Ex parte VALA et al.

Board of Patent Appeals and Interferences

Aug 15, 1997

07935507 (B.P.A.I. Aug. 15, 1997)

Application for patent filed August 26, 1992.1
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(2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN D. VALA, CLIVE E. CATCHPOLE,
JOHAN P. BAKKER, ROBERT T. ROURKE, PAUL STOLIS,
GARY B. COPENHAVER, DAVID J. VALICE
and DAVID J. CONCANNON
_____________
Appeal No. 95-4814
Application 07/935,5071
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH, and BARRETT, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
Appeal No. 95-4814
Application 07/935,507
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 25.
The disclosed invention relates to a method and
apparatus for illuminating documents in an automatic document
processing system wherein a large number of documents is
rapidly transported past one or more imaging stations.
Claims 1 and 20 are illustrative of the claimed
invention, and they read as follows:
1. An arrangement for illuminating and documents
checks in a document-processing system wherein a large number
of documents are rapidly, continuously automatically
transported past one or more imaging stations, each station
having a prescribed source means comprising a hollow
Lambertian integrating vessel which houses one or more light
sources and projects a highly-uniform, yet highly diffuse
illumination-beam.
20. An automatic method of illuminating documents
in a document-processing system wherein a large number of
documents is rapidly transported past one or more imaging
stations, each station having a prescribed respective imaging-
site which is illuminated by prescribed lamp means which
projects an illumination-beam thereto; said method comprising:
housing said lamp means in a hollow Lambertian
integrating vessel having illumination-aperture means adapted
to project the energy of said lamps to its respective said
imaging-site; arranging said lamp means to direct all of its
emitted light to be reflected by the inner walls of said
vessel; and making said inner walls a highly-Lambertian
reflector/diffuser.
Appeal No. 95-4814
Application 07/935,507
3
The references relied on by the examiner are:
Martino 4,220,982 Sept. 2,
1980
Vala et al. (Vala) 5,089,713 Feb. 18,
1992
Claims 1 through 5 and 18 through 25 stand rejected
under the second paragraph of 35 U.S.C. § 112 as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which appellants regard as
the invention. According to the examiner, "[t]hese claims
cite a function of the apparatus without reciting in the claim
sufficient structure to enable that function to be effected:
there is only one element recited in the claim, a lambertian
vessel" (Answer, pages 3 and 4).
Claims 1 through 25 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Vala in view of Martino.
Reference is made to the briefs and the answers for
the respective positions of the appellants and the examiner.
Appeal No. 95-4814
Application 07/935,507
4
OPINION
We have carefully considered the entire record
before us, and we will reverse the indefiniteness rejection,
sustain the obviousness rejection of claims 1, 2, 6, 7 and 20,
and reverse the obviousness rejection of claims 3 through 5, 8
through 19 and 21 through 25.
Turning first to the indefiniteness rejection, some
of the claims on appeal are indeed broad, and could have
included specific structure. We find that none of the claims
on appeal, however, recites only one element as asserted by
the examiner (Answer, page 4). It is well known that
appellants are permitted to claim their invention in broad
terms if the disclosure supported such broad terms. Even if
the claims are broader than they otherwise would have been if
specific structure had been specified, breadth is not to be
equated with indefiniteness. See In re Miller, 441 F.2d 689,
693, 169 USPQ 597, 600 (CCPA 1971).
The indefiniteness rejection of claims 1 through 5 and 18
through 25 is reversed.
The first question is whether appellants have
complied with the requirements of 35 U.S.C. § 120 for claiming
Appeal No. 95-4814
Application 07/935,507
U.S. Patent No. 5,089,713 is one of the references2
relied on by the examiner.
5
the priority benefit of Vala, U.S. Patent 5,089,713; that is,2
whether Vala is prior art. In Amendment A (paper number 3),
appellants amended the application to include the following
statement:
This is a Continuation-in-Part of
our USSN 07/811,337 filed 1/29-92
which is a Division of our USSN
651,887 filed 2/7-91 and now US
5,089,713, which, in turn, is a
Division of our USSN 419,572 filed
10/10-89 and now US 5,003,189, all
having common inventors and being
commonly assigned. We hereby claim
the filing dates of the foregoing as
the effective filing date of the
instant case as regards all common
disclosed subject matter.
According to the examiner (Answer, page 2):
[A]pplicant has [sic, Applicants have]
failed to perfect his [sic, their]
claimed continuation-in-part status by
neglecting to disclose all information
as required under 35 U.S.C. 120 and
§ 1.56; please see bottom of page 1
of+-
applicant's [sic, applicants’] declaration wherein space for
said information is blank. Because of this omission, the
examiner is required to use the "parent" application as prior
art. In the last office action, the examiner detailed this
