Ex Parte Schofield et al

Patent Trial and Appeal BoardMay 28, 2014

90011478 (P.T.A.B. May. 28, 2014)

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. 90/011,478 02/07/2011 Kenneth Schofield Q122420 5719 7590 05/29/2014 FREDERICK S. BURKHART VAN DYKE GARDNER LINN & BURKHART LLP POST OFFICE BOX 888695 GRAND RAPIDS, MI 49588-8695 EXAMINER BANANKHAH, MAJID A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/29/2014 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 _____________ Ex parte MAGNA ELECTRONICS, INC. _____________ Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 Technology Center 3900 ______________ Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, DAVID M. KOHUT, and STANLEY M. WEINBERG, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s rejection of claims 45 and 107 1 of United States Patent 6,222,447 (hereinafter “’447 Patent”). Final Office Action mailed February 24, 2012 (hereinafter “Final Action.”). An oral hearing was conducted with the Patent Owner on April 24, 2013. A transcript of the oral hearing was made of record on July 19, 2013. We have jurisdiction under 35 U.S.C. § 306. We AFFIRM. STATEMENT OF THE CASE This ex parte reexamination proceeding was initiated by a “REQUEST FOR REEXAMINATION” filed on February 7, 2011, by William Mandir, Sughrue Mion, PLLC, attorney for a Third-Party Requester. The ’447 Patent describes a vehicular rearview vision system. Claim 45 is illustrative of the invention and reads as follows: 45. A rearview vision system for a vehicle having a gear actuator, comprising: an image capture device mounted at the rear of the vehicle and having a field of view directed rearwardly of the vehicle, wherein said image capture device comprises a pixelated imaging array and wherein said pixelated array comprises a CMOS imaging array; 1 Appellant withdraws claims 4, 32-37, 40-44, 46-56, 59-65, 67-79, 82-99, 102, 106, and 108-185 from consideration and asks the Examiner to cancel the claims without prejudice. Reply Br. 2. As such, we will not address any arguments directed toward these claims and also urge the Examiner to cancel the claims. Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 3 a display system viewable by a driver of the vehicle which displays a rearward image output of said image capture device; a graphic overlayer superimposed on said rearward image when the gear actuator of the vehicle selects a reverse gear; and wherein said graphic overlayer is disabled when the gear actuator of the vehicle is not in reverse gear. The following prior art references are applied: Matsushita Electric Co. JP 60-79889 Oct. 23, 1986 Aisin AW Co. JP 64-14700 Jan. 18, 1989 G. Wang et al., CMOS Video Cameras, IEEE, pp. 100-103 (1991). Appellant/Patent Owner appeals the Examiner’s following rejection: Claims 45 and 107 2 are rejected under 35 U.S.C. § 103(a) as obvious over the combination of JP 64-14700 (hereinafter referred to as “JP ‘700”), JP 60-79889 (hereinafter referred to as “JP ‘889”), and “CMOS Video Cameras” (hereinafter referred to as “Wang”). ISSUES Did the Examiner err in finding that it would have been obvious to modify the system of JP ‘700 and JP ‘889 to use the CMOS camera taught by Wang instead of the CCD camera taught by JP ‘700 and JP ‘889? 2 Since Appellant withdrew claims 4, 32-37, 40-44, 46-56, 59-65, 67-79, 82- 99, 102, 106, and 108-185 (Reply Br. 2) we have removed them from the rejection statement. Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 4 ANALYSIS Claims 45 and 107 Claims 45 and 107 recite a “rearview vision system… wherein said image capture device comprises a pixelated imaging array and wherein said pixelated array comprises a CMOS imaging array.” The Examiner adopted the Requester’s proposed rejection of claims 45 and 107 over the combination of JP ‘700, JP ‘889, and Wang, evidenced by Kuban. Ans. 4; citing Final Office Action mailed February 24, 2012. Patent Owner argues that it would not have been obvious to one of ordinary skill in the art at the time of the invention to use the CMOS camera taught by Wang in place of the CCD camera taught by JP ‘700 and JP ‘889. We disagree with Patent Owner for the reasons discussed below. Patent Owner argues that one of ordinary skill in the art would not have been motivated to use the CMOS camera of Wang in the automotive vision system of JP ‘700 and JP ‘889 because there is no “teaching or suggestion or motivation” in Wang to use the CMOS camera in an automotive vision system. Reply Br. 4. We disagree. Wang teaches that the CMOS camera is usable in “vision systems,” a fact which tends to suggest that