Ex Parte 7,929,013 et al

Patent Trial and Appeal Board

Jul 22, 2013

90011981 (P.T.A.B. Jul. 22, 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.
90/011,981 10/25/2011 7,929,013 ENHV-108RX 1967
34802 7590 07/22/2013
Gray Robinson
ATTN: STEFAN V. STEIN/ IP DEPT.
401 E. Jackson Street, Suite 2700 (33602)
Post Office Box 3324
TAMPA, FL 33601-3324
EXAMINER
HEYMAN, JOHN S
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/22/2013 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 Freedom Scientific Inc.,
Patent Owner and Appellant
____________________

Appeal 2013-006431
Reexamination Control 90/011,981
Patent 7,929,013
Technology Center 3900
____________________

Before: JEFFREY B. ROBERTSON, DANIEL S. SONG, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-006431
Application 90/011,981
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
8 and 10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a desktop electronic magnifier. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A desktop electronic magnifier, comprising:
a table adapted to support an object;
a camera mounted above said table, said camera adapted
to view said object and said camera adapted to generate an
enlarged image of said object;
a monitor in electrical communication with said camera,
said monitor adapted to display said enlarged image of said
object to facilitate viewing of said object by a person having
low vision;
a support arm secured to a rearward side of said table;
said support arm having a first upstanding part and a second
part extending forwardly relative to said rearward side of said
table;
said camera being rigidly mounted to said support arm
and thus having a fixed position relative to said table;
a telescopic link interconnecting said monitor and said
support arm, said telescopic link positioned above said camera;
said telescopic link having a rearward end pivotally secured to
said support arm;
said telescopic link having a forward end pivotally
secured to said monitor; and
a control panel for controlling operation of said camera;
a mounting bracket removably mounting said control panel to
said monitor so that movement of said monitor effects
simultaneous and corresponding movement of said control
panel;
whereby access to said control panel cannot be blocked
by said monitor and whereby said monitor can be adjusted
while the camera remains in a fixed position.
Appeal 2013-006431
Application 90/011,981
3

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Song
Youngers
Mizukami
US 5,852,654
US 6,247,085 B1
US 7,701,481
Dec. 22, 1998
Jun. 12, 2001
Apr. 20, 2010
Binkley
Trulaske
US 2003/0060270 A1
US 2006/0203093 A1
Mar. 27, 2003
Sep. 14, 2006
Optelec ClearView Flex User manual, June 2004 V1.0 (“Optelec”)

REJECTIONS
1

Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Optelec, Binkley, and Song or Youngers. Ans. 3.
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trulaske, Optelec, Binkley and Song or Youngers. Ans. 4.
Claims 3, 4, 5 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Optelec, and Song or Youngers. Ans. 6.
Claim 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Optelec, Binkley and Song or Youngers. Ans. 8.
Claims 3, 4, 5 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Trulaske, Optelec and Song or Youngers. Ans. 9.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Trulaske, Optelec, Binkley and Song or Youngers. Ans. 11.

1
While not entirely clear, it does not appear that the Examiner adopted the
proposed rejection of claims 5 and 7 based on the combination of Trulaske,
Optelec, Song or Youngers and Mizukami on pages 21-23 of the Request.
See Ans. 12-13. Since our reversal of the rejections is based on the
unavailability of Optelec as a reference, any such rejection, if adopted, must
also be reversed.
Appeal 2013-006431
Application 90/011,981
4
Claims 5 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Optelec, Song or Youngers and Mizukami. Ans. 11.
Claims 8 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Optelec, Binkley and Song or Youngers. Ans. 13.

OPINION
Each of the pending rejections relies on Optelec. Appellant contends,
however, that there is insufficient evidence to support the Examiner’s
conclusion that Optelec qualifies as a ‘printed publication’ under
35 U.S.C. § 102(b). Ans. 17; App. Br. 4-10. We agree.
In order to qualify as a printed publication within the meaning
of § 102, a reference must have been sufficiently accessible to
the public interested in the art. Because there are many ways in
which a reference may be disseminated to the interested public,
‘public accessibility’ has been called the touchstone in
determining whether a reference constitutes a ‘printed
publication’ . . . . A reference is considered publicly accessible
if it was disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the subject
matter or art exercising reasonable diligence, can locate it.
In re Lister, 583 F. 3d 1307, 1311 (Fed. Cir. 2009)(citations and internal
quotations omitted).
The Examiner, relying heavily on the Javaheri declaration, reasons
that, in light of the complexity of the Optelec device, it must have been
distributed with a manual. From this, the Examiner concludes, “[t]herefore .
. . the June 2004 Optelec User Manual presented by the [Third Party
Requestor] in this case was THE one distributed with the device.” Ans. 15.
The Javaheri declaration, however, has too many gaps to support the
Examiner’s conclusion.
Appeal 2013-006431
Application 90/011,981
5
For instance, Mr. Javaheri states that he has seen and operated an
Optelec device which is "substantially identical to the one shown in the
Optelec Manual" (decl. para. 7). Mr. Javaheri also states that the Optelec
Manual was obtained through a distributor (decl. para. 2), and was aware of
two sales of the Optelec Clearview Flex (decl. para. 6).Even if we take
everything Mr. Javaheri states in his declaration as true and correct, the
declarant fails to indicate that the device seen and operated (decl. paras. 7-
11), purportedly that appearing in the manual (decl. para. 7), was that known
to be sold and available in 2004 (decl. para. 6).
Ultimately, there is insufficient evidence linking the manual dated
June 2004 (decl. para. 1) with the product sold or made available later that
year (decl. para. 6). At most, there is a manual bearing the same year as the
alleged sale and availability of the product. However, there is nothing in the
record demonstrating the allegedly sold or available devices were that which
is described in the Optelec Manual.
Thus, we must agree with Appellant that “Even if one assumes that
the Optelec ClearView Flex was distributed with a user’s manual . . . there is
[] absolutely no evidence that the Optelec User’s Manual relied upon by the
Examiner was “THE” manual distributed with the product.” Reply Br. 4.

DECISION
The Examiner’s rejections are reversed.

REVERSED

Appeal 2013-006431
Application 90/011,981
6
Patent Owner:
Gray Robinson
Attn: Stefan V. Stein/IP DEPT.
401 E. Jackson Street
Suite 2700 (33602)
Post Office Box 3324
Tampa, FL 33601-3324

Third Party Requester:
Vista IP Law Group LLP
2040 Main Street
Suite 710
Irvine, CA 92614