Interference No. 104,649
Page No. 27
2008, col. 2, lines 30-38). This teaching of Chen was cited by Zhou during the prosecution of its
'858 patent. (KX 1012, p. 3). Zhou even, stated that "[i]t would not be obvious to modify Chen
to use rigid prismlets, as claimed in the present invention, since the elasticity of the prismlets is
inherent to Chen." (KX 1012, p. 3 ).4
2. Sibbald '586 and Cobb '083 Do Not Render Keagy's Corresponding
Claims Obvious
Zhou alleges that all of Keagy's involved claims are unpatentable under 35 U.S.C. § 103
over Sibbald in view of Cobb. (Zhou Preliminary Motion 1, Paper No. 24, p. 18). Sibbald is
cited by Zhou as teaching a method and apparatus for producing a fingerprint image. Moreover,
Zhou cites Sibbald as employing an apparatus having a plurality of prismiets and where light is
reflected from a first major surface to a second major surface by total internal reflection. (Paper
No. 24, p. 18). According to Zhou, the only limitation of Keagy claim 1 that is not taught or
disclosed in Sibbald is the reflection of light being emitted from exit surfaces of the prism sheet
to create a fingerprint image. (Paper No. 24, p. 19). Cobb is cited by Zhou as teaching the use of
a totally internally reflecting, thin film having prismIets. Zhou states that:
It would have been a relatively simple and straightforward task to modify
Sibbald's fingerprint reading device by replacing his prism strip with the prism
sheet taught by Cobb, Jr. to arrive at the invention of Count 1. A person of
4 Zhou has stated that if the Board determines that Keagy's claims are unpatentable over
the Chen reference, it would accept a similar ruling that Zhou claims 1-10 and 18-27 of the '858
patent would also be unpatentable. While Keagy has demontrated that it reduced its claimed
invention prior to the effective date of the Chen reference, Zhou has not. Accordingly, Chen
would be prior art to Zhou. Yet, as it is not entirely clear on this record that Chen teaches or
suggests the use of "rigid" prisimlets, we do not hold Zhou claims to be unpatentable over the
Chen reference.
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