information by directing the applicant [sic, applicants] to 37
CFR 1.62(c),(d) and 37 CFR 1.63(d) (emphasis in original).
Appeal No. 95-4814
Application 07/935,507
A writing conveying information does not have to be on3
paper. A film, like paper, is a material substance that can
hold representations of our thoughts via conventional marks or
symbols.
6
The only requirement placed upon appellants by the referenced
portions of 37 CFR §§ 1.62 and 1.63 is that they file a
corrected declaration. Except for a corrected declaration,
appellants have complied with all of the requirements of 35
U.S.C. § 120, and MPEP §§ 201.08 and 201.11. Thus, we find
that the Vala patent is not proper prior art against the
claims on appeal.
Although Vala is not available as prior art against
the claims on appeal, the BACKGROUND section of Vala discloses
that high-speed document processors requiring intense
illumination sources were well known in the art. Accordingly,
we rely on that admission and Martino.
Martino discloses a light table arrangement 17 for
illuminating documents contained on film, wherein a large3
number of documents on film are rapidly, continuously, and
automatically transported by film advance system 15 past one
or more imaging stations on cover 83. As seen in Figures 1
through 4, one or more imaging stations are formed by the pair
Appeal No. 95-4814
Application 07/935,507
Jay (Editor), IEEE Standard Dictionary of Electrical and4
Electronic Terms, p. 363 (2d ed., New York, The Institute of
Electrical and Electronics Engineers, Inc., 1977) (copy
attached).
7
of illumination systems 87 and 87a. Each of the imaging
stations has a prescribed source means which houses one or
more light sources 103, and projects a highly-uniform, yet
highly diffuse illumination beam which, absent a showing to
the contrary, is considered to be a "Lambertian integrating
vessel." According to the IEEE Standard Dictionary of
Electrical and Electronic Terms, a lambertian surface has the4
same luminance regardless of the viewing angle. Appellants
have not demonstrated that Martino does not possess this
characteristic and is not a "Lambertian integrating vessel."
Martino states that a diffusing coating may be applied to the
reflective surface 100 of reflector 89 in the illumination
system 87 and 87a (column 4, lines 29 through 31). Appellants
disclose throughout the specification that the preferred
sources of illumination are either tungsten-halogen lamps or
arc lamps. Martino discloses (column 3, lines 21 through 26)
that the illumination lamps 103 should be either tungsten-
halogen or an arc source. The particularly chosen
Appeal No. 95-4814
Application 07/935,507
The cross-sectional shape of the illumination system 875
has the properties of a cylinder.
Although the rejection is based on Vala in view of6
Martino, it is permissible to sustain the rejection in light
of the admitted prior art in Vala and Martino. See In re
Bush, 296 F.2d 491, 495-96, 131 USPQ 263, 266-67 (CCPA
1961).
8
illumination levels and sources, the diffuse and reflective
coatings on the pair of illumination systems, and the
uniformity of the illumination (column 4, lines 9 through 15)
combine to form "a hollow Lambertian integrating vessel" in
Martino as disclosed and claimed at least absent a factual
showing that a "Lambertian integrating vessel" has structural
properties different from Martino. As illustrated in the
cross-sectional view of the light table 17, a cylindrical5
shape, but not a cylinder, is formed by the illumination
system 87. The open end of each of the illumination systems
87 and 87a forms a very wide aperture.
In view of the foregoing, the obviousness rejection
of claims 1, 2, 6, 7 and 20 is sustained over the teachings of
the admitted prior art in Vala and Martino. It is noted that6
no particular vessel shape is set forth in claims 1, 6 and 20.
Claim 7 requires a "cylindrical" vessel, not a closed
Appeal No. 95-4814
Application 07/935,507
9
cylinder, which we consider would have been obvious in view of
the partially circular cross section in Figure 3 of Martino.
The obviousness rejection of claims 3, 4, 18 and 19 is
reversed because Martino's illumination system 87 is not a
cylinder, which we consider to require a mostly full outer
surface. The obviousness rejection of claims 5 and 21 through
25 is reversed because Martino's aperture is too wide to be
fairly considered a slit. The obviousness rejection of claims
8 through 15 is reversed because Martino does not disclose a
camera means. The obviousness rejection of claims 16 and 17
is reversed because Martino does not disclose lamp means
outside the walls of the illumination system 87.
DECISION
The decision of the examiner rejecting claims 1
through 5 and 18 through 25 under the second paragraph of 35
U.S.C. § 112 is reversed, and the decision of the examiner
rejecting claims 1 through 25 under 35 U.S.C. § 103 is
affirmed as to claims 1, 2, 6, 7 and 20, and is reversed as to
claims 3 through 5, 8 through 19 and 21 through 25.
Accordingly, the decision of the examiner is affirmed-in-part.
Appeal No. 95-4814
Application 07/935,507
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 95-4814
Application 07/935,507
11
John J. McCormack
UNISYS CORP.
Law Department
10920 Wilshire Boulevard
4th Floor
Los Angeles, CA 90024