Galel, Daniel M.

Patent Trials and Appeals Board

Sep 26, 2019

14052389 - (D) (P.T.A.B. Sep. 26, 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.
14/052,389 10/11/2013 Daniel M. Galel 340204-US-NP 1024
39254 7590 09/30/2019
Barta, Jones & Foley, P.C.
(Patent Group - Microsoft Corporation)
2805 Dallas Parkway
Suite 222
Plano, TX 75093
EXAMINER
PHAN, MINH Q
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
docket@bjfip.com
usdocket@microsoft.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL M. GALEL
____________________

Appeal 2019-000713
Application 14/052,389
Technology Center 2800
____________________

Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
December 14, 2017 decision rejecting claims 1, 3–7, 9, 11, 12, 14, 16, 17,
and 19–27 (“Non-Final Act.”). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Microsoft Technology Licensing,
LLC, as the real party in interest (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a lens barrel assembly which includes
one or more lens elements and a lens barrel configured to retain the lens
elements (Abstract). The lens barrel includes a connection portion
configured to provide a physical coupling to a camera module and an
interface geometry having a complementary shape of an aperture of an
external enclosure of a mobile computing device sufficient to align the lens
barrel and the one or more lens elements in relation to the external housing
(id.). Details are set forth in independent claims 1, 9, and 14, which are
reproduced below from the Claims Appendix to the Appeal Brief:
1. An assembly comprising:
one or more lens elements; and
a lens barrel configured to retain the one or more lens
elements, the lens barrel including:
a connection portion configured to provide a
physical coupling to a camera module; and
an interface geometry comprising a protrusion
extending out of an end surface of the lens barrel
opposite the camera module and configured to
extend into an aperture of an enclosure of a
housing of a computing device, the protrusion
having a complementary shape of the aperture of
the enclosure effective to align and secure the lens
barrel and the one or more lens elements in
relation to the enclosure of the housing of the
computing device.
9. A camera system comprising:
a camera module including a housing and one or more
sensors configured to capture images; and
a lens barrel assembly attached to the housing of the
camera module having an interface geometry comprising a
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protrusion extending out of an end surface of the lens barrel
opposite the camera module and configured to extend into an
aperture of an enclosure of the housing, the protrusion effective
to align and secure the lens barrel assembly and the camera
module in relation to the enclosure of the housing.
14. An apparatus comprising:
a housing comprising an external enclosure having an
aperture formed therein;
a camera system disposed within the external enclosure,
the camera system including a camera module having one or
more sensors configured to capture images and a lens barrel
assembly having an interface geometry comprising a protrusion
extending out of an end surface of the lens barrel assembly
opposite the camera module and configured to extend into the
aperture of the enclosure, the protrusion configured to align a
field of view of the one or more sensors with the aperture and
secure the lens barrel assembly to the aperture.

REJECTIONS
1. Claims 9, 11, 12, 14, 16, 17, 19, 20, 22, 23, 25, and 26 are
rejected under 35 U.S.C. § 102(a)(1) as anticipated by Han.2
2. Claims 1, 3, 4, 9, 11, 12, 14, 16, 17, and 19–23 are rejected
under 35 U.S.C. § 102(a)(1) as anticipated by Ouyang.3
3. Claims 1, 3–5, 21, 24, and 27 are rejected under 35 U.S.C. § 103
as unpatentable over Han in view of Webster.4

2 Han, WO 2012/060542 A1, published May 10, 2012.
3 Ouyang, US 2010/0157141 A1, published June 24, 2010.
4 Webster, US 2007/0057150 A1, published March 15, 2007.
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4. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Ouyang in view of Xu.5
5. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Han in view of Tecu.6

DISCUSSION
Rejection 1–Claims 9, 11, 12, 14, 16, 17, 19, 20, 22, 23, 25, and 26 as
anticipated by Han. “A prior art reference anticipates a patent claim under
35 U.S.C. § 102(b) if it discloses every claim limitation.” In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)).
In this instance, with regard to claim 9, Appellant contends that Han does
not disclose an “interface geometry comprising a protrusion extending out of
an end surface of the lens barrel opposite the camera module and configured
to extend into an aperture of an enclosure of the housing.” (Appeal Br. 15).
The Examiner finds that this limitation is met by Han’s item 210 in
combination with item 220, as shown in Han’s FIG. 5:

Han’s FIG. 5 is a schematic exploded perspective view illustrating parts of a
camera according to Han’s invention.

5 Xu, US 2010/0134678 A1, published June 3, 2010.
6 Tecu, US 2012/0075520 A1, published March 29, 2012.
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In particular, the Examiner finds that Han’s lens unit 220 is a lens
barrel because it is configured to retain one or more lens elements and front
cover 210 “is configured as an enclosure of a housing for the entire digital
camera system,” not simply a cover for the lens unit 220 (Ans. 5, citing Han
¶¶ 108–110). However, Han explicitly describes cover 210 as “a front
cover” (Han, ¶¶ 108, 110, 112). Thus, the evidence of record does not
support the Examiner’s finding that cover 210 is configured as an enclosure
of a housing for the entire digital camera system.” Moreover, as explained
by Appellant (Appeal Br. 17), claim 9 requires that the protrusion extends
“into an aperture of an enclosure of the housing.” In Han, the protrusion
relied upon by the Examiner (lens unit 220) protrudes into the lens cover
210, which is not reasonably understood to be an enclosure of a housing.
Accordingly, we determine that Appellant has shown reversible error
in the Examiner’s finding that claim 9 is anticipated by Han and reverse that
rejection. Similarly, the anticipation rejections of claims 11, 12, 22, and 25,
each of which depend from claim 9, are reversed for the same reasons.
Claim 14 also recites “a protrusion extending out of an end surface of
the lens barrel assembly opposite the camera module and configured to
extend into the aperture of the enclosure…” The anticipation rejection is
deficient for essentially the same reasons as was the anticipation rejection of
claim 9, namely that Han’s system does not disclose an aperture of an
enclosure. Accordingly, we reverse the anticipation rejection of claim 14, as
well as dependent claims 16, 17, 19, 20, 23, and 26.
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Rejection 2–Claims 1, 3, 4, 9, 11, 12, 14, 16, 17, and 19–23 as
anticipated by Ouyang. With respect to claim 1, Appellant argues that this
rejection should be reversed because Ouyang does not disclose “an interface
geometry comprising a protrusion extending out of an end surface of the lens
opposite the camera module and configured to extend into an aperture of an
enclosure of a housing of a computing device” (Appeal Br. 22). The
Examiner finds that Ouyang discloses:
an interface geometry (item 40) comprising a protrusion (item 44)
extending out of an end surface of the lens barrel opposite the camera
module and configured to extend into an aperture (item 14) of an
enclosure of a computing device, the protrusion having a complementary
shape of the aperture of the enclosure, effective to align and secure the
lens barrel and the one or more lens elements in relation to the enclosure
of the housing of the computing device (para. 18)…
(Non-Final Act. 6–7). The Examiner refers to the structure shown in
Ouyang’s FIG. 2:

Ouyang’s FIG. 2 shows FIG. 2 is an exploded view of an electronic
device as disclosed therein.
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The element of Ouyang’s device which corresponds to the claimed
lens barrel is lens barrel 54. Thus, according to Appellant, protrusion 44
cannot be said to extend out of an end surface of lens barrel 54 (Appeal Br.
24). However, the Examiner finds that when Ouyang’s device is assembled
and not shown in an exploded view, the lens barrel 54 is secured to the base
seat 40, forming an integral piece comprising protrusion 44 extending out of
an end surface of the lens barrel opposite the camera module (Ans. 6–7,
citing Ouyang, ¶ 17). In response, Appellant argues that the claim language
– “a protrusion extending out of an end surface of the lens barrel” – limits
the invention to a protrusion extending out of the lens barrel, and would not
include a protrusion that is attached, mounted, or otherwise not extending
out of the lens barrel (Reply Br. 97). But, Appellant has not explained why
the claim language requires an integral connection between the protrusion
and the lens barrel. Nor does the Specification explicitly say that the two
items need be integral with each other and the Figures show two distinct
items, which suggests that they are not integral (see, e.g. items 112 and 114
in FIG. 3).
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id. In this instance, nothing in the

7 Appellant did not number the pages of its Reply Brief. The page numbers
cited in this Decision are sequential, with the first page being Page 1.
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Specification or elsewhere requires or even suggests that the protrusion and
the lens barrel be integral.
Accordingly, we determine that Appellant has not demonstrated
reversible error in the anticipation rejection of claim 1, which we therefore
sustain. Appellant groups claims 3, 4, and 21 with claim 1 and, therefore,
we also sustain the rejection of those claims.8
Appellant makes the same arguments with respect to the anticipation
rejection of independent claims 9 and 14 over Ouyang, as well as the claims
which depend from them. These arguments are similarly unpersuasive, and
we sustain those rejections.
Rejection 3–Claims 1, 3–5, 21, 24, and 27 as unpatentable over Han
in view of Webster. This rejection relies on the same findings as supported
the anticipation rejection over Han (Non-Final Act. 10–11). Appellant
makes the same arguments as were proffered in opposition to the
anticipation rejection over Han. These arguments are persuasive for the
reasons outlined above in connection with Rejection 1. The Examiner’s
reliance on Webster does not cure this deficiency and we therefore reverse
this rejection.

8 Appellant states that claims 2, 4, and 21 are “also allowable for their own
recited features which, in combination with those recited in claim 1, are not
disclosed by Ouyang” (Appeal Br. 25). However, Appellant provides not
explanation of the differences between those claims and the disclosure of
Ouyang. Such a naked assertion of patentability is insufficient to show
reversible error in the rejection.
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CONCLUSION

In summary:

Claims
Rejected
Basis Affirmed Reversed
9, 11, 12, 14, 16,
17, 19, 20, 22, 23,
25, and 26
§ 102(a)(1)
Han
9, 11, 12, 14,
16, 17, 19,
20, 22, 23,
25, and 26
1, 3, 4, 9, 11, 12,
14, 16, 17, and
19–23
§ 102(a)(1)
Ouyang
1, 3, 4, 9,
11, 12, 14,
16, 17, and
19–23

1, 3–5, 21, 24, and
27
§ 103
Han and Webster
1, 3–5, 21,
24, and 27
6 § 103
Ouyang and Xu
6
7 § 103
Han and Tecu
7
Overall Outcome 1, 3, 4, 6, 7,
9, 11, 12,
14, 16, 17,
and 19–23
5, 24, 25, 26,
and 27

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART