Ex Parte BINDER

Patent Trials and Appeals Board

Apr 25, 2019

13893909 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/893,909 05/14/2013
131926 7590 04/25/2019
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
FIRST NAMED INVENTOR
Yehuda BINDER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BINDER-005-US4 5124
EXAMINER
NGUYEN, PHONG H
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
04/25/2019 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 YEHUDA BINDER 1
Appeal2018-006266
Application 13/893,909
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Non-Final Rejection of claims 65 and 83-85. App. Br. 1; see
1 "The real party in interest is May Patents Ltd." App. Br. 3. Accordingly,
we proceed on the basis that, for purposes of this appeal, May Patents Ltd. is
the "Appellant."
2 We are informed that Appeal No. 2016-001549 (reversing the Examiner) is
based on Application No. 13/528,205 filed June 20, 2012, which "claims the
same priority and includes the same specification as this application." App.
Br. 3. We are also informed that Application No. 13/893,976, filed on May
14, 2013 (and bearing Appeal No. 2018-007309 (no decision yet rendered))
also "claims the same priority and includes the same specification[] as this
application." App. Br. 3. We are further informed that Application No.
Appeal2018-006266
Application 13/893,909
also Non-Final Act. 1 (Office Action Summary). Claims 1---64, 66-82, and
86-134 have been withdrawn as being directed to non-elected species. See
Amendment dated March 20, 2016; see also Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we do not find error in the
Examiner's rejection of elected claims 65 and 83-85 under 35 U.S.C.
§ 103(a). Accordingly, we AFFIRM the Examiner's rejection of these
claims.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to electric shavers
having electronic imaging functions." Spec. 1. 3 Apparatus claim 65 is the
sole independent claim; is illustrative of the claims on appeal; and, is
reproduced below.
65. A device for capturing a non-visible image and for
identifying an element in the image, the device comprising:
a digital camera for capturing an image in a nonvisible
spectrum, said digital camera comprising an output for
outputting a digital signal carrying a representation of the
captured image;
a digital image processor coupled to said digital camera
for receiving said digital signal for receiving and processing the
captured image;
a cellular antenna for transmitting a wireless signal over
the air in a cellular network; and
a cellular transceiver coupled between said cellular
antenna and said digital camera output for transmitting the
14/256,468, filed April 18, 2014 (bearing Appeal No. 2018-002514 (a
rehearing affirmed the Examiner's rejection)) also "claims the same priority
and includes the same specification[] as this application." App. Br. 3.
3 Appellant's Specification lacks both line and paragraph numbering.
Hence, we refer to Appellant's Specification via page number only.
2
Appeal2018-006266
Application 13/893,909
wireless signal that is based on a representation of the captured
miage,
wherein said digital image processor is operative to
identify the element in the captured image.
REFERENCES RELIED ON BY THE EXAMINER
Schaeffer et al.
Bazakos et al.
US 6,731,952 B2
US 2006/0104488 Al
THE REJECTION ON APPEAL
May 4, 2004
May 18, 2006
Claims 65 and 83-85 are rejected under 35 U.S.C. § I03(a) as
unpatentable under Schaeffer and Bazakos (initially with Schaeffer as the
primary reference and, alternatively, with Bazakos as the primary
reference). 4
ANALYSIS
Appellant argues all the claims (i.e., claims 65 and 83-85) together.
See App. Br. 4--11; see also App. Br. 11-17 (addressing similar arguments
presented for the alternative rejection). We select independent claim 65 for
review, with the remaining dependent claims (i.e., claims 83-85) standing or
falling with claim 65. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner initially relies on Schaeffer for teaching many of the
limitations of claim 65. See Non-Final Act. 3. However, the Examiner
relies on Bazakos for disclosing the limitations of the recited "device" being
4 We do not consider the order in which prior art is applied in a rejection to
be significant. See, e.g., In re Bush, 296 F.2d 491,496 (CCPA 1961) (When
a rejection is based on a combination of references, the order in which prior
art references are cited to the Applicant is of no significance, but merely a
matter of exposition).
