Arbouzov, IvanDownload PDFPatent Trials and Appeals BoardNov 12, 202014693348 - (D) (P.T.A.B. Nov. 12, 2020) Copy Citation 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. 14/693,348 04/22/2015 Ivan Arbouzov 39443-0003001 1366 26231 7590 11/12/2020 FISH & RICHARDSON P.C. (DA) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER WU, SING-WAI ART UNIT PAPER NUMBER 2611 NOTIFICATION DATE DELIVERY MODE 11/12/2020 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IVAN ARBOUZOV Appeal 2019-004275 Application 14/693,348 Technology Center 2600 Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–20. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We refer to the Specification, filed April 22, 2015 (“Spec.”); Non-Final Office Action, mailed January 8, 2018 (“Non-Final Act.”); Appeal Brief, filed December 10, 2018 (“Appeal Br.”); Examiner’s Answer, mailed March 12, 2019 (“Ans.”); and Reply Brief, filed May 10, 2019 (“Reply Br.”). 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Ivan Arbouzov. Appeal Br. 4. Appeal 2019-004275 Application 14/693,348 2 CLAIMED SUBJECT MATTER The claims are directed to a thermal imaging accessory for a head- mounted smart device. Spec., Title. Independent claim 1 illustrates the subject matter of the appealed claims. We reproduce claim 1 with a disputed limitation emphasized: 1. A computer-implemented method comprising: linking, using a data connection, a thermal imaging accessory (TIA) physically coupled to and in optical alignment with a head-mounted smart device (HMSD); activating a thermal imaging application on the HMSD to receive thermal imaging data associated with a target from the TIA and to process the thermal imaging data for overlay on an HMSD data display; receiving thermal imaging data of the target from the TIA; processing, using the HMSD, the thermal imaging data received from the TIA to generate processed thermal imaging data; and overlaying, on the HMSD data display, the processed thermal imaging data over an unprocessed visual image of the target transmitted through the HMSD data display as the target is viewed through the HMSD data display. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Masarik US 8,488,969 B1 July 16, 2013 Morley US 9,069,172 B1 June 30, 2015 “Thermal Camera with Glass,” 9/20/2013; URL: https://www.youtube.com/ watch?v=EZyN48nFiRY (“Attoparsec”) “Auto Distance”, 8/25/2014; URL: https://web.archive.org/web/ 20130825025944/http://www.greenworkssoft.magix.net/public/ potatotreesoftmainpage/auto_distance.html Appeal 2019-004275 Application 14/693,348 3 REJECTIONS Claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, and 19 stand rejected under 35 U.S.C. § 103 as rendered obvious by the combination of Attoparsec and Morley. Non-Final Act. 2–15. Claims 2, 3, 9, 10, 16, and 17 stand rejected under 35 U.S.C. § 103 as rendered obvious by the combination of Attoparsec, Morley, and Masarik. Non-Final Act. 15–19. Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103 as rendered obvious by the combination of Attoparsec, Morley, and Auto Distance. Non-Final Act. 19–21. STANDARD OF REVIEW 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). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). To the extent consistent with our analysis herein, we adopt as our own the findings and reasons set forth by the Examiner in (1) the action from which this appeal is taken (Non-Final Act. 2–21) and (2) the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 7–17) and concur Appeal 2019-004275 Application 14/693,348 4 with the conclusions reached by the Examiner. We highlight the following points for emphasis. 35 U.S.C. § 103 The Examiner finds Attoparsec teaches the limitations of claim 1 (Non-Final Act. 2–7) except that Attoparsec does not explicitly teach: 1_1 ). a thermal imaging accessory (TIA) physically coupled to and in optical alignment with a head-mounted smart device (HMSO); [i.e., the disputed limitation, and] 1_2). processing using the HMSO the thermal imaging data received from the TIA to generate processed thermal imaging data. Id. at 7. The Examiner finds Morley’s multi-mode sight that is attachable to a firearm such as a rifle, in combination with Attoparsec, teaches the missing elements. Non-Final Act. 7–11. In particular, the Examiner maps limitations 1_1 to Morley in combination with Attoparsec, as follows: 1_1). a thermal imaging accessory (TIA) physically coupled to (e.g., the interface of the thermal imager 80 with the multi-mode sight 10; Morley: Fig. 1; the thermal imager 80 is clip-on to the multi-mode sight; Morley: Figs. 8-9. The 1x IR Blue thermal camera is modified to have an interface as the thermal imager 80) and in optical alignment with (e.g., the thermal image 80 and the optical sight 20 are aligned in parallel in the looking at the same scene; Morley: Fig. 1. The image of visual image and the converted thermal image are images of the same scene; Attoparsec: 0:46–1:16/1:23 second, the thermal image is part of the visual image. The 1x IR Blue thermal camera and the Glass as facing the same scene; Attoparsec: 0:24/1:23 second, in the same alignment as the thermal imager 80 and optical sight 20 as established by the multimode sight 10 as shown in Morley: Appeal 