Joe Dordoni et al.

Patent Trials and Appeals Board

Oct 1, 2021

2020001183 (P.T.A.B. Oct. 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.
15/130,523 04/15/2016 Joe Dordoni 13174-18-US 2822
53609 7590 10/01/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
SUH, JOSEPH JINWOO
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE DORDONI and RICHARD D. DIEHR
Appeal 2020-001183
Application 15/130,523
Technology Center 2400
BEFORE JASON V. MORGAN, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 6–9, 11–13, 16–21, and 23–30,
which constitute all the claims that are on appeal. Claims 3, 5, 10, 14, 15, 22,
31–34, 37, 38, 40, 48, 49, and 51 have been cancelled. Claims 35, 36, 39,
41–47, and 50 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Emhart Glass S.A.
Appeal Br. 2.
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We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to a “[c]ontainer inspection system with
individual light control.” Spec., Title. Claims 1 and 18, reproduced below,
are illustrative of the claimed subject matter:
1. A system for inspecting a glass container
comprising:
a panel configured to illuminate the glass container, the
panel including a first plurality of light sources directed parallel
to one another;
a first camera configured to image the illuminated glass
container;
a controller configured to adjust the amount of power
supplied to each of the light sources individually; and
a processor configured to evaluate the image of the
illuminated glass container for indications of defects in the
container.

18. A method of inspecting a glass container using a
first panel including a first plurality of light sources, the method
comprising:
illuminating a first predetermined set of the first plurality
of light sources to illuminate the glass container with a first
predetermined illumination pattern;
capturing a first image of the illuminated glass container;
illuminating a second predetermined set of the first
plurality of light sources to illuminate the glass container with a
second predetermined illumination pattern, the second
predetermined illumination pattern being different from the first
predetermined illumination pattern;
capturing a second image of the illuminated glass
container; and
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evaluating the first and second images to determine
whether the glass container includes a defect.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Furnas US 6,618,495 B1 Sept. 9, 2003
Sones US 2004/0150815 A1 Aug. 5, 2004
Siekmeyer US 2005/0151979 A1 July 14, 2005
Piorek US 2008/0192897 A1 Aug. 14, 2008
Pance US 2010/0300856 A1 Dec. 2, 2010
Dilks US 2013/0306729 A1 Nov. 21, 2013
Numazu US 2014/0119634 A1 May 1, 2014
Dalstra US 2014/0174127 A1 June 26, 2014
Miura US 2015/0324566 A1 Nov. 12, 2015

