is bypassed (FF 3)
(i.e., “a setting of the amplification factor is not changed,” as set forth in
claim 1).5 Therefore, Konishi meets the disputed limitations of claim 1.
With respect to claim 7, Appellant contends that when Konishi’s
strobe is turned on, the gain is changed. While this contention appears
founded in some circumstances (Konishi’s gain may or may not change
when the strobe is on, depending on the irradiation distance (FF 5)), it does
relate to any claim limitation. As such, the contention is not commensurate
in scope with claim 7.
For the reasons explained above with respect to claim 1, when the
strobe is off, Konishi teaches a step of “when the measured brightness is
higher than a predetermined value, causing a setting of the amplification
factor not to be changed” as set forth in claim 7. This finding meets one of
the disputed limitations of claim 7 (App. Br. 13).
Konishi also teaches the other disputed limitation in claim 7 (App. Br.
13) of causing a lighting means to light a subject (Ans. 7) (citing Konishi,
Fig. 5, step 46). In other words, the strobe lights the subject (FF 1-3, 5).
While Appellant states (App. Br. 13) that Konishi does not teach a
“sequence of steps that includes both” disputed limitations just described,
claim 7 does not require the lighting step to occur before the brightness is
measured. See Baldwin Graphic Sys. Inc. v Siebert, Inc., 512 F.3d 1338,
1345 (Fed. Cir. 2008) (“[A]lthough a method claim necessarily recites the
steps of the method in a particular order, as a general rule the claim is not
limited to performance of the steps in the order recited, unless the claim

5 Appellant agrees that “the strobe 26 is turned off to bypass step 45” (App.
Br. 11).
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explicitly or implicitly requires a specific order.”) (citation omitted). Nor
does Appellant explain why the sequence is required.
Accordingly, as Appellant has failed to demonstrate Examiner error,
we will sustain the Examiner’s anticipation rejection of claims 1 and 7 and
claims 4, 6, 9, and 11, which were not separately argued and fall with claims
1 and 7. We will also sustain the Examiner’s obviousness rejection of claim
2 based on the added Takagi reference, since that rejection was not
separately argued. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987); 37
C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
Appellant did not show that the Examiner erred in finding that
Konishi discloses “wherein when the brightness measured by the photometry
means is higher than a predetermined value, a setting of the amplification
factor is not changed,” as set forth in claim 1, and discloses a similar
limitation in claim 7.

DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 6, 7, 9, and
11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

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AFFIRMED

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