EARTHCAM, INC.

Patent Trials and Appeals Board

Jun 5, 2020

14196599 - (D) (P.T.A.B. Jun. 5, 2020)

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.
14/196,599 03/04/2014 Brian CURY 10625-006US1 5310
96039 7590 06/05/2020
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
06/05/2020 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):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN CURY and JAMES B. NICOLL
Appeal 2018-008372
Application 14/196,599
Technology Center 2400
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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, 6, 8–10, 21, 23, and 24. Claims 2–5,
7, 11–20, and 22 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

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
Earthcam, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to an all-weather camera system and methods
for control thereof. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An all-weather, remote camera system comprising:
a weather-proof camera housing comprising a weather-
proof camera housing lens cover;
a camera enclosed by the weather-proof camera housing,
the camera comprised of a camera body configured to move
within the weather-proof camera housing and a camera lens that
is maintained at a fixed distance from the weather-proof camera
housing lens cover while the camera body moves within the
weather-proof camera housing;
a camera sled on which the camera body is mounted;
a zoom control assembly mounted on the camera sled, said
zoom control assembly comprised of a track rail guide assembly
mounted to the camera sled, said track rail guide assembly
comprises a linear track rail, a track support on which the linear
track rail slides, and a linear carriage, said camera sled connected
to the track rail guide assembly by the linear carriage, said linear
carriage configured to move in a forward or a backward direction
by engaging the linear track rail using a plurality of rollers on a
bottom of the linear carriage, wherein the linear carriage allows
movement of the camera body mounted on the camera sled
without any direct contact with the track rail guide assembly,
wherein said camera sled, track rail guide assembly and linear
carriage are enclosed by the weather-proof camera housing;
a device server that includes a local processor that
executes software programs and instructions, wherein the device
server is in communication with the camera and instructs the
camera to focus the camera while the camera lens is maintained
at the fixed distance from the weather-proof camera housing lens
cover and capture an image and wherein the device server is
located within the weather-proof camera housing;
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a robotic actuator mounted on the camera sled and in
communication with the device server, said robotic actuator
engaged with a gear ring on the camera lens, wherein the device
server executes software programs and instructions to instruct
the robotic actuator to perform a zoom operation using the zoom
control assembly that moves the camera body mounted on the
camera sled back and forth on the track rail guide assembly by
the robotic actuator rotating the gear ring on the camera lens
within the weather-proof camera housing while the camera lens
is maintained at the fixed distance from the weather-proof
camera housing lens cover during the zoom operation;
a storage device located within the weather-proof camera
housing to store the image; and
a network connector to establish a connection with a
network to transmit the image to a remote Internet protocol (IP)
addressable device.

Appeal Br. 25–26 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Choate US 5,523,583 June 4, 1996
Johnston US 2010/0110192 A1 May 6, 2010
Madden US 2011/0228075 A1 Sept. 22, 2011
Applicant Admitted Prior Art (“AAPA”)