the CMOS camera is usable in any type of vision system, including in an automotive vision system. Wang, p. 100. Furthermore, even if Wang does not provide an explicit teaching, suggestion, or motivation to use the CMOS camera in an automotive vision system, the Supreme Court has held that a teaching, suggestion, or motivation in the prior art is but one of several rationales that may support a conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-416 (2007). In KSR, the Court Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 5 held that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Id. As evidenced by JP ‘700, JP ‘889, and Wang, CCD cameras and CMOS cameras were known in the field of vision systems at the time of the invention. In addition, using a CMOS camera instead of a CCD camera would have achieved the predictable result of reducing the size, cost, and power consumption of the camera used by the system of JP ‘700 and JP ‘889. Ans. 27; see also Wang, p. 100. Nonetheless, Patent Owner provides the expert opinion of Dr. Lynam in an attempt to show that using the CMOS camera of Wang instead of the CCD camera of JP ‘700 and JP ‘889 would not have achieved predictable results. Appeal Br. 69. According to Dr. Lynam, “one of ordinary skill in the subject art in the early 90’s would have viewed CMOS imager technology to be insensitive in low light conditions (and thus not particularly suitable for use as a rear backup camera at night), to have inferior image quality and to be difficult and costly to make.” Lynam Decl. ¶ 32. We do not find Dr. Lynam’s declaration persuasive. In assessing the probative value of an expert opinion, we must consider three factors: 1) the interest of the expert in the outcome of the case, 2) the presence or absence of factual support for the expert’s opinion, and 3) the strength of any opposing evidence. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776, F.2d 281 (Fed. Cir. 1985). Regarding the first factor, Dr. Lynam was employed by Patent Owner when he provided the expert opinion and therefore has a substantial interest in the outcome of the case. Ans. 44; see also Lynam Decl. ¶¶ 1-5. Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 6 Regarding the second factor, there is little or no factual support for Dr. Lynam’s expert opinion. For instance, neither Dr. Lynam nor Patent Owner has provided any information indicating the approximate level of light sensitivity needed by a backup camera to suitably operate at night, 3 the approximate level of light sensitivity of any known CMOS camera, the approximate cost and quality of any known CMOS camera, or the approximate cost and quality of any known CCD camera. Regarding the third factor, Wang provides substantial objective evidence that squarely contradicts Dr. Lynam’s expert opinion. For instance, Wang teaches that known CCD cameras were “cumbersome, power-hungry and expensive” compared to Wang’s CMOS camera. Wang, p. 100. In addition, when comparing the CMOS camera to known CCD cameras, Wang teaches that the “picture quality is subjectively excellent, and compares well with commercially available cameras.” Id. at p. 101. Wang also provides a table of experimental results showing that the performance of the CMOS camera meets or exceeds the performance of known CCD cameras in a number of respects. Id. at p. 103. Based on our above analysis, we agree with the Examiner that the probative value of the objective evidence provided by Wang outweighs the probative value of Dr. Lynam’s expert opinion. Ans. 44-46. Patent Owner also contends that the prior art as a whole teaches the benefits of using CCD cameras in automotive vision systems and therefore teaches away from using CMOS cameras in such systems. App. Br. 67. We 3 Taking into account ambient light sources such as buildings, street lamps, and vehicles (especially the rear lights of the vehicle employing the backup camera). Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 7 disagree. A teaching of a preferred embodiment does not constitute a teaching away from a non-preferred embodiment. In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). In addition, Patent Owner argues that using a CMOS camera in an automotive vision system would render such a system inoperable at night because CMOS cameras are insufficiently sensitive to low levels of light. 