REJECTIONS
Claim 12 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement. Final Act. 2–3.
Claim 12 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement. Final Act. 3.
Claim 23 is rejected under 35 U.S.C. § 112(b) as indefinite. Final
Act. 4.
Claims 1 and 8 are rejected under 35 U.S.C. § 103 as obvious over
Numazu and Sones. Final Act. 5–6.
Claim 2 is rejected under 35 U.S.C. § 103 as obvious over Numazu,
Sones, and Piorek. Final Act. 7.
Claims 4, 6, 7, and 16 are rejected under 35 U.S.C. § 103 as obvious
over Numazu, Sones, and Pance. Final Act. 7–10.
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Claims 9 and 13 are rejected under 35 U.S.C. § 103 as obvious over
Numazu, Sones, and Dilks. Final Act. 11–12.
Claim 11 is rejected under 35 U.S.C. § 103 as obvious over Numazu,
Sones, Siekmeyer, and Pance. Final Act. 12–14.
Claim 17 is rejected under 35 U.S.C. § 103 as obvious over Numazu,
Sones, and Miura. Final Act. 14–15.
Claims 18–20, 23, 28, and 29 are rejected under 35 U.S.C. § 103 as
obvious over Numazu, Pance, and Furnas. Final Act. 15.
Claims 21 and 30 are rejected under 35 U.S.C. § 103 as obvious over
Numazu, Pance, Furnas, and Dilks. Final Act. 15.
Claims 24–27 are rejected under 35 U.S.C. § 103 as obvious over
Numazu, Pance, Furnas, and Dalstra. Final Act. 16.
OPINION
The Written Description Rejection of Claim 12
Claim 12 depends from claim 1 and further recites
wherein the image is captured when the glass container is off of
a central axis of the first camera and the controller is configured
to adjust the power of the first plurality of light sources as if the
image was captured when the glass container was on the central
axis of the first camera.
The Examiner finds claim 12 fails to comply with the written
description requirement. Final Act. 2–3. In particular, the Examiner
determines “the specification is silent on how the limitation is implemented.
As the specification is silent on how the limitation can be implemented, it is
not clear whether inventor(s) had possession of the claimed invention,
rendering the application not meet the written description requirement.”
Final Act. 3.
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Appellant presents the following principal arguments:
First, Appellant argues “[t]he claim itself supports how the
aforementioned limitations are implemented.” Appeal Br. 6. Second,
Appellant argues that the Specification provides support. Appeal Br. 7
(citing Spec. ¶¶ 99, 119, 138). Appellant further argues
The passages cited above make clear that the power of the
light sources can be adjusted by the processor such that the image
taken with the container off of the central axis would be the same
as if the image was taken with the container on the central axis.
Again, this is due to the fact that depending on the position of the
light sources relative to the central axis, i.e.[,] the inspection axis,
of the camera, the brightness, with all other things being equal,
will be less.
Appeal Br. 7.
In response, the Examiner explains “[t]he current claim language is
not limited to taking image with the same brightness. Instead, it is broad to
include taking an off-axis image that is exactly same to an on-axis image
including the shape of an object, and Applicant fails to include a written
description corresponding to the broad claim language.” Ans. 30.
In reply, Appellant argues “the claim calls for an adjustment of the
plurality of light source so that the off-axis image looks like an on-axis
image. However, that is not a requirement[] that the images be exactly the
same.” Reply Br. 6.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
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the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
Appellant’s Specification discloses
Light sources located at different locations on each panel
are different distances from the camera and emit light at different
angles relative to the axis of inspection of the camera. Therefore,
by individually adjusting the intensity of each of the light
sources, the camera can capture a uniform image without
adjusting LED placement or configuration relative to the camera
or including lenses to direct light from each light source toward
the viewing axis of the camera (e.g., if a light source is viewed
off of its central axis from a single point, for example, the axis of
observation of the camera, the light intensity drops as the angle
is increased). Thus, by individually adjusting the intensity of
light emission from each light source, a uniform image can be
perceived from any arbitrary viewing angle.
Spec. ¶ 99 (emphasis added); see also Spec. ¶¶ 119 (“By individually
controlling the power provided to each LED, flat field correction may be
achieved, e.g., each of the LEDs may be illuminated at a brightness such that
all of the LEDs appear as illuminating at a uniform brightness to the
camera.”), 138 (“[I]t is possible to have the controller configured to power
the plurality of light sources to illuminate the glass container for the image
being taken with the container off-axis as if the image was captured while
the glass container was located centered on the axis of inspection of the
camera.”).
Thus, Appellant’s Specification describes, when the glass container is
off of a central axis of the camera, adjusting light sources to illuminate the
glass container as if the glass container was located centered on the camera
central axis. Spec. ¶¶ 99, 119, 138.
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We interpret claim 12 in a manner consistent with this description in
the Specification. In light of the Specification, we interpret claim 12 as
requiring adjusting the power of the first plurality of light sources to
illuminate the glass container as if the image was captured when the glass
container was on the central axis of the first camera.
We do not agree with the Examiner’s interpretation of claim 12,
which requires adjusting the power of the first plurality of light sources to
take an off-axis image that is exactly same to an on-axis image. We
determine the Examiner’s interpretation is inconsistent with the
Specification.
Given our interpretation of claim 12 and the various disclosures in the
Specification, we find claim 12 has sufficient written description support as
the disclosures in Appellant’s Specification reasonably convey to those
skilled in the art that the inventors had possession of the claimed subject
matter as recited in claim 12 as of the filing date.
We, therefore, do not sustain the Examiner’s written description
rejection of claim 12.

The Enablement Rejection of Claim 12
The Examiner finds claim 12 fails to comply with the enablement
requirement. Final Act. 3. In particular, the Examiner determines “the
specification is silent on how the limitation is implemented. As the
specification is silent on how the limitation can be implemented, a person
having ordinary skill in the art cannot implement the limitation without
undue experimentation, rendering the claim failing to comply with the
enablement requirement.” Final Act. 3.
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Appellant presents the following principal arguments:
First, Appellant argues “the claim itself supports how [the limitation]
is performed.” Appeal Br. 8. Second, Appellant argues that the Specification
provides enablement. Appeal Br. 8–10 (citing Spec. ¶¶ 99, 119, 138).
Appellant further argues
The previous passages make clear that the power of the
light sources can be adjusted such that the image taken with the
container off of the central axis would be the same as if the image
was taken with the container on the central axis. Again, this is
due to the fact that depending on the position of the light sources
relative to the central axis, i.e.[,] the inspection axis, of the
camera, the brightness, with all other things being equal, will be
less.
Appeal Br. 9–10.
In response, the Examiner explains “[t]he current claim language is
not limited to taking image with the same brightness. Instead, it is broad to
include taking an off-axis image that is exactly same to an on-axis image
including the shape of an object, and Applicant fails to include a written
description that enables a person having ordinary skill in the art to make a
device corresponding to the broad claim language.” Ans. 33.
In reply, Appellant argues “[a]s in the written description rejection,
the enablement rejection is not supported by the Examiner’s incorrect
assertion that the application must explain a disappearing sidewall that is not
an issue with the claimed invention.” Reply Br. 7.
As discussed above, in light of the Specification, we interpret claim
12 as requiring adjusting the power of the first plurality of light sources to
illuminate the glass container as if the image was captured when the glass
container was on the central axis of the first camera.
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We do not agree with the Examiner’s interpretation of claim 12,
which requires adjusting the power of the first plurality of light sources to
take an off-axis image that is exactly same to an on-axis image. We
determine the Examiner’s interpretation is inconsistent with the
Specification.
Given our interpretation of claim 12 and the various disclosures in the
Specification, we find Appellants’ Specification reasonably describes how to
make and use the invention as recited in claim 12 to those skilled in the art.
We, therefore, do not sustain the Examiner’s enablement rejection of
claim 12.

The Indefiniteness Rejection of Claim 23
Claim 23 depends from claim 18 and further recites “wherein one of
the first and second predetermined illumination patterns is a uniform
background for inspecting opaque defects while the other one of the second
and first predetermined patterns provides a high contrast for highlighting the
edges of a container for dimensional inspection.” The Examiner concludes
claim 23 is indefinite. Final Act. 4. In particular, the Examiner determines
[t]he term “high” in claim 23 is a relative term which renders the
claim indefinite. The term “high” is not defined by the claim, the
specification does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention.
Final Act. 4; see also Ans. 33–36.
Appellant presents the following principal argument:
“‘[H]igh contrast’ is defined as ‘that area where the degree of
difference between black and white approaches the maximum.’” Appeal
Br. 11; see also Reply Br. 8–9.
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We do not see any error in the Examiner’s conclusion of
indefiniteness.
We agree with the Examiner’s determination that the term “high
contrast” is unclear. Appellant’s arguments are unavailing because the claim
does not recite high contrast occurs when the difference between black and
white approaches the maximum, and we decline to read such limitations into
the claim. Further, the claim does not recite the further actions of edge
detection and dimensional inspection, which would implicitly define the
level of contrast as sufficient for such actions.
We, therefore, sustain the Examiner’s indefiniteness rejection of
claim 23.

