Gentex Corporation

Patent Trials and Appeals BoardDec 1, 2021

2020005209 (P.T.A.B. Dec. 1, 2021)

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. 15/889,256 02/06/2018 Nigel T. Lock AUTO 02291US GEN010 P971A 7458 28469 7590 12/01/2021 GENTEX CORPORATION 600 NORTH CENTENNIAL STREET ZEELAND, MI 49464 EXAMINER COLEMAN, STEPHEN P ART UNIT PAPER NUMBER 2661 NOTIFICATION DATE DELIVERY MODE 12/01/2021 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): ptomail@priceheneveld.com uspto@gentex.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIGEL T. LOCK ________________ Appeal 2020-005209 Application 15/889,256 Technology Center 2600 ____________ Before ROBERT E. NAPPI, JENNIFER L. McKEOWN, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1‒3, 5‒10, and 12‒18.1 Claims 4, 11, and 19 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Gentex Corporation as the real party in interest. Appeal Br. 1. Appeal 2020-005209 Application 15/889,256 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to a door-mounted scanning apparatus that may include iris identification. Spec. ¶ 2. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A scanning apparatus disposed on a vehicle comprising: an external rearview assembly comprising: a housing; an electro-optic element comprising: a first substrate comprising a first surface and a second surface; a second substrate comprising a third surface and a fourth surface, wherein the first substrate and the second substrate define a cavity; an electro-optic medium contained in the cavity; and an image sensor disposed on the housing and directed outward, the image sensor configured to capture biometric data from an individual that is processed by a controller to unlock a door of said vehicle, the image sensor including a lens disposed on a sail panel of the housing. The Examiner’s Rejections Claims 1‒3, 5, 6, 10, 12, 15, and 16 stand rejected under 35 U.S.C. § 103 as unpatentable over Biemer (US 2015/0009010 A1; Jan. 8, 2015), Tonar (US 2010/0020380 A1; Jan. 28, 2010), and Assinder (US 6,572,250 B1; June 3, 2003). Final Act. 3‒10. Claims 7, 13, and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over Biemer, Tonar, Assinder, and Kerzabi (US 2016/0211397 A1; July 21, 2016). Final Act. 5–6, 10, 11. Appeal 2020-005209 Application 15/889,256 3 Claims 8, 14, and 18 stand rejected under 35 U.S.C. § 103 as unpatentable over Biemer, Tonar, Assinder, and Pena Casimiro (US 9,707,912 B1; July 18, 2017). Final Act. 6, 11. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over Biemer, Tonar, Assinder, and Bae (US 2017/0152698 A1; June 1, 2017). Final Act. 6‒7. ANALYSIS Appellant argues the Examiner errs in rejecting claim 1 because Assinder teaches away from the claimed invention. Appeal Br. 8‒10; Reply Br. 1‒5. In particular, Appellant argues Assinder teaches an approach light that projects light through a lens to illuminate an area near a vehicle. Appeal Br. 8. Appellant argues Assinder’s lens, therefore, disperses light. Id. at 9. Appellant argues claim 1 recites a “lens” of an “image sensor” where the image sensor is “configured to capture biometric data from an individual.” Id. at 9. Appellant argues the claimed lens must focus light onto the image sensor, not disperse light. Id. Appellant argues an ordinarily skilled artisan would not have looked to Assinder’s lens because of this teaching away. Id. Appellant has not persuaded us of Examiner error. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”) Appellant argues Assinder teaches away from the claimed invention because the alleged purpose of Assinder’s lens (dispersion of Appeal 2020-005209 Application 15/889,256 4 light) is different than the alleged purpose of the claimed lens (focus of light on an image sensor). See Appeal Br. 8‒9. We disagree. First, “[a] finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). That is, even if Assinder taught a different use of a lens, Assinder’s teachings do not criticize, discredit, or otherwise discourage using a lens in a different manner. Second, the Examiner relies on the disposition of Assinder’s lens, not on its functional qualities. Although the reference must be read as a whole, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Further, Appellant has not asserted that the proposed modification would have been beyond the capabilities of a person of ordinary skill in the art. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and find a person of ordinary skill in the art would overcome those difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Third, Appellant argues that Assinder’s lens is used for a different purpose than the claimed invention, but nothing in the claim precludes the claimed lens from being disposed in front of a light emitting element. Appeal 2020-005209 Application 15/889,256 5 Indeed, the Specification contemplates exactly such a scenario. See Spec. ¶ 20 (“It is generally contemplated that the light source 50 may be disposed proximate the image sensor 36 behind a lens 56. . . . Optionally, the light source 50 may include a light emitter disposed behind the electro-optic element 18 and another light emitter disposed in or on the housing 16 or a sail panel 54.”). Appellant also argues an ordinarily skilled artisan would not have combined Assinder with Biemer and Tonar because modifying Biemer with Assinder’s lens would render Biemer’s imaging system unsatisfactory for its intended purpose. Appeal Br. 10‒13; Reply Br. 9‒10. In particular, Appellant argues Assinder’s lens is for dispersing light out over an area for illumination, while Biemer’s lens is for focusing light on an image sensor. Appeal Br. 11‒12 (citing Assinder 8:24‒28, Biemer ¶¶ 4, 9). Appellant argues that incorporating Assinder’s lens would prevent Biemer’s image sensor from capturing and processing light as taught. Id. at 12. Appellant has not persuaded us of Examiner error. Appellant’s arguments regarding rendering Biemer unsatisfactory for its intended purpose rely on similar rationale to Appellant’s teaching away arguments and area unpersuasive for the same reasons. For these reasons, we sustain the obviousness rejection of claim 1. We also sustain the obviousness rejection of independent claims 10 and 15, which Appellant argues are patentable for the same reasons. See Appeal Br. 7‒13. We also sustain the rejections of dependent claims 2, 3, 5‒9, 12‒ 14, and 16‒18, which Appellant argues are patentable for the same reasons. See id. Appeal 2020-005209 Application 15/889,256 6 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1‒3, 5, 6, 10, 12, 15, 16 103 Biemer, Tonar, Assinder 1‒3, 5, 6, 10, 12, 15, 16 7, 13, 17 103 Biemer, Tonar, Assinder, Kerzabi 7, 13, 17 8, 14, 18 103 Biemer, Tonar, Assinder, Pena Casimiro 8, 14, 18 9 103 Biemer, Tonar, Assinder, Bae 9 Overall Outcome 1‒3, 5‒10, 12‒18 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED