Ex Parte BINDER

Patent Trial and Appeal Board

Nov 28, 2018

14256468 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/256,468 04/18/2014
131926 7590 11/28/2018
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-US6 8383
EXAMINER
NGUYEN, PHONG H
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
11/28/2018 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
Appeal 2018-002514
Application 14/256,468
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 CASE 1
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1 and 22-25. App. Br. 1; see also
Final Act. 1 (Office Action Summary). We have jurisdiction under
35 U.S.C. § 6(b). For the reasons explained below, we do not find error in
1 Appeal No. 2016-001549 (decision rendered October 4, 2017) is based on
Application No. 13/528,205 which, we are informed, "claims the same
priority and includes the same specification as [the subject] application."
App. Br. 2. Appellant also provides notification of the filing ofNotice of
Appeals "in co-pending application No. 13/893,909" (presently assigned
Appeal No. 2018-006266) and "co-pending application No. 13/893,976"
(presently assigned Appeal No. 2018-007309). App. Br. 2.
Appeal2018-002514
Application 14/256,468
the Examiner's rejection. 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: 14--15. Apparatus claim 1 is
the sole independent claim; is illustrative of the claims on appeal; and, is
reproduced below.
1. An electrically operated hair removing device for
removing hair from a skin area comprising a casing, said casing
further comprising a camera module for imaging at least part of
the skin area, said camera module comprising:
an optical lens for focusing received light mechanically
oriented to focus the image of at least part of the skin area;
a photosensitive image sensor array disposed
approximately at an image focal point plane of said optical lens
for capturing the image and producing electronic image
information representing the image; and
an analog to digital (AID) converter coupled to said image
sensor for generating a digital data representation of the image,
wherein said device is further operative to transmit the
image digital data representation over a cable, and said device
further comprises:
a connector for coupling a signal to the cable;
an image processor coupled to said analog to digital
converter and for generating a digital data video signal carrying
digital data video according to a digital video format; and
a wired transmitter coupled between said connector and
said image processor for transmitting the digital data video signal
to a display via the cable, wherein the cable concurrently carries
an electric power signal, and wherein the device is at least in part
powered from the electric power signal.
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Application 14/256,468
REFERENCES RELIED ON BY THE EXAMINER
Watanabe et al.
Gromov
Fujimura
Hanson
Ryan
US 2002/0024611 Al
US 2002/0180592 Al
US 7,372,504 B2
US 2009/0147081 Al
IE 2006/0420
Feb.28,2002
Dec. 5, 2002
May 13, 2008
June 11, 2009
June 2, 2008
Appellant Admitted Prior Art (AAPA) being "digital signal
transferred through cable, pages 4, 29 and 30" of Appellant's
Specification. Final Act. 2.
THE REJECTION ON APPEAL
Claims 1 and 22-25 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ryan, Hanson, Fujimura, Watanabe, AAPA, and Gromov.
ANALYSIS
Appellant argues all the claims (i.e., claims 1 and 22-25) together.
See App. Br. 4--15. We select independent claim 1 for review, with the
remaining claims (i.e., claims 22-25) standing or falling therewith. See 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
The Examiner primarily relies on Ryan (referencing Figs 1 and 2
thereof) for teaching the recited limitations. See Final Act. 2, 3. The
Examiner also notes that "a digital camera inherently has an optical lens
with a photosensitive image sensor array, and an analog to digital (AID)
converter."2 Final Act. 3. The Examiner further states, "Ryan teaches the
invention substantially as claimed except for the camera making videos,"
2 The Examiner also states that "to the degree the Applicant would argue that
a digital camera module does not inherently comprise" these components,
the Examiner references Watanabe and Fujimura stating that they also
individually teach "a digital camera comprising" such components. Final
Act. 4; see also Ans. 5---6.
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Application 14/256,468
which Hanson is cited for. Final Act. 4 ( emphasis added). The Examiner