4 Reply Br. 5. However, Patent Owner has not shown that a CMOS camera-based automotive vision system would be completely inoperative at night or that one of ordinary skill in the art would not know how to modify the CMOS camera to work during the night. More to the point, Wang teaches that CCD cameras are “cumbersome, power-hungry and expensive” relative to Wang’s CMOS camera. Wang, p. 100. Thus, there is motivation to use a CMOS camera in the place of a CCD camera since a CCD camera-based automotive vision system is too expensive, too bulky, and too power-hungry to be incorporated into a vehicle. Evidence of Nonobviousness Based on Secondary Considerations Patent Owner argues that there is substantial evidence of nonobviousness based on secondary considerations. Specifically, Patent Owner provides evidence of the following secondary considerations: 1) commercial success, 2) long-felt need and failure of others, 3) skepticism of experts, 4) unexpected results, 5) copying by others, and 6) licensing. The 4 According to this logic, claims 45 and 107 are not enabled because the specification of the ‘447 Patent does not teach one of ordinary skill in the art how to overcome the allegedly known low light insensitivity of CMOS cameras. Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 8 evidence pertaining to each secondary consideration is separately discussed below. Commercial Success Dr. Lynam attests that CMOS camera-based automotive vision systems supplied by Patent Owner accounted for 35% of the North American market for automotive vision systems in 2010. Dr. Lynam also attests that CMOS cameras accounted for only 10% of the world-wide market for cameras shortly after the time of the invention and 90% at some point thereafter. Appeal Br. 108; Reply Br. 13; see also Lynam Decl. ¶ 83. The Examiner finds that Patent Owner has failed to establish that Schofield’s use of a CMOS camera caused Patent Owner’s 35% share of the market for automotive vision systems in 2010. Ans. 52. We agree with the Examiner. Patent Owner bears the initial burden of proving that there is a nexus between the claimed invention and the commercial success. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). In the instant case, the automotive vision system of claims 45 and 107 comprises two features: a CMOS camera for generating rearview images and a graphic overlay superimposed on the images when a gear actuator of a vehicle selects a reverse gear. Patent Owner has failed to present evidence that Patent Owner’s 35% share of the market for automotive vision systems in 2010 was due to the CMOS camera feature and not the graphic overlay feature. Furthermore, Patent Owner has not provided sufficient evidence of the notion that Schofield’s use of CMOS cameras in one particular market sparked the commercial success of CMOS cameras in every other market. Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 9 Long-felt Need and Failure of Others Again relying on the expert opinion of Dr. Lynam, Patent Owner argues that “for years leading up to the early 1990s, the automotive industry had long-sought an economical and effective camera-based backup system. Ans. 46; see also Lynam Decl. ¶¶ 23, 25, and 85. The Examiner finds that any long-felt need was satisfied by Wang. Ans. 52. We agree with the Examiner. Any long-felt need must not have been satisfied by another before the invention by Schofield. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). As discussed earlier, the relevant field is that of vision systems, not automotive vision systems. To the extent there was a long-felt need in the field of vision systems for something cheaper, smaller, and less power-hungry than existing CCD camera-based vision systems, Wang satisfied that need by developing a cheaper, smaller, and less power-hungry CMOS camera-based vision system. Wang, p. 100. Furthermore, we are not persuaded that the camera-based backup systems of JP ‘700 and JP ‘889 did not satisfy the long-felt need. Skepticism of Experts Patent Owner argues that using CMOS cameras in automotive vision systems was not viewed as being “technically feasible” at the time of the invention because CMOS cameras were viewed as being insensitive in low light conditions, having inferior image quality, and being costly to make. Appeal Br. 102-103; see also Lynam Decl. ¶ 32. The Federal Circuit has held that “evidence that the combination was not viewed as technically feasible… is evidence of unobviousness.” Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 958 (Fed. Cir. 1997). However, in Arkie Lures, Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 10 the Federal Circuit clarified that the term “technically feasible” refers to “manufacturing uncertainties” such as the potential for “violent explosions” that render the manufacturing process “unsafe.” 