Ex Parte 6,389,340 et al

Patent Trial and Appeal Board

Jul 13, 2013

90011951 (P.T.A.B. Jul. 13, 2013)

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.
90/011,951 10/11/2011 6,389,340 DRIVP002REX 1367
21912 7590 07/13/2013
VAN PELT, YI & JAMES LLP
10050 N. FOOTHILL BLVD #200
CUPERTINO, CA 95014
EXAMINER
CABRERA, ZOILA E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/13/2013 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 I-WITNESS, INC.
Patent Owner and Appellant
____________

Appeal 2013-007684
Reexamination Control 90/011,951
Patent 6,389,340
Technology Center 3900
____________

Before KEVIN F. TURNER, STANLEY M. WEINBERG, and
STACEY G. WHITE, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL
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I-Witness, Inc. (“Appellant”), owner of the patent under
reexamination, U.S. Pat. No. 6,389,340 (hereinafter the “„340 Patent”),
appeals from a final rejection of claims 1-8, 12, 13, 15, 16, 39, 42-53, and
57-60. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.
STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Peter Thurlow of Jones Day. (Request for Ex
Parte Reexamination filed October 11, 2011). The „340 Patent issued from
Application 09/405,857 filed on September 24, 1999, which is said to be a
continuation in part of Application 09/020,700, filed on February 9, 1998,
now abandoned. The „340 Patent was the subject of Drivecam, Inc. v.
Smartdrive Systems, Inc., Civil Action No. 3:11-cv-00997-H-RBB (S.D.
Cal.), now dismissed. (App. Br. 2).
The Claimed Invention
The „340 Patent is directed to a self-contained vehicle-mounted device
for capturing video imagery in response to a triggering event. (2:13-15).
The invention records video data on volatile random access memory
(“RAM”) in a continuous loop. (4:9-13). Upon the occurrence of a
triggering event, video data are copied from the volatile memory to the
nonvolatile memory. (4:59-64).
Claim 1 on appeal reads as follows:
1. A vehicle-mounted device for capturing video
imagery in response to a triggering event, comprising:
a housing;
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an image sensor mounted to said housing, said image
sensor sensing optical phenomena representing said video
imagery;
a data sensor circuit within said housing and in part
responsive to said triggering event; and
a capture circuit within said housing; said capture circuit
comprising:
a non-volatile memory comprising addressable digital
storage;
a volatile, random-access memory configured as a
continuous-loop buffer, said volatile memory coupled to said
non-volatile memory and coupled to said image sensor; said
volatile memory capturing a signal representing said video
imagery from said image sensor in a first-in, first-overwritten
manner, and, responsive to said data sensor circuit sensing a
triggering event, terminating capture of said signal and copying
the captured signal representing said a video imagery to said
non-volatile memory.

The Rejections
 Claims 1-7, 12-13, 15-16, 39, 44, and 46-51 stand rejected under 35 U.S.C. §
103(a) as obvious over Conte (U.S. Pat. No. 4,281,354), Swanson (U.S. Pat.
No. 5,689,442), and McKain (U.S. Pat. No. 7,623,754).
 Claim 8 stands rejected under 35 U.S.C. § 103(a) as obvious over Conte,
Swanson, McKain, and Johnson (U.S. Pat. No. 6,163,338).
 Claims 42-43, 45, 52-53, and 57-60 stand rejected 35 U.S.C. § 103(a) as
obvious over Conte, Swanson, and McKain, and Freeman (U.S. Pat. No.
7,088,387).
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ISSUES
Appellant‟s response to the Examiner‟s rejections presents us with the
following issues:
(1) Did the Examiner err in finding that the cited art discloses a
“capture circuit comprising: a non-volatile memory comprising addressable
digital storage; a volatile, random-access memory configured as a
continuous-loop buffer, said volatile memory coupled to said non-volatile
memory and coupled to said image sensor” as recited by claim 1?
(2) Did the Examiner err in finding that Swanson does not teach
away from the claimed invention?
PRINCIPLES OF LAW
The Supreme Court instructs us that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). In addition, “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” Id. As explained by the Supreme Court, “[w]hen a work
is available in one field of endeavor, design incentives and other market
forces can prompt variations of it, either in the same field or a different one.
If a person of ordinary skill can implement a predictable variation, §103
likely bars its patentability.” Id. at 417. The Court further noted that “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
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As to “teaching away,” precedent instructs that “[a] reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
“[W]hether a reference teaches away from a claimed invention [is a]
question[ ] of fact.” In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).
Teaching away will not be found if the disclosure in question “is not so
credible or persuasive of a contrary teaching that it would have deterred the
skilled artisan from using the teachings of [the other cited references.]” In
re Young, 927 F.2d 588, 592 (Fed. Cir. 1991).
ANALYSIS
Issue #1 – Disclosure of a “Capture Circuit”
Appellant urges that the Examiner erred in finding that the claimed
invention obvious in light of the cited art because Conte does not teach or
suggest the claimed “capture circuit.” (App. Br. 16-22). The instant
specification describes the capture circuit as being “coupled to the image
sensor and capt[uring] a signal representing the video imagery by recording
it in a digital memory…” (Spec. 2:29-31). Claim 1 requires, in relevant
part, that this circuit comprise “a non-volatile memory” and “a volatile,
random-access memory configured as a continuous-loop buffer.”
Independent claims 39 and 42-53 contain commensurate limitations.
Appellant argues that Conte does not teach or suggest including non-volatile
memory in the capture circuit. (App. Br. 18).
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Figure 1, reproduced below, illustrates Conte‟s apparatus for
recording automobile accidents. (Conte 2:9-11; Abstract). Memory 14 is
memory upon which events are recorded on a continuous loop. (2:33-42).
Tape Recorder 3 is used for permanent storage of video data. (2:63-67).

The Examiner finds:
Conte further discloses that in response to a signal caused by
sensor 4 [triggering event] the storage of images in memory
(14) [volatile memory] is halted or terminated and the images
are transmitted [stored or copied] from the CCD memory (14)
[volatile memory] to a magnetic tape recorder (3) [non-volatile
memory] for permanent video record of the event (Conte, Col.
1, ll. 44-52; Col. 3, ll. 29-38). Thus, tape recorder (3) should
have to be connected to CCD memory (14) in order to receive
the images thereof and, therefore, it is part of the „capture
circuit.‟
(Ans. 15). Appellant avers that this is error because Figure 1 shows many
elements such as lens 10 and small monitor 6 that may not be considered to
be a part of a particular circuit. (App. Br. 20). Appellant also argues that
the Examiner is in err because Conte describes a “signal storing circuit” that
is composed of volatile memory and this circuit does not include the tape
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recorder; instead, the tape recorder may optionally be connected to the
circuit. (Id.).
We disagree. The Appellant has not shown us persuasive evidence
that would limit the “capture circuit” to exclude components as laid out in
Conte. One of ordinary skill in the art at the time the application was filed
would have a broad understanding of the term “circuit” that would include
the coupling of the tape recorder and CCD memory described in Conte. (see
e.g. “circuit.” Dictionary of Communications Technology: Terms,
Definitions and Abbreviations, Wiley, Hoboken: Wiley, 1998. (“2. In
electronic design, one or more components that act together to perform one
or more functions.”). We find that the Examiner‟s rationale in explaining
why Conte discloses the claimed capture circuit is reasonable and thus, we
are not persuaded of error.
Appellant also complains that Conte‟s tape recorder is not digitally
addressable; however, the Examiner relies upon McKain and not Conte for
that limitation. (App. Br. 18; Ans. 5). Appellant‟s principal brief notes that
the Examiner relies upon McKain for this limitation, but it contains no
argument regarding McKain‟s disclosure. (App. Br. 24). Thus, Appellant‟s
argument in its Reply Brief regarding McKain is untimely.

In addition to
being untimely, we also find the argument unpersuasive. The cited portion
of McKain stands for the proposition that various types of digital memory
may be used in place of other forms of memory such as magnetic tape
drives. (McKain, 5:17-20). Appellant argues that this disclosure is
inapplicable because tape drives are known to be sequentially accessible
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storage. (Reply Br. 25). We disagree and find no error in the Examiner‟s
reasonable rationale.
Issue #2 – Teaching Away
Appellant also argues that the Examiner erred in relying upon the
teaching of Swanson because Swanson teaches away from the claimed
invention. (App. Br. 23-24) Appellant avers that teaching away occurs
because according to Swanson,
Conventional magnetic tape cannot be used as the recording
media in the data storage device 18 due to its inability to be
quickly accessed in a random fashion by the control processor
10. However, a tape based data storage device is useful as an
auxiliary data storage archive 92. Event information acquired
by the sensors can be backed-up in the archive 92.
Furthermore, in instances where the data management
functionality 44 determines that more data needs to be stored
than there is available space in the device 18, such overflow
information (comprising „older‟ event information) may be
transferred to the archive 92.

(Swanson, 7:53-63). Appellant argues that this teaches away from the use of
a tape recorder as part of the memory system, as shown in Conte and the
claimed invention, and teaches the usage of tape only for archival purposes.
(App. Br. 24). The Examiner relies upon Swanson to disclose storage of
video data in volatile RAM in which the memory locations may be randomly
accessed. (Ans. 17 (citing Swanson Fig. 1, 7:35-52)). According to the
Examiner, Swanson would teach one of ordinary skill in the art to use RAM
memory instead of the CCD memory disclosed in Conte. (Id.). We find no
error in the Examiner‟s reasoning and ultimate conclusion. Swanson
discloses a potential downside to using tape; however, one of skill in the art
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would be able to examine the potential loss of speed against the potential
benefits of permanent storage. See Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
Thus, for the foregoing reasons, we sustain the Examiner‟s rejection
under 35 § 103(a) of independent claims 1, 39, 44, and 46-51 and dependent
claims 2-8, 12, 13, 15, 16, 42, 43, 45, 52, 53, and 57-60, which were not
separately argued.
DECISION
The Examiner‟s decision to reject claims 1-8, 12, 13, 15, 16, 39, 42-
53, and 57-60 under 35 U.S.C. § 103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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FOR PATENT OWNER:

VAN PELT, YI & JAMES LLP
10050 N. FOOTHILL BLVD #200
CUPERTINO, CA 95014

FOR THIRD-PARTY REQUESTER:
Peter Thurlow
JONES DAY
222 East 41st St.
New York, NY 10017-6702