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REJECTIONS
Claims 1, 6, 9, 10, 21, 23, and 24 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over AAPA, Madden, and Choate.
Final Act. 7–12.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Madden, Choate, and Johnston. Final Act. 12–13.
ISSUES
First Issue: Has the Examiner erred in finding Choate teaches or
suggests a camera system in which a device server “instructs the camera to
focus the camera while the camera lens is maintained at the fixed distance
from the weather-proof camera housing lens cover” and also “instruct[s] the
robotic actuator to perform a zoom operation using the zoom control
assembly that moves the camera body . . . while the camera lens is
maintained at the fixed distance from the weather-proof camera housing lens
cover during the zoom operation,” as recited in claim 1?
Second Issue: Has the Examiner erred in finding performing a zoom
operation by “mov[ing] the camera body mounted on the camera sled back
and forth on the track rail guide assembly by the robotic actuator rotating the
gear ring on the camera lens,” would have been obvious in view of the
teachings of Choate?
Third Issue: Has the Examiner erred in combining the references?
ANALYSIS
First Issue
The Examiner generally summarizes the rejections as follows:
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Generally, Examiner notes that it is not clear that the claimed
invention is more than an obvious application of principles
known in the art. According to the references cited below, it was
known to enclose a zoom camera in a weather-proof housing, it
was known to use a processor to control a digital camera, store
images, and transmit images over the network, and it was known
to construct a zoom camera by using rails, gears, and an actuator
to move the imager assembly relative to the lens. Further,
Examiner does not find any secondary factors that indicate non-
obviousness in adaptation of these principles.
Final Act. 2. Relevant to this issue, the Examiner finds that AAPA teaches
an all-weather, remote camera system including the limitation of a “weather-
proof camera housing comprising a weather-proof camera housing lens
cover.” Final Act. 7 (citing AAPA, Spec. 1, l. 9). The Examiner further
finds AAPA teaches that it was known in the art to position a camera such
that it was “enclosed by the weather-proof camera housing, the camera
comprised of a camera body configured to move within the weather-proof
camera housing and a camera lens that is maintained at a fixed distance from
the weather-proof camera housing lens cover.” Final Act. 7 (citing AAPA,
Spec. 1, ll. 7–17). The Examiner further finds that AAPA teaches generally
the use of a “zoom control assembly” (Final Act. 7–8), but acknowledges
that AAPA does not teach the zoom control assembly having the structural
configuration recited in claim 1. The Examiner also finds AAPA deficient
with respect to the “robotic actuator” limitation. Final Act. 10.
The Examiner addresses these deficiencies with the teachings of
Choate, finding that Choate teaches the claimed configuration “in the
context of implementing camera zoom operation.” Final Act. 9.
Specifically, the Examiner finds the Choate’s description of a “carriage 29,
which carries the video camera 32, [which] is adapted to be driven vertically
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and selectively and in opposite directions on rail 18 by the motor 21, . . . by
moving camera 32 vertically relative to the lens system 50,” teaches the
recited zoom control assembly. Final Act. 9–10 (citing Choate col. 5, ll. 31–
49; col. 4, ll. 18–33, and Figures 1, 3, and 4).
Appellant argues that the Examiner has erred because the cited prior
art, and Choate in particular, fails to teach a camera system that allows for
both zoom and focus operations to occur without any movement by the lens,
which, according to Appellant, is a requirement of the claim. Appellant
contends that:
Choate requires movement of the lens assembly 50 “in order to
maintain focus” while the claimed invention requires that the
zoom operation that moves the camera body mounted on the
camera sled back and forth on the track rail guide assembly
within the weather-proof camera housing while maintaining the
camera lens at a fixed distance from the weather-proof camera
housing lens cover. Furthermore, as Claims 1 and 21 recite “the
device server is in communication with the camera and instructs
the camera to focus the camera while the camera lens is
maintained at the fixed distance from the weather-proof camera
housing lens cover[.]” In other words, the claimed invention
requires that the camera lens stay stationary with respect to the
camera housing lens cover during zoom and focusing, while
Choate requires vertical movement of the camera 23 and the lens
assembly 50 during focusing and vertical movement of the
camera 23 relative to the lens assembly during magnification
(i.e., zoom).
Appeal Br. 17–18 (emphasis omitted).
We are not persuaded by Appellant’s argument. We give disputed
claim terms their broadest reasonable interpretation. In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004). Appellant’s argument rests on the flawed
premise that the claim requires the camera lens to remain stationary during
both zoom and focusing. However, that is not what the claim requires. With
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respect to zoom operations, Appellant is correct that the lens must remain
stationary because it recites that the camera lens “is maintained at a fixed
distance from the weather-proof housing lens cover while the camera body
moves within the weather-proof camera housing during the zoom
operation.” Thus, the claim expressly recites that the camera lens be
maintained at a fixed distance from the housing during a zoom operation.
With respect to a focusing, however, the claim recites “the device
server is in communication with the camera and instructs the camera to
focus the camera while the camera lens is maintained at the fixed distance
from the weather-proof camera housing lens cover.” Here, the limitation
can be reasonably understood to mean that the device server instructs the
camera to focus the camera, not that an actual focusing of the camera
necessarily takes place. In that situation, it is the instruction to focus issued
by the device server, and not the focusing action itself, that must occur while
the camera lens in maintained at a fixed distance from the lens cover.
In reaching our conclusion, we note the paucity of the description of
the “instructs the camera to focus the camera while the camera lens is
maintained at the fixed distance” feature in the Specification. The focusing
capability of the camera is discussed only in two sentences. In describing
camera system depicted in Figure 1, the Specification states “[c]amera
system 100 also may incorporate automatic features such as ISO film speed,
shutter, white balance and focus high dynamic range imaging.” Spec. 9,
l. 23–10, l. 1. In connection with the flow diagram depicted in Figure 4, the
Specification further states “[c]ontrol commands include auto-focus,
exposure, and other defined control commands.” Spec. 18, l. 11. There is
no further discussion of any focus capability, nor is there any discussion of a
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device server issuing any instruction to focus the camera—either in the
Specification or the originally filed claims.2
Thus, without any meaningful guidance in the Specification to the
contrary, and in view of the limited description of how a focus operation
occurs in Appellant’s camera system, we conclude Appellant’s assertion that
“the claimed invention requires that the camera lens stay stationary with
respect to the camera housing lens cover during zoom and focusing” (Appeal
Br. 18), unduly narrows the scope of claim 1 and is inconsistent with the
broadest reasonable interpretation of the claim. Instead, the claim requires
only that the camera lens be stationary when an instruction to focus is
issued.
A person of ordinary skill in the art, possessing the teachings of
Choate, would have understood that an instruction issued to the camera to
perform a focusing operation, would take place while the camera lens is
maintained at the fixed distance from the camera. That is, any movement of
the camera lens would only take place after the instruction to focus was
issued, and not while the instruction to focus was issued. Accordingly, we
are not persuaded the Examiner erred in finding Choate teaches or suggests
the argued limitation.

2 Should there be further prosecution of this application, we suggest the
Examiner consider whether there is sufficient written description support for
the “instructs the camera to focus the camera while the camera lens is
maintained at the fixed distance” limitation. The fact that we have declined
to exercise our discretion and enter a new ground of rejection for lack of
written description should not be construed to mean that we consider this
limitation sufficiently supported in the Specification. See 37 C.F.R. §
41.50(b); MPEP 1213.02.
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Second Issue
Claim 1 also recites “mov[ing] the camera body mounted on the
camera sled back and forth on the track rail guide assembly by the robotic
actuator rotating the gear ring on the camera lens,” The Examiner finds
this limitation rendered obvious by the teachings of Choate. Final Act. 10
(citing Choate col. 4, ll. 18–33, col. 5, ll. 31–49, Figs. 1, 3, and 4) The
Examiner explains that Choate does not teach an identical configuration, but
its collective teachings nevertheless render the invention obvious.
Specifically, the Examiner finds Choate teaches camera 32 is mounted on a
carriage 29 which moves relative to the lens system 50. Final Act. 10. The
Examiner further finds Choate teaches the use of a gear ring assembly on the
lens. Ans. 14 (citing Choate col. 4, ll. 18–33). The Examiner explains:
Here, the location of the actuator does not modify the operation
of the device in moving the assembly along the rail by driving a
gear ring. And further it is known in the art and exemplified in
Choate, that the actuator should be mounted to one of the two
relatively moving structures, to actuate the relative motion. Thus
substitution of one such actuator location for the other would be
obvious under [KSR International Company v. Teleflex
Incorporated, 550 U.S. 398, 415 (2007)].
Ans. 15.
Appellant contends Choate is deficient because “the Examiner fails to
appreciate that the robotic actuator is required to be mounted on the camera
sled in order for the robotic actuator to rotate the gear ring on the camera
lends during a zoom operation.” Appeal Br. 19; see also Reply Br. 10.
Appellant asserts that if the carriage 29 is considered as the recited “camera
sled,” it cannot teach a robotic actuator mounted on the sled because
Choate’s motor 21 is mounted on plate 16 and not on carriage 29. Appeal
Br. 18. Appellant further argues the gear ring assembly identified by the
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Examiner does not perform a zoom operation, but instead rotates a
diaphragm adjusting ring during a concurrent zoom operation. Appeal
Br. 19–20.
We are not persuaded by Appellant’s argument. Choate teaches the
use of a motor 21 which turns a drive screw 22 causing drive nut 26 to move
up and down the drive screw 22. Choate Fig 1, col. 3, ll. 29–60. The drive
nut 26 is “connected by a bracket 27 to spacer block 28 that is fastened to
the face of a carriage 29.” Choate col. 3, ll. 42–47. The rotation of the
driver screw 22, and the resultant movement of the drive nut 26, imparts
“movement [of the carriage 29] in response to the rotation of drive screw
22.” Id. Choate further teaches that the movement of the carriage 29 is
relative to and independent of the lens system 50, and that zoom
functionality is provided by the relative movement of the carriage-mounted
camera to the lens system. Choate col. 5, ll. 44–47 (“[T]he lens system 50
employs fixed telecentric imaging lenses, and magnification variation is
effected by movement camera 32 vertically relative to the lens system 50.”).
Thus, Choate teaches the use of a robotic actuator (motor 21) to move the
camera body (camera 32) mounted on the camera sled (carriage 29) back
and forth on the track rail guide (rail 18) assembly to perform a zoom
operation (magnification variation).
This configuration differs from the claimed configuration in two
respects. First, the actuator is not mounted on the camera sled, but instead is
mounted to plate 16, which supports both the camera and the lens system.
Second, the movement of the camera is caused by the turning of the screw
and not the rotation of the gear ring. However, Choate also teaches that
turning the screw also imparts rotation to a gear ring on the camera lens for
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carrying out the zoom operation. Choate is deficient only in that the gear
ring adjusts the diaphragm in the lens system as the camera is moved, and
does not itself cause the camera to be moved by the carriage/camera sled.
The standard for determining whether a claim is obvious is “an
expansive and flexible approach.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
398, 415 (2007). We agree with the Examiner that a person of ordinary skill
in the art would have found it obvious to use rotational movement of a gear
ring to impart movement to the camera sled. Doing so would be a “simple
substitution of one known element for another to obtain predictable results.”
MPEP § 2143(I)(B). That is, Choate teaches two different ways to use a
motor to affect movement by or within the camera: (1) using a drive screw
and a drive nut; and (2) rotating a gear ring attached to the camera lens using
drivingly engaged teeth. Substituting the rotating gear ring for the drive
screw and drive nut as the mechanism for imparting movement on Choate’s
carriage, as proposed by the Examiner, would have predictably resulted in
movement of the camera body along the camera sled to perform Choate’s
zoom operation. We further agree with the Examiner that it would have
been obvious to a person of ordinary skill in the art to adjust the location of
the motor/actuator in Choate from the plate 16 to the camera sled/carriage.
As explained by the Examiner:
Here, the location of the actuator does not modify the operation