5 119 F.3d at 957. In the instant case, evidence of the low light insensitivity, poor image quality, and high cost of CMOS cameras at the time of the invention does not raise doubt that a CMOS camera-based automotive vision system can be manufactured. Citing a 1998 “Ward’s Autoworld” article, Patent Owner further contends that experts other than Dr. Lynam expressed concerns that it is “just too expensive” to use a CMOS camera in an automotive vision system at the time of the invention. Appeal Br. 103; see also Lynam Decl. ¶ 86. However, the expert in the article is merely stating that CCD cameras are too expensive for use in automotive vision systems. As discussed earlier, Wang addressed this problem by developing a vision system that uses a CMOS camera instead of a CCD camera. Wang, p. 100. In addition, even assuming that the article can somehow be construed as saying that CMOS cameras are too expensive for use in automotive vision systems, the cost of CMOS cameras is not by itself sufficient to discourage one of ordinary skill in the art from incorporating CMOS cameras into automotive vision systems for another reason, such as reduced size and/or power consumption as is taught by Wang. Id. See also In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (“additional expense associated with the addition of inhibitors would not discourage one of ordinary skill in the art”). 5 The invention at issue in Arkie Lures was a fishing lure manufactured using a combination of salt and plastic. Two manufacturers testified that “it is unsafe to mix chemicals such as salt with plastic, because such mixing can cause violent explosions.” Id. at 955. Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 11 Lastly, Patent Owner argues that Japanese automakers waited for years after the invention to incorporate CMOS backup cameras into their vehicles because they were skeptical that CMOS backup cameras would prove reliable in real-life usage in the field through all seasons and climates. Appeal Br. 103; see also Lynam Decl. ¶ 82. However, Japanese automakers could have delayed not for reasons of reliability, but for economic reasons. That businessmen would not make a combination for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility. Only the latter fact would be relevant. Orthopedic Equipment Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983). Unexpected Results Patent Owner argues that by combining a CMOS camera with an automotive vision system, the inventor achieved the unexpected commercial success. Appeal Br. 104; see also Lynam Decl. ¶ 90. However, evidence of unexpected results must be evidence that the combination yields unexpectedly improved properties or properties not present in the prior art. In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1989). Accordingly, evidence of commercial success is not evidence of unexpected results. Copying by Others Patent owner contends that commercial products on the road today are substantial replicas of products made in accordance with the present invention. Appeal Br. 105-106; see also Lynam Decl. ¶¶ 81 and 88. However, Patent Owner has not provided sufficient evidence of copying that Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 12 is not based on conjecture, i.e., independent development or without knowledge of the ‘447 Patent. Licensing Patent Owner argues that a major OEM requested and was granted a license to the ‘447 Patent, but no specific evidence of such is presented. Appeal Br. 111; see also Lynam Decl. ¶ 89. Thus, we do not find Patent Owner’s argument to be persuasive. It follows that Patent Owner has not shown that the Examiner erred in concluding that it would have been obvious to modify the system of JP ‘700 and JP ‘889 to use the CMOS camera taught by Wang instead of the CCD camera taught by JP ‘700 and JP ‘889. As such, and for all of the reasons stated supra we sustain the Examiner’s rejection of claims 45 and 107. CONCLUSION The Examiner did not err in finding that it would have been obvious to modify the system of JP ‘700 and JP ‘889 to use the CMOS camera taught by Wang instead of the CCD camera taught by JP ‘700 and JP ‘889. SUMMARY We affirm the Examiner’s decision to reject claims 45 and 107 as obvious over the combination of JP ‘700, JP ‘889, and Wang. Appeal 2013-004164 Reexamination Control No. 90/011,478 Patent 6,222,447 13 AFFIRMED alw PATENT OWNER: FREDERICK S. BURKHART VAN DYKE GARDNER LINN & BURKHART LLP POST OFFICE BOX 888695 GRAND RAPIDS, MI 49588-8695 THIRD PARTY REQUESTER: SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, NW SUITE 800 WASHINGTON DC 20037