2019-004275 Application 14/693,348 5 Fig. 1) a head-mounted smart device (HMSO) (e.g., the Google Glass; Attoparsec: 0:09/1:23 second). Non-Final Act. 10–11. According to the Examiner, It would have been obvious to a person of ordinary skill in the art at the time of filing the application to combine the teaching of Morley into the teaching of Attoparsec so that the thermal camera can . . . conveniently clip-on to the [Google] Glass [HMSO] to simplify the operation and to make a better connection by replacing the Bluetooth wireless connection with direct connection to connect the thermal camera (thermal imager 80 of Morley) with the [Google] Glass [HMSO] (display 50 of Morley) through the interface of the multi-mode sight 10. Id. at 11–12. Appellant contends the combination of Attoparsec and Morley is improper. Appeal Br. 16. Appellant argues, 1. Morley’s multi-mode sight technology is not applicable to or combinable with Attoparsec’s head-mounted usage (“nothing has been shown to demonstrate how the cited combination of elements in Morley [that is] applicable to a ‘combat optic for small arms’ would be used in, on, or with [Attoparsec’s] ‘head-mounted smart device (HMSD)’” (id. at 17)). 2. “[N]o explanation [has been] provided by the Office of the feasibility of the supposedly obvious workable/reasonable combination of Attoparsec and Morley or how the proposed combination would be configured or used.” Id. at 18. Appellant summarizes the asserted contentions of Examiner error, as follows: Appeal 2019-004275 Application 14/693,348 6 Appellant’s argument is really rather simple - it would not be obvious to one of ordinary skill in the art to combine a disclosed thermal camera in the form of a mobile computing device that is shown strapped to a user’s head with a band to work with a GOOGLE GLASS device with a “multi-mode” combat optic/sight for small arms with no disclosed head-mounted implementations in order to arrive at least at Appellant’s claim 1. The Office appears to be simply cherry-picking elements of Appellant’s claims and keyword matching them with references in a general technology area in an attempt to read on Appellant’s claims. Id. The Examiner responds, “[a]ccording to legal precedence of making integral, it [would have been] obvious that the thermal camera and [Google] Glass [HMSD] [could have been] integrated as one head-mounted device.” Ans. 5 (citing MPEP § 2144.04(V)(B)). Addressing Morley, the Examiner finds the reference teaches overlaying a thermal infrared image over a visible light image. Id. at 9. Furthermore, the Examiner finds, “Morley further teaches that the multi- mode sight can be implemented in a form of a wireless headset holder (Morley: c. [7 L.] 36-37), or a goggle (Morley: c. 1 L. 66). Therefore, [Morley’s] multi-mode sight can be implemented in the form of the Google Glass as shown in the video of Attoparsec.” Id. Addressing Appellant’s argument that Morley is directed to a combat optic for small arms, the Examiner finds, “[t]he cited Abstract of Morley is referred to as an introduction to the principle of combining (overlaying) thermal image onto direct view image” and, in the case of a multi-mode sight implemented in a form of a wireless headset holder, connecting a thermal image to and for display by the sight. Id. at 10. In such a Appeal 2019-004275 Application 14/693,348 7 configuration, the Examiner finds that the thermal imaging accessory (TIA) would be physically coupled to a head-mounted smart device. Id. The Examiner explains, [T]he examiner refers to the teaching of Morley to teach a thermal imager that can be miniaturized to be installed as part of a multi-mode sight or as a separate component of a multi-mode sight. The reference of Morley is thus applied to teach that the 1xIR Blue thermal camera can be modified . . . so that thermal imager can be installed as part of the multi-mode sight or a separate component of the multi-mode sight. Id. at 11. The Examiner further disagrees with Appellant’s argument that the prior art fails to describe how the proposed combination would be made, configured or used. Ans. 12–13 (citing Appeal Br. 18). The Examiner finds, inter alia, [T]he thermal imager can be to be integrated as part of a multi- mode sight or a separate component to the multi-mode sight. As in the first implementation, the thermal imager can be installed or removed from the multi-mode sight and it was discussed in col. 9 lines 60-67 and Fig. 8 [of Morley] that a clip-on mechanism can be made so that the thermal imager can be made attached to the multi-mode sight, the mechanism can be made to the thermal imager to attach to multi-mode sight that is made in the form of a headset holder like a Google Glass. Thus, when the thermal imager is installed on the multi-mode sight, the thermal imager is a thermal camera which provides video output to the display 50. Id. at 12. Appellant replies, contending error in the Examiner’s finding that the independent claims are rendered obvious by Attoparsec in view of MPEP § 2144.04(V)(B) (“Making Integral”) (“the use of a one piece construction Appeal 2019-004275 Application 14/693,348 8 instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice”).3 Reply Br. 1. Appellant argues