of the device in moving the assembly along the rail by driving a
gear ring. And further it is known in the art and exemplified in
Choate, that the actuator should be mounted to one of the two
relatively moving structures, to actuate the relative motion.
Ans. 7.
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As such, we are not persuaded the Examiner erred in concluding the
argued limitation would have been obvious in view of the teachings of
Choate.
Third Issue
The final issue raised by Appellant is that of combinability of
references. Appellant asserts that the proffered combination is erroneous
because (1) the references are non-analogous art, and (2) the Examiner relies
on impermissible hindsight reasoning to arrive at the claimed invention.
Appeal Br. 21–23. We address each in turn.
Appellant argues the Madden and Choate are non-analogous art
because:
Madden discloses a digital camera in a watertight enclosure for
capturing images underwater by a person activating the camera.
Choate discloses a metrological device for making very precise
measurements of manufactured goods - in essence, a microscope.
Neither teach an all-weather remote camera system that captures
a plurality of high-resolution still images over a period of time at
varying zoom levels and transmits the images over a network or
stores them locally if the network connection is lost.
Appeal Br. 21–22.
“References within the statutory terms of 35 U.S.C. § 102 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention.” In re Bigio, 381 F.3d at 1325 (citing In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992)). A reference is analogous art if it satisfies
one of two separate tests: (1) the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. Id. (citing In re
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Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986) and In re Wood, 599 F.2d
1032, 1036 (CCPA 1979)).
Here, Appellant characterizes the teachings of Madden and Choate,
but does not explain why these references do not satisfy the tests described
above. The Specification describes the field of invention as “all-weather
camera system and methods of controlling the camera system that provide
video imaging and extremely high resolution composite imaging.” Spec. 1,
ll. 3–5. Madden describes the control and use of cameras in underwater
environments requiring “watertight housing.” Even if not in the same field
as Appellant’s invention, Madden is at least reasonably pertinent to the
problems addressed by Appellant. That is, Madden teaches controlling
camera operations within a watertight housing using digital components
would have been useful in addressing problems of controlling all-weather
camera systems contained in weather-proof enclosures. Similarly, Choate
also relates to controlling high resolution cameras through manipulation of
positioning of camera components. Although Choate relates to a different
type of camera than Appellant’s claimed camera system, it nevertheless
would have been reasonably pertinent to the problems of camera control and
high-resolution imaging. Accordingly, we are not persuaded the cited
references are non-analogous art.
With respect to hindsight reasoning, Appellant argues “the
combination of AAPA, Madden and Choate is improper because the Office
Action relies on information gleaned solely from Appellant’s specification.”
Appeal Br. 22 (citing MPEP § 2142). Appellant asserts “maintaining the
fixed distance between the camera lens and the weather-proof camera
housing lens cover during bot, focus and zoom operations, is absent from the
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cited art and is only present in Appellant's specification.” Appeal Br. 23.
This argument is unpersuasive of error for two reasons. First, as we
explained above, under its broadest reasonable interpretation, the claim does
not require that a fixed distance be maintained during a focus operation—
this requirement is only with respect to a zoom operation. Because Choate
teaches maintaining a fixed distance during a zoom operation, Appellant is
incorrect that the requirement of “fixed distance” is found only in
Appellant’s specification. Second, Appellant does not address the actual
reasoning provided by the Examiner explaining why a person of ordinary
skill in the art would have combined the references in the manner claimed.
The Examiner provides articulated reasoning in support of the combination
with respect to both Madden (Final Act. 8–9) and Choate (Final Act. 10–11).
Appellant does not address this reasoning, nor does Appellant explain why it
is erroneous or deficient.
Because we discern no error in the Examiner’s rejection of claim 1,
we sustain the rejection under 35 U.S.C. § 103(a). For the same reasons, we
also sustain the rejection of independent claim 22, for which Appellant relies
on the same arguments.
Remaining Claims
Although Appellant includes a separate section in the Appeal Brief
regarding dependent claim 8, the argument presented therein merely asserts
the Examiner made the same error as with claim 1. As such, we also sustain
the rejection of claim 8. The remaining claims are not argued separately and
fall with their respective independent claims.
CONCLUSION
The Examiner’s rejections are affirmed.
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More specifically,
We affirm the rejection of claims 1, 6, 9, 10, 21, 23, and 24 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over AAPA, Madden, and
Choate.
We affirm the rejection of claim 8 under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over AAPA, Madden, Choate, and Johnston.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6, 9, 10,
21, 23, 24
103(a) AAPA, Madden,
Choate
1, 6, 9, 10,
21, 23, 24

8 103(a) AAPA, Madden,
Choate, Johnston
8
Overall
Outcome
1, 6, 8–10,
21, 23, 24

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