Victor M. Contreras et al.

Patent Trials and Appeals Board

Aug 2, 2019

14173497 - (D) (P.T.A.B. Aug. 2, 2019)

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.
14/173,497 02/05/2014 Victor M. Contreras JR. 1520.0045 1032
145261 7590 08/02/2019
Crawford Intellectual Property Law LLC
1250 South Grove Avenue, Suite 308
Barrington, IL 60010
EXAMINER
FULLER, RODNEY EVAN
ART UNIT PAPER NUMBER
2852
MAIL DATE DELIVERY MODE
08/02/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VICTOR M. CONTREAS, JR. and JORGE A. CONTRERAS
____________

Appeal 2018-006661
Application 14/173,4971
Technology Center 2800
____________
Before JEFFREY B. ROBERTSON, MERRELL C. CASHION, JR., and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner’s rejections of claims 19–23 under 35 U.S.C. § 103(a). Br. 13.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.

1 Appellants identify Victor M. Contreras, Jr. and Jorge A. Contreras as the
real parties in interest. Br. 4.
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BACKGROUND
The subject matter on appeal is directed to a collapsible photo studio
for photographing objects such as automobiles. Spec. ¶¶ 5–6.
Sole independent claim 19 is illustrative of the appealed subject
matter, and is copied below from the Claims Appendix to the Appeal Brief:
19. An apparatus for photographing a vehicular subject
comprising:
a suspension means for suspending a track system in a first
position relative to said vehicular subject;
a track system means for guiding at least one curtain
means from a first open position to a second and subsequent open
positions relative to said vehicular subject;
a roller means adapted to be moveable along said track
system means;
wherein said at least one curtain means is engaged with
said roller means to move said at least one curtain means from
said first open position to said second and subsequent open
positions in a continuous loop along said track system means;
at least four light cabinets positioned over the edges of said
track system; and
said at least four light cabinets positioned to face a
diffuser.
App. Br. 44–45.

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STATEMENT OF THE CASE
Under 35 U.S.C. § 103(a), the Examiner rejects claims 19–21 over the
combined disclosures of Amcraft,2 Baliozian,3 and Noe,4 and claims 22 and
23 over these references in combination with Perrott.5
The Examiner’s specific findings with respect to each of these
references appear at pages 4–8 of the Final Office Action dated August 2,
2017. For example, the Examiner finds that “Amcraft discloses the structure
of the curtain track system” (Final Act. 5), “Baliozian discloses a typical
‘light box’ that includes a diffuser, a cabinet, a fluorescent light bulb and a
reflector” (id. at 6), and “Noe discloses multiple lighting set ups for
photographing cars (i.e., vehicles) with overhead lighting, diffusers, and
curtains” (id.).
Based on these disclosures, the Examiner concludes it would have
been obvious to the skilled artisan “to utilize light boxes in conjunction with
a track/curtain system of Amcraft in order to take photography objects
contained within the curtain area . . . and a diffuser covering the interior of
said track system.” Id. The Examiner reasons that the skilled artisan would
have been motivated to modify Amcraft’s curtain track system “by
combining the light boxes of Baliozian and the diffuser of Noe in order to

2 Internet Archive Wayback Machine,
http://web.archive.org/web/20111223090857/http://www.amcraftindustrialc
urtainwall.com, last accessed April 29, 2015.
3 Baliozian, US 5,199,786, Apr. 6, 1993.
4 Car Studio Photography Set-ups by Rain Noe,
http://www.core77.com/posts/21672/car-studio-photography-set-ups-21672,
last accessed October 15, 2015.
5 Damon Perrott, Which Fabric for PVC DIY Giant Area Softbox, May 31,
2009, http://photo.net/photography-lighting-equipment-techniques-
forum/00TW54.
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provide an inexpensive and portable ‘large soft box’ to photograph[] large
objects such as cars with proper lighting to improve image quality (as noted
by Noe).” Id. at 6–7.
OPINION
We have considered each of Appellants’ arguments (Br. 18–41) and
are unpersuaded that Appellants have identified reversible error in the
Examiner’s rejections of claims 19–23. In re Jung, 637 F.3d 1356, 1365–66
(Fed. Cir. 2011). Therefore, we sustain the obviousness rejections before us
based on the findings of fact, conclusions of law, and rebuttals to arguments
expressed by the Examiner in the Final Action and in the Answer. We add
the following only for emphasis, addressing the claims separately to the
extent they are so argued by Appellants.
Claim 19
Regarding Appellants’ sole independent claim on appeal, we agree
with Appellants’ statement that a claim is not rendered obvious by the mere
identification of the different claimed elements in the prior art. Br. 19. We
disagree, however, with Appellants’ position (id. at 20) that there must be an
express teaching in the prior art to combine the cited references to establish a
prima facie case of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (explaining how the obviousness “analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”); see also id. at 419
(stating that the “obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
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overemphasis on the importance of published articles and the explicit
content of issued patents.”).
Appellants appear to argue that the claims would not have been
obvious because the references themselves do not teach the recited
combination of prior art elements. Br. 19–20. Such is a misstatement of the
law governing obviousness under 35 U.S.C. § 103, and is, therefore,
unpersuasive. Here, the Examiner has set forth a suitable rationale of why
and how one skilled in the art would have combined the teachings of
Amcraft, Baliozian, and Noe––“to provide an inexpensive and portable
‘large soft box’ to photograph[] large objects such as cars with proper
lighting to improve image quality (as noted by Noe)”––to arrive at the
claimed subject matter. Final Act. 6–7. Because Appellants’ arguments fail
to meaningfully address the Examiner’s obviousness rationale, Appellants
have not identified reversible error in the Examiner’s determination of
obviousness.
We furthermore observe that Appellants’ arguments do not squarely
address the Examiner’s factual findings underpinning the rejection of claim
19. Final Act. 4–7. Namely, Appellants argue aspects of Noe’s curtain
structure. Br. 20–22; see also id. at 24–26, 28–31, 33–36, and 38–40
(repeating these arguments). The Examiner’s obviousness rejection,
however, does not rely on Noe to teach the claimed curtain track system
structure. Rather, the rejection relies on Amcraft for that claim element. See
Final Act. 5 (“Thus, Amcraft discloses the structure of the curtain track
system.”); see also id. at 6 (explaining how the skilled artisan “would have
been motivated to modify Amcraft by combining the light boxes of
Baliozian and the diffuser of Noe in order to provide an inexpensive and
portable ‘large soft box’” for photography (emphasis added)).
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Claims 20 and 21
In addition to repeating unpersuasive arguments we have already
addressed supra, Appellants present a separate, new argument that is
germane to each of these claims. Br. 22–31. Specifically, Appellants assert
that the cited references fail to disclose the “novel positioning of the diffuser
and the light cabinets” as set forth in these claims, e.g., the angling of the “at
least four light cabinets,” and the positioning of the light cabinets relative to
certain points on the track system. Id. 23, 28.
This argument is unpersuasive of reversible error because, again, it is
focused on what the references expressly disclose, and does not
meaningfully address the Examiner’s rationale set forth in the rejection.
Final Act. 7. Here, the Examiner determines that the positioning features
recited in claims 20 and 21 would have been obvious because such aspects
“involve[] only routine skill in the art” and would have been result-effective
variables for the skilled artisan to manipulate within its ordinary skill. Id.
As we indicate above, such arguments are unpersuasive because they do not
address the rationale underpinning the Examiner’s conclusion of
obviousness.
Claims 22 and 23
For these claims, Appellants repeat several unpersuasive arguments,
and further argue that the limitations requiring the curtain means to be
“made of a reflective material or a green screen material,” and to be
“collapsible for storage” is not taught in the prior art. Br. 31–41. These
arguments are unpersuasive, however, because they again rely on the alleged
absence in the prior art of an express teaching regarding reflectivity and
collapsibility. See Br. 32, 37 (stating in each instance that “[t]here is no
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mention whatsoever in the prior art of the curtain being made of a ‘reflective
or green screen material’” and “there is no mention of Appellants’ curtain
means being collapsible for storage in the prior art”). The arguments do not
meaningfully address the Examiner’s findings regarding the reflectivity and
collapsibility of the curtain. See Final Act. 5 (explaining how Amcraft’s
curtain “material is inherently reflective to some degree, and the claim does
not specify the level of reflectivity of the material,” and is also “inherently
collapsible since the curtains are disclosed [by Amcraft] to be ‘vinyl
curtains’ that hang from the track” and “are not ridge nonflexible plates”).
Appellants’ focus on the express teachings of the prior art does not address,
much less reveal error in, the Examiner’s findings that the recited reflectivity
and collapsibility features are inherently present in Amcraft’s curtain means.
Furthermore, we emphasize that Appellants’ Specification discusses
reflectivity of a curtain material in the same paragraph that also discloses
that the curtain “may be made from 5 foot wide pieces of rip-stop vinyl.”
Spec. ¶ 33. Amcraft likewise discloses the use of vinyl curtains in several
locations. Amcraft, generally.

Secondary considerations
We furthermore note that Appellants do not discuss in any level of
detail the three Declarations appended to the Appeal Brief. Br. 48–54.
Nevertheless, consistent with the principles set forth by the predecessor to
our reviewing court in In re Rinehart (531 F.2d 1048 (CCPA 1976)), we
have reviewed this evidence as part of the appeal record, and agree with the
Examiner’s assessment thereof. Final Act. 2–3. Particularly noteworthy is
how each Declaration generically refers to use of “the invention of the ʼ497
application” without further detail as to what components of the system(s)
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were used by these individuals. Br. 48, 50, 52. Without this information,
we are unable to assess––as we must do––whether the Declaration testimony
demonstrates unexpected superiority of a system that is reasonably
commensurate in scope with that claimed. In re Tiffin, 448 F.2d 791, 792
(CCPA 1971) (“[O]bjective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”).
In sum, Appellants have failed to identify reversible error in the
Examiner’s rejections of claims 19–23 for the reasons we provide and for
those the Examiner provides. We, therefore, sustain the Examiner’s
rejections of these claims.

DECISION
The Examiner’s final decision to reject claims 19–23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED