Interference No. 104,649
Page No. 40
Motion 4, Paper No. 27, p. 1). According to Zhou, Zhou claims 14-27 and 28 define a separate
patentable invention from Zhou claims 1-10 and 18-27.
Under 37 CFR § 1.633(c)(4) a party may submit a motion requesting that an application
or patent claim be designated as not corresponding to a count. In filing such a motion, the
moving party shall show that the claim(s) to be designated as corTesponding to the count does not
define the same patentable subject matter as another claim whose designation as corresponding to
the count is not disputed by the moving party. 37 CFR § 1.637(c)(4)(ii). The moving party for
such a motion bears the burden of proof 37 CFR § 1.637(a).
Zhou argues that Zhou claim 10 is the closest claim to Zhou claims 14-17 and 28. (Paper
No. 27, p. 5). Zhou claims 10 and 14 are said to differ in scope as Zhou claim 10 fail to recite:
1) A detector array having a width that is smaller than the width of the sheet prism;
2) A lens that de-magnifies the image to be captured; and
3) An optical system with mirrors to fold the emitted radiation in such a way as to
alter the ratio between the maximum length and width of the sensing system.
(Paper No. 27, p. 6). According to Zhou, claim 14 defines a separate patentable invention from
Zhou claim 10. Moreover, as Zhou claims 15-17 depend from Zhou claim 14 and as Zhou claim
28 generally includes all the features recited in Zhou claims 14-17, Zhou claims 15-17 and 28 are
also alleged to define a separate patentable invention over Zhou claim 10.
Zhou acknowledges that the prior art discloses optical sensing systems that employ
detector arrays and a lens for capturing an image. Zhou also acknowledges that the use of
mirrors to fold light radiation was known at the time of Zhou's invention. Yet, Zhou contends
that the prior art does not teach, disclose or suggest a fingerprint sensing system of claim 10 with
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