Ex parte WILK et al.

Board of Patent Appeals and Interferences

Apr 29, 1998

08098165 (B.P.A.I. Apr. 29, 1998)

Application for patent filed July 28, 1993.1
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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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PETER J. WILK
AND ROBERT C. STIRBL
_____________
Appeal No. 96-1457
Application 08/098,1651
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and BARRETT, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1457
Application No. 08/098,165
2
This is an appeal from the final rejection of claims 1
through 6, 8 through 10, 12 through 14 and 21 through 26. In an
Amendment After Final (paper number 7), claims 1, 8 and 14 were
amended.
The disclosed invention relates to a camera device with an
array of lenses.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A camera device comprising:
photosensitive film;
frame means connected to said film for holding said film
faxed in a first plane;
a plurality of lenses of different predetermined focusing
powers mounted to said frame means in a rectangular array and
disposed in a second plane spaced from and parallel to said first
plane, said lenses being spaced from one another in said second
plane, said film being divided into a plurality of film areas
equal in number to said lenses;
shutter means mounted to said frame means for enabling light
transmission selectively through said lenses and onto said film;
and
shutter activation means mounted to said frame means and
operatively connected to said shutter means for activating said
shutter means in response to manipulation by a user.
Appeal No. 96-1457
Application No. 08/098,165
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The references relied on by the examiner are:
Cummins 3,283,685 Nov. 8, 1966
Van Allen 4,304,479 Dec. 8, 1981
Ohmura 4,527,874 July 9, 1985
Tsuchida 5,046,833 Sep. 10, 1991
Taylor 5,222,025 June 22, 1993
The following references were cited by the examiner
(Supplemental Answer, paper number 14) in response to appellants’
challenge (Reply Brief, pages 4 and 5) to the examiner’s taking
of Official Notice (Answer, page 11) that it is known in the art
to (a) store a camera in a wallet, (b) remove the camera from the
wallet, (c) upon removal of the camera from the wallet, take a
picture, and then (d) return the camera to the wallet:
Little 844,152 Feb. 12, 1907
Rice 5,043,751 Aug. 27, 1991
Claims 13 and 24 stand rejected under the first paragraph of
35 U.S.C. § 112 as failing to adequately teach how to make and/or
use the invention, i.e., for failing to provide an enabling
disclosure.
Claim 25 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Cummins.
Claims 1, 5, 6, 8 through 10 and 14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Cummins in view of
Ohmura.
Claims 2 through 4 stand rejected under 35 U.S.C. § 103 as
Appeal No. 96-1457
Application No. 08/098,165
4
being unpatentable over Cummins in view of Ohmura, Van Allen and
Taylor.
Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Cummins in view of Ohmura and Tsuchida.
Claims 21 through 23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cummins in view of Van Allen and Taylor.
Claim 26 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Cummins.
Reference is made to the briefs and the answers for the
respective positions of the appellants and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will sustain the rejection of claims 13 and 24 under the
first paragraph of 35 U.S.C. § 112, the rejection of claim 25
under 35 U.S.C. § 102(b), the rejection of claims 21 through 23
and 26 under 35 U.S.C. § 103, and reverse the rejection of claims
1 through 6, 8 through 10, 12 and 14 under 35 U.S.C. § 103.
Turning first to the lack of enablement rejection, the
examiner indicates (Answer, pages 8 and 9) that “[i]t is not
understood how a plurality of viewfinder apertures can be
provided since no corresponding apertures or holes are provided
in the web 56 so that the user can see through a plurality of
Appeal No. 96-1457
Application No. 08/098,165
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viewfinder apertures.” Appellants disclose (specification, page
7) that a plurality of viewfinder windows or apertures 28 on the
rear face 26 of the camera are “aligned with windows 20" that
hold the lenses 18 on the front face of the camera, and claim
that the plurality of viewfinder apertures are paired with
respective lenses on the front face of the camera. Figure 5 of
appellants’ drawing clearly shows a solid film of photosensitive
material 56 located between the viewfinder apertures 28 and the
plurality of lenses 18. In view of the solid film between the
apertures 28 and the lenses 18, we find that the examiner had a
reasonable basis for questioning the adequacy of appellants’
disclosure for teaching that which is set forth in claims 13 and
24. See In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232
(CCPA 1973), cert. denied, 416 U.S. 935 (1974). Appellants’
response (Brief, pages 15 and 16) to the examiner’s question
concerning the adequacy of the disclosure is that:
One of ordinary skill in the art would know to put
holes or light transmitting passages in web 56 so as to
enable viewing therethrough. While it is true that
these holes or light transmitting passages in web 56
are not described in the disclosure, one of ordinary
skill in the art would nevertheless be able to practice
the invention based on the disclosure. It is to be
noted that the film is fixed relative to the camera
frame, i.e., the film is not shiftable by the user.
