General Electric Company

Patent Trials and Appeals Board

Mar 14, 2022

2021000804 (P.T.A.B. Mar. 14, 2022)

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. 15/671,502 08/08/2017 Eric John Ruggiero 21339-152437- US / 318754- 4466 75248 7590 03/14/2022 FITCH, EVEN, TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 2100 CHICAGO, IL 60603-3406 EXAMINER CHIO, TAT CHI ART UNIT PAPER NUMBER 2486 MAIL DATE DELIVERY MODE 03/14/2022 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 ERIC JOHN RUGGIERO ____________ Appeal 2021-000804 Application 15/671,502 Technology Center 2400 ____________ Before MICHAEL J. STRAUSS, JAMES B. ARPIN, and DAVID J. CUTITTA II, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a), the Examiner’s final rejection of claims 1-20, all of the pending claims. Final Act. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party-in-interest as General Electric Company. Appeal Br. 2. 2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed August 31, 2020) and Reply Brief (“Reply Br.,” filed November 12, 2020); the Final Office Action (“Final Act.,” mailed April 15, 2020) and the Examiner’s Answer (“Ans.,” mailed September 18, 2020); and the Specification (“Spec.,” filed August 8, 2017). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. Appeal 2021-000804 Application 15/671,502 2 STATEMENT OF THE CASE Appellant’s claimed borescopes and methods relate “to a lens element for a borescope.” Spec. ¶ 16. In particular, “[a] borescope for use within an unlit, closed conduit can include an elongated probe, an artificial light source illuminating the conduit, and a microlens array mounted to the probe. An imaging device can be in data communication with the microlens array.” Spec., Abstr. As noted above, claims 1-20 are pending. Claims 1, 13, and 17 are independent. Appeal Br. 24 (claim 1), 25 (claim 13), 26 (claim 17) (Claims App.). Claims 2-12 depend directly or indirectly from claim 1, claims 14- 16 depend directly or indirectly from claim 13, and claims 18-20 depend directly or indirectly from claim 17. Id. at 24-26. Claim 1, reproduced below with disputed limitations emphasized, is representative. 1. A borescope for producing a composite image within an unlit, closed conduit, the borescope comprising: an elongated probe having a multi-dimensional microlens array located at a first end of the probe used within the closed conduit, where the multi-dimensional microlens array includes at least a first lens located near a center of the first end and a second lens located near an edge of the first end; an artificial light source illuminating a space proximate the multi-dimensional microlens array within the closed conduit; an imaging device in data communication with the multi- dimensional microlens array converting light from the multi- dimensional microlens array into the composite image; and a memory storing the composite image. Appeal Br. 24 (Claims App.) (emphasis added). Each of claims 13 and 17 recites limitations corresponding to the disputed limitations of claim 1. Id. Appeal 2021-000804 Application 15/671,502 3 at 25, 26; see Final Act. 8, 9 (rejecting claims 13 and 17 for substantially the same reasons as claim 1). REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name3 Reference Published Filed Duparre US 2010/0277627 A1 Nov. 4, 2010 Sept. 24, 2008 Bendall US 2016/0196643 A1 July 7, 2016 Feb. 8, 2016 Baleine US 2016/0212335 A1 July 21, 2016 Jan. 21, 2015 The Examiner rejects: 1. claims 1-5, 8-14, and 17-20 under 35 U.S.C. § 103 as obvious over the combined teachings of Baleine and Duparre (Final Act. 5-10); and 2. claims 6, 7, 15, and 16 under 35 U.S.C. § 103 as obvious over the combined teachings of Baleine, Duparre, and Bendall (id. at 10-11). We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appellant and the Examiner focus their contentions and findings, respectively, on claim 1, so we do as well. See Appeal Br. 15-16, 22-23; Ans. 11, 32. Because we determine that reversal of the rejection of independent claim 1, as well as of independent claims 13 and 17, is dispositive; except for our ultimate decision, we do not discuss the merits of the rejections of claims 2-12, 14-16, and 18-20 further herein. We address the rejections below. 3 All reference citations are to the first named inventor only. Appeal 2021-000804 Application 15/671,502 4 ANALYSIS 1. Obviousness Over Baleine and Duparre As noted above, the Examiner rejects independent claim 1 as obvious over the combined teachings of Baleine and Duparre. Final Act. 5-6. In particular, the Examiner finds that Baleine teaches or suggests a majority of the limitations recited in claim 1. Id. at 5 (citing Baleine ¶¶ 25, 26, 28-34, Figs. 2, 4). Nevertheless, the Examiner finds, Baleine does not explicitly teach a multi-dimensional microlens array located at a first end of the probe used within the closed conduit where the multidimensional microlens array includes at least a first lens located near a center of the first end and a second lens located near an edge of the first end. Final Act. 5 (emphasis added). The Examiner finds, however, that Duparre teaches or suggests these missing limitations. Id. (citing Duparre ¶¶ 51-57, 61-73). Further, the Examiner finds a person of ordinary skill in the relevant art would have had reason to combine the teachings of Baleine and Duparre to achieve the borescopes of claim 1. Final Act. 5-6. In particular, the Examiner finds: it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the known technique of arranging microlenses such that central region of the sensors [is] completely surrounded by edge region of the image sensors because such incorporation would compensate aberrations. Id. (emphasis added; citing Duparre ¶¶ 19, 22); see Ans. 16 (“A motivation to combine Baleine and Duparre was because the combination would Appeal 2021-000804 Application 15/671,502 5 provide the benefit of compensating aberrations. Final Act. 5-6; see also Duparre [0019] and [0022].” (emphasis added)). Among other things, Appellant contends the Examiner errs in finding that a person of ordinary skill in the relevant art would have had reason to combine the teachings of Baleine and Duparre to achieve the borescopes of claim 1. Appeal Br. 7-8. Or, in other words, Appellant contends the Examiner fails to show “why” a person of ordinary skill in the relevant art would have combined the teachings of Baleine and Duparre to achieve the borescopes of claim 1. In particular, Appellant contends: The Baleine apparatus already includes a chromatic/aberration correction lens array (stack) 60 with multiple corrective lenses 62. “While four corrective lenses are shown in the lens stack 62 in other inspection applications no corrective lenses may be needed and in other applications one or more lenses may be needed” (Baleine, para. [0031]). Nothing in Baleine suggests a need for improved or additional aberration correction - in contrast, none may be needed at all. And even assuming, arguendo, that improved aberration compensation is needed in Baleine, the Examiner provides no further details toward what portion of Baleine would be obvious to modify. As stated above, replacement of just the lens stack 60 with the image sensor of Duparre (for improved aberration compensation) would scatter the light paths in Baleine and render it unsuitable for use. And surely there is no suggestion for a person of ordinary skill to replace the entire lens train of Baleine with the image sensor of Duparre, if the motivation is for improved aberration compensation. Reply Br. 3 (emphases added). Thus, Appellant contends the Examiner fails to show why a person of ordinary skill in the relevant art would have combined the teachings of Baleine and Duparre to correct aberrations when Baleine already was configured to correct aberrations. We agree with Appellant. Appeal 2021-000804 Application 15/671,502 6 The Examiner suggests one reason - aberration correction - for two modifications of Baleine: first, to replace Baleine’s stacked lens array with Duparre’s multi-dimensional microlens array, and, second, to include in the multi-dimensional microlens array “at least a first lens located near a center of the first end and a second lens located near an edge of the first end.” Final Act. 5; Ans. 12. The Examiner identifies a problem, namely, correcting aberrations in Baleine’s teachings, that allegedly is solved by Duparre’s teachings, thereby providing a reason for having combined the references’ teachings to arrive at the claimed borescopes. However, the identified problem already is solved by Baleine (see Baleine ¶ 31), so we are persuaded the Examiner shows inadequate reason why a person of ordinary skill in the relevant art would have combined Duparre’s teachings with those of Baleine. See, e.g., Ex parte Allen, Appeal No. 2018-008208, at 3-6 (PTAB July 1, 2020) (nonprecedential). Duparre discloses that “a first lens located near a center of the first end and a second lens located near an edge of the first end” corrects aberrations in the multi-dimensional microlens array. Duparre ¶¶ 19 (“It is an advantageous arrangement if the edge region of the image sensor surrounds the central region of the image sensor completely. . . . As a result, the compensation for the aberration, advantageously the geometric distortion, from the central region of the image sensor in all directions of the image sensor plane, can be [affected].”), 22 (“which aberrations are otherwise corrected within a preceding imaging lens system if the latter have variable geometric properties over the image field of the lens system”). This, however, does not explain why a person of ordinary skill in the relevant art would have had reason to replace Baleine’s stacked lens array with Duparre’s multi-dimensional microlens array in the first place, as the Appeal 2021-000804 Application 15/671,502 7 multi-dimensional microlens array creates a need to correct aberrations where the need did not previously exist. Thus, we are persuaded the Examiner fails to show an adequate reason to combine the teachings of Baleine and Duparre to achieve the borescopes of claim 1. Because we are persuaded these deficiencies are dispositive, we do not reach Appellant’s other challenges to the rejection of claim 1, 13, or 17. See, e.g., Reply Br. 4 (challenging the rejection of claim 13 separately). Consequently, we are persuaded the Examiner errs in rejecting independent claim 1, as well as independent claims 13 and 17, as obvious over the combined teachings of Baleine and Duparre; and we do not sustain the rejection of those claims. For the same reason, we do not sustain the rejection of claims 2-5, 8-12, 14, and 18-20, which are not argued separately from their base claims, claims 1, 13, and 17. 2. Obviousness Over Baleine, Duparre, and Bendall As noted above, the Examiner rejects claims 6, 7, 15, and 16 under 35 U.S.C. § 103 as obvious over the combined teachings of Baleine, Duparre, and Bendall. Final Act. 10-11. Each of claims 6, 7, 15, and 16 depends directly or indirectly from independent claim 1 or 13. Appeal Br. 24-26 (Claims App.). Because we are persuaded the Examiner errs with respect to the obviousness rejection of claim 1, as well as of claim 13, and because the Examiner does not rely on Bendall to teach or suggest limitations or rationale missing from combination of Baleine and Duparre; we also are persuaded the Examiner errs with respect to the obviousness rejection of claims 6, 7, 15, and 16. For this reason, we do not sustain the rejection of claims 6, 7, 15, and 16. Appeal 2021-000804 Application 15/671,502 8 DECISION 1. The Examiner errs in rejecting: a. claims 1-5, 8-14, and 17-20 under 35 U.S.C. § 103 as obvious over the combined teachings of Baleine and Duparre; and b. claims 6, 7, 15, and 16 under 35 U.S.C. § 103 as obvious over the combined teachings of Baleine, Duparre, and Bendall. 2. Thus, on this record, claims 1-20 are not unpatentable. CONCLUSION For the above reasons, we reverse the Examiner’s decision rejecting claims 1-20. In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-5, 8-14, 17-20 103 Baleine, Duparre 1-5, 8-14, 17-20 6, 7, 15, 16 103 Baleine, Duparre, Bendall 6, 7, 15, 16 Overall Outcome 1-20 REVERSED