Ex Parte 6,961,191 et al

Patent Trial and Appeal Board

Sep 20, 2012

95001412 (P.T.A.B. Sep. 20, 2012)

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.
95/001,412 09/17/2010 6,961,191 100252-0007-US 6651
24341 7590 09/20/2012
MORGAN, LEWIS & BOCKIUS, LLP. (PA)
2 PALO ALTO SQUARE
3000 EL CAMINO REAL, SUITE 700
PALO ALTO, CA 94306
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LARGAN PRECISION CO., LTD.
Third Party Requester, Appellant

v.

FUJIFILM, CORP.
Patent Owner, Respondent
________

Appeal 2012-004119
Inter partes Reexamination Control 95/001,412
United States Patent 6,961,191 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
JONI Y. CHANG, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Third Party Requester Largan Precision Co., Ltd. (hereinafter
“Appellant”) appeals1 under 35 U.S.C. §§ 134(c) and 315(b)(1) the

1 See Supplemental Appeal Brief filed October 3, 2011, hereinafter “Supp.
App. Br.,” at 1; see also Appeal Brief filed June 8, 2011, and Rebuttal Brief
filed January 3, 2012, hereinafter “Rebut. Br.”
Appeal 2012-004119
Reexamination Control No. 95/001,412
Patent 6,961,191 B2

2
Examiner’s decision to not adopt Appellant’s proposed rejections and
confirm claims 1-20.2 Patent Owner Fujifilm, Corp. (hereinafter
“Respondent”) is a party to the appeal under 35 U.S.C. § 315(a)(2) and
disputes the Appellant’s contentions.3
We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We
AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a corrected request for inter partes
reexamination (“Request”) filed on behalf of Appellant, on September 17,
2010, of United States Patent 6,961,191 B2 (“the '191 Patent”), issued to
Kenichi Sato on November 1, 2005, based on United States Application
10/790,758, filed March 3, 2004, where that application claimed benefit to a
Japanese patent application, 2003-094151, filed March 31, 2003.
The '191 Patent is the subject of litigation styled Largan Precision
Co., Ltd. v. Fujinon Corp., Civ. A. No. 4:10-cv-01318-SBA (N.D. Cal.),
(See Resp. Br. 5), where that litigation is apparently still pending. The
patent was also the subject of litigation styled Fujifilm Corp. v. HTC Corp.,
Civ. A. No. 4:10-cv-04451 (S.D. Tex.), where that case has been
administratively closed (id.).
We previously issued a decision, Appeal No. 2012-002610,
Reexamination Control 95/001,450, United States Patent 7,535,658 B2, on

2 See Right of Appeal Notice, mailed May 10, 2011, see also Examiner’s
Answer, mailed October 19, 2011, and Action Closing Prosecution, mailed
March 28, 2011, hereinafter “ACP.”
3 See Respondent Brief filed September 7, 2011, hereinafter “Resp. Br.”
Appeal 2012-004119
Reexamination Control No. 95/001,412
Patent 6,961,191 B2

3
June 6, 2012, between the same parties, where that patent and the instant
patent (the '191 Patent) disclose similar subject matters.

THE INVENTION
The invention of the '191 Patent relates to a single focus imaging lens
which can be suitably mounted on a small-sized imaging apparatus such as a
digital camera (Col. 2, ll. 20-26; Abs.).
Exemplary claim 1 on appeal reads as follows:
1. A single focus lens comprising, arranged along an optical
axis in order from the object side:
a first lens component having positive refractive power and
having a convex surface on the object side;
a stop;
a second lens component having a meniscus shape with a
concave surface near the optical axis on the object side, being made of
plastic, and having at least one aspheric surface;
a third lens component having a meniscus shape, positive
refractive power, a convex surface on the object side near the optical
axis, an aspheric object-side surface, and an aspheric image-side
surface;
wherein the following condition is satisfied:
0.8