The Obviousness Rejection of Claims 1 and 8 over Numazu and Sones
The Examiner finds Numazu and Sones teach all limitations of claim
1. Final Act. 5–6; see also Ans. 36–41. The Examiner finds Numazu teaches
most limitations of claim 1, but finds “Numazu does not explicitly disclose a
panel configured to illuminate the glass container, the panel including a first
plurality of light sources directed parallel to one another.” Final Act. 5. The
Examiner finds Sones’s disclosure of upwardly pointing LEDs 26 mounted
at a bottom portion of the housing 34 teaches “a panel configured to
illuminate the glass container, the panel including a first plurality of light
sources directed parallel to one another” (claim 1). Final Act. 5 (citing Sones
¶¶ 20–21). The Examiner reasons
Therefore, given the teachings as a whole, it would have
been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention, having the
references of Numazu and Sones before him/her to modify the
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glass bottle inspection method and apparatus of Numazu with the
teaching of flaw detection in objects and surfaces of Sones in
order to provide rapid inspection of surfaces, particularly sealing
surfaces and obtain the simultaneous acquisition of
superimposed color dark-field and light-field images with a
single camera for quick and better defect detection as taught by
Sones.
Final Act. 5–6 (citing Sones ¶ 1).
Appellant contends there is no reason to combine the teachings of the
references. Appeal Br. 12–18; see also Reply Br. 9–11. In support of this
contention, Appellant presents the following principal arguments:
Regarding the teachings of Numazu, Appellant argues
Numazu directs two separate focused lights obliquely relative to
the central axis of the camera and at opposed directions. Thus,
LED1 will catch checks that reflect light in one direction and
LED2 will catch checks that reflect light in the opposite
direction. This is because the light generated by these two light
sources is directed in opposite directions relative to the container.
To pass the crack by the camera of Numazu, Numazu requires
rotating the bottle.
Appeal Br. 14 (citing Numazu ¶ 45). “[T]he lighting of the system of
Numazu is highly important to the operation of the test itself and the
particular invention of Numazu.” Appeal Br. 14.
Regarding combining the teachings of Sones with the teachings of
Numazu, Appellant argues
the geometry of the “light field dome illuminator 20” [in Sones]
provides the exact opposite type of light as compared to the light
used for looking for checks within the sidewall of the bottle as in
Numazu. This structure creates a diffused, strobed uniform light
that illuminates the entire surface of the bottle from all directions.
Appeal Br. 15 (citing Sones ¶ 21). “This is because light-field illumination is
used for inspecting the surface, not for internal checks.” Appeal Br. 15
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(citing Sones ¶ 3). “Table 1 of Sones [(paragraph 30)] shows that ‘light-
field’ illumination is poor for check detection while ‘dark-field’ illumination
is good. However, the Office Action is not relying on the dark field
illumination for rectification of the problems of Numazu.” Appeal Br. 16.
“As such, Sones itself teaches that the light source relied upon in the Office
Action for rectifying the deficiencies of Numazu would not be used for
check detection.” Appeal Br. 16 (citing Sones ¶ 31).
In summary, Appellant argues “there is no logical reason to modify
the system of Numazu using the teachings of Sones other than to justify the
rejection of Appellants’ claims.” Appeal Br. 16.
Appellant persuades us that the Examiner erred. For reasons explained
below, we determine the Examiner’s reasoning to combine the teachings of
the references lacks a rational underpinning.
Numazu discloses “[t]he illuminating units LED1 and LED2 are
controlled by the controller 4 to emit alternate pulsed lights, and the camera
CAM1 is controlled by the controller 4 to capture images of the bottle-
mouth portion 2 in synchronism with the pulsed lights from the illuminating
units LED1 and LED2.” Numazu ¶ 46.
In making the rejection, the Examiner relies on this disclosure in
Numazu to teach “a controller configured to adjust the amount of power
supplied to each of the light sources individually” (claim 1). Final Act. 5
(citing Numazu ¶ 46).
In contrast to the focused light provided by the illuminating units in
Numazu, Sones provides diffused, uniform light with an array of upwardly
pointing LEDs 26 and a light-field hemispherical bowl illuminator 20. Sones
¶ 21.
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First, we agree with Appellant’s arguments that there would have
been no reason to modify Numazu’s system, which uses focused light from
illuminating units LED1 and LED2, to instead use the diffused, uniform
light from an array of upwardly pointing LEDs 26 and a light-field
hemispherical bowl illuminator 20 as disclosed in Sones.
Further, even if Sones’s illumination technique were incorporated into
Numazu, the Examiner has not explained how or why Numazu’s controller 4
would adjust the amount of power supplied to each of the upwardly pointing
LEDs 26 individually because, unlike the light sources in Numazu, the light
sources in Sones provide diffused, uniform light with the bowl illuminator
20.
We, therefore, do not sustain the Examiner’s rejection of claim 1.
We also do not sustain the Examiner’s rejection of claim 8, which
depends from claim 1.

The Obviousness Rejections of Claims 2, 4, 6, 7, 9, 11, 13, 16, and 17
Claims 2, 4, 6, 7, 9, 11, 13, 16, and 17 depend from claim 1.
The grounds of rejection for these claims do not cure the deficiency in
the rejection of claim 1. See Final Act. 7–15.
We, therefore, sustain the Examiner’s rejections of claims 2, 4, 6, 7, 9,
11, 13, 16, and 17.

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The Obviousness Rejection of Claims 18–20, 23, 28, and 29 over Numazu,
Pance, and Furnas
The Examiner finds Numazu, Pance, and Furnas teach all limitations
of claim 18. Non-Final Act. 14–152; see also Ans. 48–50. In particular, the
Examiner finds “Numazu does not explicitly disclose a first panel including
a first plurality of light sources.” Non-Final Act. 14. The Examiner finds
Pance’s disclosure of a substrate and light source 144 teaches “a first panel
including a first plurality of light sources” (claim 18). Non-Final Act. 14
(citing Pance ¶ 37). The Examiner reasons
it would have been obvious to one of ordinary skill in the art at
the time of the invention was made, having the references of
Numazu and Pance before him/her to modify the glass bottle
inspection method and apparatus of Numazu with the teaching of
white point adjustment for multicolor keyboard backlight of
Pance in order to facilitate use of the electronic device regardless
of lighting conditions as taught by Pance.
Non-Final Act. 14 (citing Pance ¶ 5).
Appellant contends there is no reason to combine the teachings of the
references. Appeal Br. 12–29; see also Reply Br. 14–16. In support of this
contention, Appellant presents the following principal arguments:
“[T]he [Examiner’s] rationale for combining the references has
nothing to do with making LED1 and LED2 light sources of a panel.”
Appeal Br. 29. “[I]t is not reasonable to think that one of ordinary skill in the
art would find it obvious to replace the light panels of Numazu with those of
Pance for reasons that have nothing to do with the light panels.” Appeal Br.

2 We refer to the Non-Final Action mailed August 31, 2018 because, in the
Final Action on page 15, the Examiner refers to the Non-Final Action mailed
August 31, 2018.
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30. “[T]here is no logical reason to modify the system of Numazu using the
teachings of Pance, in the manner proposed, other than to justify the
rejection of Appellants’ claims.” Appeal Br. 31.
Appellant persuades us that the Examiner erred. For reasons explained
below, we determine the Examiner’s reasoning to combine the teachings of
the references lacks a rational underpinning.
Numazu discloses “[t]he illuminating units LED1 and LED2 are
controlled by the controller 4 to emit alternate pulsed lights, and the camera
CAM1 is controlled by the controller 4 to capture images of the bottle-
mouth portion 2 in synchronism with the pulsed lights from the illuminating
units LED1 and LED2.” Numazu ¶ 46.
In making the rejection, the Examiner relies on Numazu’s disclosure
of LED1 and LED2 to teach “illuminating a first predetermined set of the
first plurality of light sources to illuminate the glass container with a first
predetermined illumination pattern” (claim 18). Non-Final Act. 14 (citing
Numazu, Fig. 2, elements LED1, LED2).
First, we agree with Appellant’s arguments that there would have
been no reason to modify Numazu’s system, which uses focused light from
illuminating units LED1 and LED2, to instead use a substrate and light
source 144 from a multicolor keyboard backlight as disclosed in Pance. In
short, the Examiner’s reason of “facilitat[ing] use of the electronic device
regardless of lighting conditions” (Non-Final Act. 14) does not seem to have
any applicability to Numazu’s system.
Further, the “facilitat[ing] use of the electronic device regardless of
lighting conditions” (Non-Final Act. 14) does not result from the locating of
light sources on a substrate; thus, we do not readily see why “facilitat[ing]
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use of the electronic device regardless of lighting conditions” (Non-Final
Act. 14) would be a reason for a skilled artisan to locate Numazu’s light
sources on a panel (substrate).
We, therefore, do not sustain the Examiner’s rejection of claim 18.
We also do not sustain the Examiner’s rejection of claims 19, 20, 23,
28, and 29, which depend from claim 18.

The Obviousness Rejection of Claims 21, 24–27, and 30
Claims 21, 24–27, and 30 depend from claim 18.
The grounds of rejection for these claims do not cure the deficiency in
the rejection of claim 18. See Final Act. 15–16.
We, therefore, sustain the Examiner’s rejections of claims 21, 24–27,
and 30.
CONCLUSION
The Examiner’s decision to reject claims 1, 2, 4, 6–9, 11–13, 16–21,
and 23–30 is affirmed in part.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12 112 Written
Description
12
12 112 Enablement 12
23 112 Indefiniteness 23
1, 8 103 Numazu, Sones 1, 8
2 103 Numazu, Sones,
Piorek
2
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4, 6, 7, 16 103 Numazu, Sones,
Pance
4, 6, 7, 16
9, 13 103 Numazu, Sones,
Dilks
9, 13
11 103 Numazu, Sones,
Siekmeyer, Pance
11
17 103 Numazu, Sones,
Miura
17
18–20,
23, 28, 29
103 Numazu, Pance,
Furnas
18–20, 23,
28, 29
21, 30 103 Numazu, Pance,
Furnas, Dilks
21, 30
24–27 103 Numazu, Pance,
Furnas, Dalstra
24–27
Overall
Outcome
23 1, 2, 4, 6–9,
11–13, 16–
21, 24–30

TIME PERIOD FOR RESPONSE
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).
AFFIRMED-IN-PART