Kevin Gemp et al.

Patent Trials and Appeals BoardAug 26, 2019

14997300 - (D) (P.T.A.B. Aug. 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. 14/997,300 01/15/2016 Kevin GEMP 699592002100 2864 25227 7590 08/26/2019 MORRISON & FOERSTER LLP 1650 TYSONS BOULEVARD SUITE 400 MCLEAN, VA 22102 EXAMINER AMARA, MOHAMED K ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 08/26/2019 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): EOfficeVA@mofo.com PatentDocket@mofo.com pair_mofo@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEVIN GEMP, ARIEL SCHLAMM, CHRISTOPHER MILLER, SHANNON JORDAN, MARIN HALPER, and BRENT BARTLETT1 ____________ Appeal 2018-008354 Application 14/997,300 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, JEFFREY B. ROBERTSON, and DONNA M. PRAISS, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s rejection under 35 U.S.C. § 102(a)(1) of claims 1–36 as anticipated by Olsen (US 2006/0054782 A1, published March 16, 2006). We have jurisdiction under 35 U.S.C. § 6. We REVERSE. 1 Appellant is the Applicant, The MITRE Corporation, which is identified as the real party in interest (App. Br. 2). Appeal 2018-008354 Application 14/997,300 2 Appellant claims a system for generating reflectance values for a target comprising a plurality of electromagnetic radiation sources 102 for irradiating the target 105 with each radiation source configured to generate radiation of a different wavelength band, an imager 106 for generating a plurality of digital representations of the target comprising one or more programs having instructions for performing a series of functions including generating a first set of digital representations of the target, generating a second set of digital representations of the target while the electromagnetic radiation sources are deactivated, and determining a set of reflectance values wherein each reflectance value is determined based on the first and second sets of digital representations (independent claim 1, Figs. 1, 5A, 5B). Appellant also claims a corresponding method (independent claim 13) and device (remaining independent claim 25) having the limitations described above. In rejecting the independent claims, the Examiner finds that Olsen inherently discloses the reflectance limitation (Final Action 3) and expressly discloses the remaining limitations (id. at 6–8). Appellant argues the Examiner fails to provide a basis in fact and/or technical reasoning to reasonably support a finding that the claim feature “determining a set of reflectance values” inherently and necessarily flows from the teachings of Olsen (App. Br. 8–10, citing Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990)). In response, the Examiner relies on a dictionary definition, rather than Appellant’s definition, of reflectance (Ans. 5–6) and finds Olsen in paragraphs 75–78 and 1056 “inherently teaches/suggests the measurement of the object [r]eflectance, i.e. fraction of light reflected by an object, even though it does not expressly and explicitly use the term ‘[r]eflectance’” (id. Appeal 2018-008354 Application 14/997,300 3 at 6–7 (emphasis omitted)). As further support for this inherency finding, the Examiner refers to “other experimental aspects/steps necessarily considered, by one with ordinary skill in the optical/spectroscopy art, from Olsen’s technical teachings and suggestions” (id. at 7). We agree with Appellant that “there is no difference between the definition proffered by the Appellant and the dictionary definition provided by the Examiner” (Reply Br. 4) and that the paragraphs of Olsen cited by the Examiner relate to sensors for light with no inherent disclosure of determining reflectance values under either definition of reflectance (id. at 5). We also agree with Appellant that the Examiner’s reference to “other experimental aspects/steps necessarily considered[] by one with ordinary skills in the optical/spectroscopy art” fails to support the inherency finding under review (id.). As Appellant accurately states, “to support a finding of inherency, the Examiner must explain why the claim element necessarily flows from the teachings of the applied prior art” (id.). Under these circumstances, Appellant’s arguments show reversible error in the Examiner’s finding that Olsen inherently discloses the independent claim feature “determining a set of reflectance values.” For analogous reasons, we discern convincing merit in Appellant’s argument that, “since Olsen does not either explicitly or implicitly [i.e., inherently] disclose ‘determining a set of reflectance values,’ it would logically not teach or disclose ‘each reflectance value is determined . . .’ [as also required by the independent claims]” (App. Br. 19). Appellant further argues that the Examiner fails to support the finding that Olsen discloses the independent claim feature “each electromagnetic radiation source [is] configured to generate radiation of a different wavelength band” (id. at 16 (alteration in original)). Appeal 2018-008354 Application 14/997,300 4 The Examiner responds by citing paragraphs 48, 619, and 1056 of Olsen in support of this finding (Ans. 9). Appellant correctly explains that paragraphs 48 and 619 discuss light sources, but are silent as to each light source generating radiation of a different wavelength band as claimed (Reply Br. 7). Appellant likewise is correct that paragraph 1056 relates to image sensors, not radiation sources (id.). Based on the record before us in this appeal, the Examiner also reversibly errs in finding that Olsen discloses the claim feature under consideration. Finally, Appellant convincingly argues the Examiner errs in finding that Olsen discloses the independent claim feature “generating a second set of digital representations of the target . . . while the electromagnetic radiation sources are deactivated” (App. Br. 18). The Examiner responds to this argument by apparently taking the position that one with ordinary skill in this art would understand such a feature is needed based on Olsen’s disclosures concerning a pulsing light source and noise (Ans. 11–12). As persuasively explained by Appellant, this position is inadequate to support a finding that Olsen generates a second set of digital representations while the electromagnetic radiation sources are deactivated as claimed (Reply Br. 9). In summary, the Examiner’s finding of anticipation is erroneous for the multiple reasons discussed above. We do not sustain, therefore, the Examiner’s § 102(a)(1) rejection of claims 1–36 as anticipated by Olsen. We reverse the Examiner’s decision to reject these claims. Appeal 2018-008354 Application 14/997,300 5 REVERSED