the finding is (i) an improper new ground of rejection, (ii) not supported by “any articulated reasoning with some rational underpinning as to why one skilled in the art would modify Attoparsec in the manner alleged or how the cited portion of the M.P.E.P compels such a conclusion,” and (iii) substantively deficient “because Attoparsec does not disclose the headband-mounted 1xIR Blue thermal camera as being rigidly secured to the Google Glass eyeglasses [or] being physically connected to the Google Glass eyeglasses at all.” Id. at 1–2. In addition to expanding on these contentions (see Reply Br. at 2–4), Appellant repeats the argument that, even relying on the combination of Attoparsec with Morley, the rejection is improper for the reasons set forth in the Appeal Brief including because “neither Attoparsec nor Marley discloses, teaches, or suggests ‘linking, using a data connection, a thermal imaging accessory (TIA) physically coupled to and in optical alignment with a head-mounted smart device (HMSD),’ as recited in Claim 1” (id. at 4). Appellant further argues Morley’s reference to a headset is so vague and indefinite that one skilled in the art would not have appreciated what was being described. Id. at 5. Appellant also argues “Morley makes explicit that the scope of the disclosure is limited to those instances involving multi- mode sights for small arms, such as a rifle” such that the reference teaches away for its use with head-mounted devices. Id. at 6–7. 3 MPEP § 2144.04(V)(B) (citing In re Larson, 340 F.2d 965, 968 (CCPA 1965)). Appeal 2019-004275 Application 14/693,348 9 Appellant’s contentions are unpersuasive of reversible Examiner error. We address Appellant’s arguments below in the order presented in the Appeal and Reply Briefs. Appellant provides insufficient evidence in support of the argument that the unified configuration of Morley’s multi-mode sight combining optical and thermal images, i.e., multi-mode sight 10/12 including thermal imager 80/81 attached to optical sight 20/21, is only applicable to sights attached to firearms (Appeal Br. 17). As found by the Examiner (Ans. 9), rather than dissuading combining optical and thermal imaging sensors, Morley specifically mentions use of a multi-mode sight (i.e., optical and thermal) with a device worn on the head. See Morley col. 2, ll. 13–15 (“FIG. 1 is a conceptual drawing of a multi-mode sight implementation used with a night-vision scope or goggle for operation at night.”) (emphasis added); col. 7, ll. 36–41 (“[C]omponents defining any wireless headset holder implementation may be formed of any of many different types of materials or combinations thereof that can readily be formed into shaped objects provided that the components selected are consistent with the intended operation of a multi-mode sight implementation.”). We also are unpersuaded the Examiner has failed to provide sufficient reasoning to support the combination or has engaged in improper “cherry- picking elements of Appellant’s claims and keyword matching them with references in a general technology area in an attempt to read on Appellant’s claims.” Appeal Br. 18. We note, Any judgment on obviousness is . . . necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not Appeal 2019-004275 Application 14/693,348 10 include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . must [include] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Nat’l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (“It has long been the law that the motivation to combine need not be found in prior art references, but equally can be found ‘in the knowledge generally available to one of ordinary skill in the art.’” (quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992))). The Court further instructs, [w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at 421. In the present case, Attoparsec describes a thermal camera strapped to a user’s forehead (i.e., a thermal imaging accessory (TIA)), the thermal camera connected to and positioned directly above user-worn Google Glass eyeglasses/goggles (i.e., a head-mounted smart device (HMSD)). Attoparsec 0:13/1:23; p.3 upper screen. Morley describes a multi-mode sight including a thermal imager attached to an optical sight that provides an integrated sight image comprising a thermal image superimposed on an Appeal 2019-004275 Application 14/693,348 11 optical image. Morley, Abstract. Thus, Morley teaches the TIA is physically coupled to and in optical alignment with the HMSD.4 The Examiner reasons one skilled in the art would have integrated Attoparsec’s separate optical and thermal systems, as taught by Morley, to provide a better connection between the two. Non-Final Act. 11–12. Based on this reasoning, the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness, so we are unpersuaded by Appellant’s argument that the Examiner’s combination of references is inadequate or improper. We also are unpersuaded that, in the alternative, the rejection is improper over Attoparsec in view of an obvious engineering choice to integrate the TIA and HMSD. See Reply Br. 1. As an initial matter, Appellant’s contention that the Examiner’s reasoning constitutes an improper new ground of rejection is not reviewable on appeal. Allegations that an Examiner’s answer contains undesignated new grounds of rejection must be resolved by filing a petition to reopen prosecution under 37 C.F.R. § 1.181, the absence of which constitutes waiver of such arguments. 