Herbert Gross et al.

Patent Trials and Appeals Board

Oct 7, 2019

15100244 - (D) (P.T.A.B. Oct. 7, 2019)

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.
15/100,244 05/27/2016 Herbert GROSS GRI-001 2020
25962 7590 10/07/2019
SLATER MATSIL, LLP
17950 PRESTON RD, SUITE 1000
DALLAS, TX 75252-5793
EXAMINER
AKANBI, ISIAKA O
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
10/07/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT GROSS, BERNHARD MESSERSCHMIDT, MINYI
ZHONG, and MARCEL KUNZE
Appeal 2019-000261
Application 15/100,244
Technology Center 2800
BEFORE LINDA M. GAUDETTE, KAREN M. HASTINGS, and
RAE LYNN P. GUEST, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 16–31. Final Act. 1.3
We REVERSE.

1 This Decision includes citations to the following documents: Substitute
Specification filed May 27, 2016 (“Spec.”); Final Office Action dated
November 3, 2017 (“Final”); Appeal Brief filed May 2, 2018 (“Appeal
Br.”); Examiner’s Answer dated August 9, 2018 (“Ans.”); and Reply Brief
filed October 9, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to the “Applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant, also identified as the real party in
interest (Appeal Br. 2), is Grintech GMBH.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-000261
Application 15/100,244
2
CLAIMED SUBJECT MATTER
Claim 16, reproduced below, is illustrative of the claimed subject
matter:
16. A device for contactless optical distance measurement,
the device comprising:
a light source;
a light analysis unit; and
a measurement head,
wherein the light source is a polychromatic light source,
which is suitable for emitting light of a continuous spectrum
into the measurement head,
wherein the light analysis unit is suitable for receiving
and for spectrally analyzing received light from the
measurement head,
wherein the measurement head has an aperture opening
for entry of the light of the light source into the measurement
head and for exit of the received light from the measurement
head towards the light analysis unit,
wherein the measurement head has an optical lens
system, which has a chromatic longitudinal aberration,
wherein the optical lens system consists only of a first
refractive lens and a second refractive lens,
wherein the first refractive lens has an aspherically
curved lens surface,
wherein the optical lens system has such a chromatic
longitudinal aberration that a measurement region, which equals
an axial focus shift of the optical lens system between the
wavelengths 450 nm and 700 nm, is between 0.2 mm
inclusively and 10 mm inclusively,
wherein both the first refractive lens and the second
refractive lens have an optical material with an Abbe number
20 ≤ vd ≤ 41, and
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Application 15/100,244
3
wherein a product of the measurement region and a
square of a numerical aperture on a side of the measurement
region is between 100 μm inclusively and 450 μm inclusively.
Appeal Br. 11 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Altendorf
Rayer
US 2008/0239278 A1
US 2014/0347660 A1
Oct. 2, 2008
Nov. 27, 2014

REJECTION
Claims 16–31 are rejected under 35 U.S.C. § 103 as unpatentable over
Altendorf in view of Rayer. Ans. 2.

OPINION
Each of independent claims 16 and 31 recites “wherein both the first
refractive lens and the second refractive lens have an optical material with
an Abbe number 20 ≤ vd ≤ 41.” Appeal Br. 11, 14 (Claims Appendix). The
Examiner found Altendorf discloses first and second lenses 101A, 101B that
meet this limitation. Final 4. Specifically, the Examiner relied on Altendorf
paragraph 36, which describes an embodiment wherein “the first lens portion
101A has a relatively lower Abbe number of 25.4 and a refractive index of
1.8, while the second lens portion 101B has a relatively higher Abbe number
of 45.8 and a refractive index of 1.5.”
The Appellant argues that the above-quoted claim limitation is not
met by Altendorf because only lens 101A has an Abbe number that falls
within the claimed range, whereas the claims require that both the first and
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Application 15/100,244
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the second refractive lenses have Abbe numbers within the claimed range.
Appeal Br. 7.
In response, the Examiner clarifies that the rejection is based on
Altendorf’s disclosure that “the average Abbe number of the corresponding
doublet lens element 101 is 35.6.” Ans. 8–9 (citing Altendorf ¶ 36). The
Examiner asserts that “the broadest reasonable interpretation [of] ‘both’
means one and the other; two together or the two; two considered together.”
Id. at 8.
The Appellant argues that the Examiner’s claim interpretation fails to
take into account that the claims require that both of the refractive lenses
have “an optical material with an Abbe number 20 ≤ vd ≤ 41.” Reply Br. 2.
The Appellant argues, therefore, that each lens must have a material with an
Abbe number that falls within the claimed range. Id.
We are persuaded that the Examiner’s rejection is based on an overly-
broad claim interpretation that is not supported by the Specification.
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). There is no indication in
the Final Office Action or the Answer that the Examiner considered the
Specification when interpreting the argued claim language. Instead, the
Examiner generally cites Dictionary.com in support of the interpretation of
“both” as encompassing the average Abbe number of the two lenses. See
Ans. 8. Our reviewing court, however, has explained that “dictionary
definitions must give way to the meaning imparted by the specification.” In
re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006). “Even when guidance is
not provided in explicit definitional format, the specification may define
claim terms by implication such that the meaning may be found in or
Appeal 2019-000261
Application 15/100,244
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ascertained by a reading of the patent documents.” Iredeto Access, Inc. v.
Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (internal
quotation marks omitted), quoted in In re Abbott Diabetes Care Inc., 696
F.3d 1142, 1150 (Fed. Cir. 2012).
As argued by the Appellant (Reply Br. 2), the Examiner did not
consider that the claims require that “both the first refractive lens and the
second refractive lens have an optical material with an Abbe number 20 ≤
vd ≤ 41” (Claims 16, 31 (emphasis added)). We agree with the Appellant
that one of ordinary skill in the art would understand this language as
requiring that each of the two lenses is made of a material having an Abbe
number in the claimed range. This interpretation is consistent with the
written description. See, e.g., Spec. ¶ 15 (“The first and/or the second
refractive lens of the optical lens system advantageously have an optical
material with an Abbe number 20 ≤ vd ≤ 41. The Abbe number is a
measurement for the dispersion of an optical material.”), ¶ 56 (“Particularly
preferably both lenses 1, 2 of the optical lens systems 12 are made of
strongly dispersive optical materials with Abbe numbers vd between 20
and 41.”).
In sum, the Appellant has argued persuasively that the Examiner’s
rejection is based on an overly-broad interpretation of the claim language
“wherein both the first refractive lens and the second refractive lens have an
optical material with an Abbe number 20 ≤ vd ≤ 41” (claims 16, 31) as
encompassing Altendorf’s lenses 101A, 101B, only one of which has an
Abbe number within the claimed range.

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CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
16–31 103 Altendorf, Rayer 16–31

REVERSED