3
Appeal2018-006266
Application 13/893,909
directed to "capturing a non-visible image;" "an output" associated with the
captured image; and, "said digital image processor is operative to identify
the element in the captured image." Non-Final Act. 4. The Examiner
initially explains that it would have been obvious to add these teachings "by
Bazakos to the digital camera of Schaeffer for recognizing faces." Non-
Final Act. 4. Appellant contends that the stated motivation to combine these
references is lacking. See App. Br. 6. Subsequently, the Examiner explains,
"the reason for combining Schaeffer and Bazakos is for face recognizing
purposes which can be used in police work or building security. See
Bazakos, para. [0042]." Ans. 6; see also id. at 8. Appellant still contends
"[t]his is unclear" and that the referenced paragraph does not mention "any
'used in police work or building security'" and thus the Examiner's reason
"fails to provide underpinning support." Reply Br. 3 (references omitted);
see also id. at 5, 7.
Bazakos is titled, "Infrared Face Detection and Recognition System."
Paragraph 42 thereof teaches that this system may be connected to "a
company security database [ and] used for identifying employees entering a
facility." This paragraph further states that this system may also be
connected to "a criminal database that may be used for identifying suspects."
While we agree that the words "police work" and "building" are not
expressly used in Bazakos (see Reply Br. 3, 5), we do not fault the
Examiner's paraphrasing of such teachings as undertaken above. In other
words, Appellant does not explain how one skilled in the art would
understand paragraph 42 to not be directed to "police work or building
security" as expressed by the Examiner. See Ans. 6, 8. Accordingly, we do
4
Appeal2018-006266
Application 13/893,909
not find the Examiner's reason to combine Schaeffer and Bazakos to be in
error.
Appellant also contends that the references are not combinable
because they "are directed towards respectively different fields and
purposes" and as such, "are not analogous to one another." App. Br. 5; see
also Reply Br. 2. The Examiner explains that both references "are directed
to the same field of invention and are analogous art which is digital camera
art." Ans. 6. Appellant acknowledges that "both references indeed
disclos[e] a 'digital camera"' but that "the function and structure of the
references is clearly different" and "hence cannot be considered in the same
'field of endeavor."' Reply Br. 2.
The title of the primary reference to Schaeffer is "Mobile Telephone
System Having A Detachable Camera/Battery Module." As indicated
above, Bazakos is directed to detecting facial features in captured images.
See Bazakos generally. Both employ a camera and both discuss capturing
images that are then sent to a receiving unit for processing. See, e.g.,
Schaeffer Fig. 4 and Abstract; Bazakos Fig. 2 and ,r 44. Thus, there is
overlap in their respective function and structure.
Appellant additionally contends that the two references are in
different U.S. classifications and as such, are not combinable. See App. Br.
5, Reply Br. 4, 6. However, the Examiner explains that the classification
system under which these references are organized "is for guiding the field
of search" and "not a way for establishing non-obviousness."5 Ans. 7, 9.
5 Further, "the classification in each reference is used to establish a search
burden in a restriction requirement but is not used for establishing non-
obviousness." Ans. 9; see also id. at 7.
5
Appeal2018-006266
Application 13/893,909
To be clear, claim 65 pertains to "[a] device for capturing ... and for
identifying" elements in an image. In view of the above discussion of
overlap in function and structure of the cited references, there is merit to the
Examiner's position that these references are in the "digital camera art," and
as such, can be properly combined. Ans. 6. Further, Appellant's arguments
that the references are not combinable in that they pertain to different U.S.
classifications ( e.g., "cannot be considered in the same 'field of endeavor"')
is likewise not persuasive. Reply Br. 2; see also App. Br. 5; Reply Br. 4.
Appellant also contends, "the Examiner's rejection appears to be
based upon impermissible hindsight in view of the Appellants' disclosure."
App. Br. 7; see also Reply Br. 4. The Examiner explains:
One skilled in the art clearly knew to how make a digital
camera to take a digital image in [a] non-visible spectrum and
selectively marking the image on a display as shown in
Bazakos in the year of 2004 which is well before the
Appellant's invention which was in 2008. Therefore, the
combination of Schaeffer and Bazakos is not based on hindsight
reasomng.
Ans. 8. On this point, we are instructed that "in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle" and that "[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 420-21 (2007). In view of the above instructions, we are not
persuaded the Examiner erred in combining Schaeffer and Bazakos for the
reasons expressed, or that the Examiner employed improper hindsight in
doing so.
Appellant further challenges the Examiner's rejection asking "WHY
'non-visible images' are to be used' .. . for recognizing faces."' App. Br. 7.