37 C.F.R. § 41.40(a) (“Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.”); accord MPEP § 1207.03. Appellant did not file 4 We note in passing and without reliance in arriving at our decision, under a broad but reasonable interpretation, physical coupling of the TIA and HMSD includes attachment of both to a common structure such as, in the case of Attoparsec, a user’s head. We do not decide whether, under such a claim construction, the claims may be rejected over Attoparsec standing alone as anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. § 103. Appeal 2019-004275 Application 14/693,348 12 a petition and, therefore, waived any argument that the Examiner’s Answer includes new grounds of rejection. We are also unpersuaded the Examiner has failed to provide reasoning for integrating the TIA and HMSD. In this case, we find the Examiner’s reasoning for applying Morley’s specific teaching of integrating the TIA and HMSD fairly applies the general principle that integrating parts into a one piece construction is merely a matter of obvious engineering choice as explained in the cited section of the MPEP. See Non-Final Act. 11–12. In addition, we are unpersuaded by Appellant’s argument, “Attoparsec does not disclose the headband-mounted 1xIR Blue thermal camera as being rigidly secured to the Google Glass eyeglasses.” Reply Br. 2 (emphasis added). We note the claims do not require a thermal camera to be rigidly secured, only physically coupled. Thus, Appellant’s argument is not commensurate in scope with the claim. Furthermore, Morley’s configuration having “thermal imager 81 removably mounted to sight 21 via rail 25” (Morley col 6, ll. 19–21) not only teaches or suggests the claimed physical coupling but, in any case, teaches the argued rigid attachment of thermal and optical imaging devices. We further note, consistent with the cited section of the MPEP, integrating the TIA and HMSD (i.e., making one) is reasonably interpreted as physically coupling the two devices, as claimed. We are unpersuaded by Appellant’s argument that Morley teaches away from its use in head-mounted devices. Reply Br. 6–7. As an initial matter, Appellant fails to show good cause for this new argument, and as such, Appellant’s belated argument is deemed waived as untimely. 37 C.F.R. § 41.41(b)(2) (2016). See In re Hyatt, Appeal 2019-004275 Application 14/693,348 13 Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (explaining that arguments and evidence not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). Furthermore, we are unpersuaded Morley’s mention of a night vision (NV) device integrated into a combat optic, instead of as part of a separate goggle-based system, teaches away from integrating the NV capabilities (i.e., thermal imaging) into whatever optical device is present and/or being used. That is, where the existing optical system is mounted to a firearm for visual sighting, as per Morley’s firearm example, integrating the NV system into those sights is taught by Morley. And, similarly, where an HMSD is being worn by a user, Morley likewise suggests integrating the NV system into or with the existing HMSD. Even had Morley disclosed advantages of a firearm mounted device versus a goggle-based system, merely “express[ing] a preference” falls short of discouraging one of ordinary skill in the art from following a particular path. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). To teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Teaching an alternative method does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965); see also Ex parte Shuping, Appeal 2019-004275 Application 14/693,348 14 No. 2008-0394, 2008 WL 336222, at *2 (BPAI 2008) (unpublished) (“[T]eaching a way is not teaching away.”) (citation omitted). For the reasons discussed above, Appellant fails to persuade us of reversible Examiner error in rejecting claim 1. Appellant does not argue independent claims 8 and 15, or dependent claims 2–7, 9–14, and 16–20, separately with particularity. See Appeal Br. 18. Accordingly, we sustain the rejections of claims 1–20 under 35 U.S.C. § 103. CONCLUSION We affirm the Examiner’s rejection of claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, and 19 under 35 U.S.C. § 103 as obvious over Attoparsec and Morley. We affirm the Examiner’s rejection of claims 2, 3, 9, 10, 16, and 17 under 35 U.S.C. § 103 as obvious over Attoparsec, Morley, and Masarik. We affirm the Examiner’s rejection of claims 6, 13, and 20 under 35 U.S.C. § 103 as obvious over Attoparsec, Morley, and Auto Distance. Appeal 2019-004275 Application 14/693,348 15 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, 19 103 Attoparsec, Morley 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, 19 2, 3, 9, 10, 16, 17 103 Attoparsec, Morley, Masarik 2, 3, 9, 10, 16, 17 6, 13, 20 103 Attoparsec, Morley, Auto Distance 6, 13, 20 Overall Outcome 1–20 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 Copy with citationCopy as parenthetical citation