Accordingly, the provision of light transmission
passages in web 56 would be a simple and obvious
implementation of the invention in view of the
Appeal No. 96-1457
Application No. 08/098,165
The enablement clause of the first paragraph of 35 U.S.C.2
§ 112 requires that the disclosure adequately describe the
claimed invention so that the artisan could practice it without
undue experimentation. See Genentech Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1364, 42 USPQ2d 1001, 1004 (Fed. Cir.), cert.
denied, 118 S.Ct. 397 (1997).
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disclosure.
Appellants’ argument to the contrary notwithstanding, the “holes
or light transmitting passages in web 56" would expose the film
to light before the shutter is opened, and the holes would be in
the middle of the picture taking area of the film. In the
absence of disclosure or a satisfactory explanation by appellants
as to how such problems would be overcome, we are of the opinion
that the skilled artisan would have to resort to undue
experimentation to solve the problem of light exposure to the2
film via the viewfinder apertures, and the intrusiveness of the
“light transmission passages in web 56.” The lack of enablement
rejection under the first paragraph of 35 U.S.C. § 112 is
sustained.
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. See Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043,
1047, 34 USPQ2d 1565, 1567 (Fed. Cir.), cert. denied, 516 U.S.
988 (1995). Appellants argue that Cummins does not disclose
Appeal No. 96-1457
Application No. 08/098,165
Cummins states (column 5, lines 72 through 74) that each3
actuating button 32 serves as an “exposure indicator.”
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“a plurality of exposure indicators as set forth in claim 25,
where the exposure indicators are different or separate from
manual actuators of a shutter activation assembly” (Brief, page
16). The examiner states (Answer, page 5) that Cummins has:
shutter activation means including individual
manual actuators (vertically-moved bar or link 76, slot
78, pin 80, angularly-extending portions 82, overturned
extremities 84, and platforms 86) mounted to said frame
means and operatively connected to said shutter means
for activating said shutter means in response to
manipulation by a user; and
a plurality of exposure indicators (actuating3
buttons 32) equal in number to said lenses and paired
with respective ones of said lenses, to indicate that
respective film areas have been exposed via said
lenses, said exposure indicators being separate or
different from said actuators.
Inasmuch as appellants claim that the exposure indicators are
“separate or different from said actuators,” and not “separate or
different” from the claimed “shutter activation means” which
includes the individual “actuators,” we agree with the examiner
that the exposure indicators are broadly speaking “separate or
different from said actuators” in spite of their mechanical
Appeal No. 96-1457
Application No. 08/098,165
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connection to each other. The 35 U.S.C. § 102(b) rejection of
claim 25 is sustained.
Turning next to the obviousness rejection of claims 1, 5, 6,
8 through 10 and 14, the examiner acknowledges (Answer, page 6)
that “Cummins . . . lacks a plurality of lenses of different
predetermined focusing powers . . . .” Cummins discloses a
portrait camera (column 1, line 19) that has “a plurality of
lenses . . . with focus and the aperture fixed relative to a
subject to be posed at a given distance . . .” (column 1, lines
47 through 50). Ohmura discloses a dual lens camera “having a
relatively long focus lens [T] and a relatively short focus lens
[W] either one of which is selected for telephotographing and
wide angle photographing” (Answer, page 6). According to the
examiner (Answer, page 6), “it would have been obvious to one
having ordinary skill in the art to provide the camera of Cummins
with a plurality of different focus lens, as taught by Ohmura, in
order to take pictures in both telephoto and wide angle mode.”
Appellants argue (Brief, page 10) that:
Moreover, in view of the . . . purpose and
direction of Cummins, the portrait camera of that
reference could not be provided with lenses of
different focal powers without destroying the identity
of the camera as a portrait camera. One of ordinary
skill in the art would not incorporate multiple focus
lenses into the camera of Cummins inasmuch as Cummins
unequivocally states that its lenses have a common
Appeal No. 96-1457
Application No. 08/098,165
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focal length. The teachings of Ohmura are not
sufficient to overcome this contrary teaching of the
prior art represented by Cummins.
We agree. If both wide angle and telephoto lenses are used in
Cummins, then Cummins would not be a “portrait camera” with
“focus and the aperture fixed relative to a subject.” A camera
with both types of lenses is incapable of producing a plurality
of like pictures of a single pose of a subject. The obviousness
rejection of claims 1, 5, 6, 8 through 10 and 14 is reversed.
The obviousness rejection of claims 2 through 4 and 12 is
reversed because the teachings of Van Allen, Taylor and Tsuchida
do not cure the noted shortcoming in the teachings of Cummins and
Ohmura.
In claims 21 through 23, the lenses are not required to be
of “different predetermined focusing powers.” Claim 21 does,
however, call for a light generating means that generates a flash
of light substantially simultaneously with the operation of the
shutter means. The claimed light generating means includes a
light source and concentrator means for concentrating the light
from the light source. The claimed light concentrator in turn
includes a Fresnel reflector disposed on one side of the light
source. Cummins discloses that “[e]ach shutter has a given speed
and is provided with electrical contacts for electronic flash”
Appeal No. 96-1457
Application No. 08/098,165
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(column 1, lines 55 through 57). Cummins does not disclose a
specific type of flash. Van Allen discloses an electronic flash
20 (Figure 1) that uses a mirror reflector 34 and Fresnel lens 42
(Figure 7) as a light concentrator in a Polaroid camera. Taylor
discloses that “[c]oncave reflective mirrors are sometimes used
in a variety of imaging systems” (column 1, lines 21 and 22),
that concave mirrors are used by the Polaroid Corporation (column
3, lines 31 through 36), and that Fresnel reflectors are used “as
substitutes for optical surfaces which are described as conic
sections” (column 4, lines 13 through 15). We agree with
appellants’ argument (Reply Brief, page 4) that Taylor does not
specifically mention the use of a Fresnel reflector in a camera.
On the other hand, based upon the noted teachings of Van Allen
and Taylor, we agree with the examiner (Answer, page 10) that “it
would have been obvious to one having ordinary skill in the art
to provide the camera of Cummins with a strobe of Van Allen in
which the light reflector is replaced with a Fresnel reflector as
taught by Taylor, II since it has been known to select a known
reflector on the basis of its suitability for its intended use.”
The obviousness rejection of claims 21 through 23 is sustained.
Appeal No. 96-1457
Application No. 08/098,165
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Claim 26 is directed to a method of taking photographs with
a camera that is removed from a wallet for use, and is then
returned to the wallet after use. The examiner took Official
Notice of camera wallets, and concluded (Answer, page 11) that:
Thus, it would have been obvious to one having ordinary
skill in the art to (a) store the camera of Cummins in
a wallet, (b) remove the camera from the wallet, (c)
upon removal of the camera from the wallet, expose at
least on one of a plurality of predetermined different
areas of the film via a respective one of the lenses,
and (d) upon exposure of the one of the plurality of
predetermined different areas of the film, return the
camera to the wallet for the purpose of protecting a
camera when not in use.
Appellants challenged the examiner’s taking of Official Notice
(Reply Brief, pages 4 and 5), and, in response to this challenge,
the examiner cited U.S. Patent No. 5,043,751 issued to Rice “to
clearly establish that it is known in the art to store a camera
in a wallet,” and U.S.Patent No. 844,152 issued to Little “to
show that it is well known in the art to store a flat camera in
one’s pocket” (Supplemental Answer, page 1). The obviousness
rejection of claim 26 is sustained because the references cited
by the examiner in response to appellants’ challenge teach a
camera carried in a wallet and/or a pocket-sized camera, and
appellants have not rebutted the evidence submitted by the
examiner.
DECISION
Appeal No. 96-1457
Application No. 08/098,165
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The decision of the examiner rejecting claims 13 and 24
under the first paragraph of 35 U.S.C. § 112 is affirmed. The
decision of the examiner rejecting claim 25 under 35 U.S.C.
§ 102(b) is affirmed. The decision of the examiner rejecting
claims 1 through 6, 8 through 10, 12, 14, 21 through 23 and 26
under 35 U.S.C. § 103 is affirmed as to claims 21 through 23 and
26, and is reversed as to claims 1 through 6, 8 through 10, 12
and 14. Accordingly, the decision of the examiner is
affirmed-in-part.
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
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
R. Neil Sudol
COLEMAN & SUDOL
Appeal No. 96-1457
Application No. 08/098,165
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