6
Appeal2018-006266
Application 13/893,909
The Examiner relies on Bazakos for such teachings stating "Bazakos clearly
teaches how the non-visible images are used for face recognition." Ans. 8.
Indeed, Bazakos teaches facial recognition using infrared bands (800-2200
nanometers) which differ from the visible spectrum (250-700 nanometers).
See Bazakos ,r,r 35, 36. Bazakos states, "[t]his approach may gather much
more energy and information about the face over a broader band." Bazakos
,r 36. In fact, the illumination required for infrared imaging "need not be
visible and so will not be [a] distraction to or seen by a human being" and
thus, "[t]here may be scene detection in pure darkness." Bazakos ,r 37. In
view of such teachings, Appellant's question seems to have been answered
by Bazakos as to why non-visible images might be used for recognizing
faces. See App. Br. 7.
Appellant also addresses the Examiner's "restriction requirement" in
the family of cases arising from the same specification. App. Br. 8-9, 11;
see also Reply Br. 6. This matter has been discussed in our Decisions (both
on appeal and on request for rehearing) in associated Appeal No. 2018-
002514. We incorporate herein that language in these Decisions addressing
the matter of the Examiner's restriction requirement vis-a-vis the test for
obviousness. Suffice it to say, Appellant's arguments on this point (see App.
Br. 8, 9, 11, Reply Br. 6) are not persuasive of Examiner error.
Appellant also contends that because Schaeffer's device is "small,
thin, light," that Schaeffer teaches away from being combined with Bazakos'
more substantial system. App. Br. 9-10 ("such addition of features will
enlarge the size of the device, rendering it bigger and not mobile, and thus
inoperative for its intended use"). Further, Appellant contrasts Schaeffer's
"single handheld device" with Bazakos' "multiple bulky separated devices,"
7
Appeal2018-006266
Application 13/893,909
contending that "[a]dding separate devices clearly changes the principle of
operation of the Schaeffer device of being small, single enclosure, and
handheld device." App. Br. 10; see also Reply Br. 8-9.
The Examiner disagrees, stating that the test for obviousness "is not
whether the features of a secondary reference may be bodily incorporated"
but rather, "what the combined teachings of the references would have
suggested" to one skilled in the art. Ans. 10, 11 ( citation omitted). The
Examiner explains that "Schaeffer's camera 10 is modified" so as to take
"images in [the] non-visible spectrum as taught by Bazakos" and that
Schaeffer's modified camera is "now equivalent to the digital camera 50 in
Bazakos." Ans. 11. The Examiner also explains that Bazakos' processing
software and hardware for "processing and identifying images" is
incorporated into Schaeffer's computer system. Ans. 11. Thus, the
Examiner states, "to modify Schaeffer's device by Bazakos' teaching does
not change the principle of operation of the Schaeffer[] device." Ans. 12.
There is merit to the Examiner's statements since the Examiner is not
bodily incorporating the entirety of Bazakos' components into Schaeffer's
device, or replacing Schaeffer's components. Instead, the Examiner is
modifying Schaeffer's camera to also record in the infrared range and is
enhancing Schaeffer's computer system to process and identify such images.
Our understanding is that Schaeffer would still operate as before in the
visible spectrum.
Further, we note Appellant's focus on Bazakos' figures 2, 3, and 19 as
implying bulk. App. Br. 10. Perhaps Appellant is scaling such drawings
when there is no indication that these figures are drawn to scale.
Additionally, such figures are mere "illustrative examples" of Bazakos'
8
Appeal2018-006266
Application 13/893,909
device (see Bazakos ,r,r 7, 24) and thus the size of the various components
illustrated is indeterminate.
Accordingly, and based on the record presented, we are not
persuaded the Examiner erred in rejecting independent claim 65, and
dependent claims 83-85, as being obvious over Schaeffer and Bazakos.
Because we reach this decision with Schaeffer being the primary reference,
we need not also address the Examiner's alternate rejection employing
Bazakos as the primary reference. 6
DECISION
The Examiner's rejection of claims 65 and 83-85 as being obvious
over Schaeffer and Bazakos is affirmed.
No time period for taking any subsequent action in connection with
this appeal (see 37 C.F.R. § 1.136(a)(l )) may be extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED
6 See 37 C.F.R. § 4I.50(a)(l) (2018) ("The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.").
9