additionally relies on Gromov (and, redundantly, AAPA) for teaching
"signals being transferred through cables." Final Act. 4; see also Ans. 7.
The Examiner also provides reasons and/or motivation for the combination
of Ryan with these various references. See Final Act. 4, 5. In other words,
reasons are presented for their combination other than that they "can be
used" or "can be combined or modified" together. See Reply Br. 4, 5.
Appellant initially contends, "[t]he final action fails to address the
limitation of: ' ... an image processor ... '" App. Br. 4. In response, the
Examiner notes that Ryan discloses a digital camera with a display, and
takes the position that "[i]f there is no digital image processor in a digital
camera as argued by the Appellant, how can images be shown on a display?"
Ans. 14; see also Final Act. 2, 3. However, to avoid any ambiguity, the
Examiner further addresses both Watanabe and Fujimura as more explicitly
disclosing such components, including "a digital signal processor" that
"processes video according to a digital video format." Ans. 5, 6 (referencing
Watanabe Fig. 2; Fujimura Fig. 5). The Examiner's stated reason for
employing such imaging components, besides inherency, is that it would
have been obvious to incorporate them so as to be able to take and display
images on the screen. See Final Act. 4. Further, after discussing both
Watanabe and Fujimura, the Examiner states, their "type of arrangement is
identical to the invention ... which is shown in Fig. 2 of [Appellant's]
disclosure." Ans. 5, 6.
Appellant acknowledges such teachings in the cited art but contends,
"technically it is incorrect that all image processors are equal" or that such
teachings would be inherent. Reply Br. 2. To be clear, claim 1 only recites
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Application 14/256,468
an image processor "for generating a digital data video signal ... according
to a digital video format." On this point, Appellant is not persuasive that the
processor disclosed in Hanson (or Watanabe or Fujimura) fails to satisfy this
limitation. Thus, we are not persuaded by Appellant's contentions nor are
we persuaded that the Examiner erred by relying on either inherency or on
Hanson, Watanabe, and/or Fujimura in this matter. In short, we are not
persuaded the Examiner failed to address the disclosure of the recited
imaging components, or to provide a reason for their inclusion. 3
Appellant thereafter contends that "an election was required" and that
"the restriction clearly explained on page 3 that the inventions: ' ... are not
obvious variants of each other ... "' App. Br. 4--5. Based on this, Appellant
contends that "adding image processing to a shaver is admitted by the Office
to be non-obvious." App. Br. 5; see also Reply Br. 2--4 (further arguing
non-obviousness based on the requirement for restriction). The Examiner
disagrees with this logic and elaborates on the restriction requirement
imposed earlier. See Ans. 6, 7, 12, 13. Suffice it to say, the Examiner states
that the need for a restriction "does not [mean] that the inventions cannot be
combined together or each invention is novel." Ans. 7 ( emphasis added).
We agree with the Examiner's analysis and do not agree with Appellant that
just because a restriction was required, that such restriction correlates to the
restricted invention automatically being non-obvious to one skilled in the art.
3 Appellant also implies that the Examiner relied on AAP A for disclosing
such imaging components (see Reply Br. 2), but the Examiner's reliance on
AAPA was as an alternative teaching (alternative to Gromov) of cable
connection and coupling being well known in the art (Final Act. 4; Ans. 7),
not for the teaching of imaging components such as lenses, sensors,
converters, and processors referred to above. See Final Act. 4.
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Thus, we are not persuaded of Examiner error, or that the Examiner's
rejection warrants reversal on this point.
Appellant also addresses the limitation directed to a cable transmitting
the digital data video signal "concurrently" with "an electric power signal."
App. Br. 5; see also Reply Br. 3. Appellant contends, "[t]he final action and
the cited references fail to address any powering scheme in general." App.
Br. 5; see also Reply Br. 3. We disagree. The Examiner referenced
Paragraph 3 of Gromov as teaching this limitation. 4 See Final Act. 4; Ans.
7, 8; see also Ans. 12 ("Gromov teaches that a power cable can be used to
transfer electrical power and digital signal"). To be specific, Paragraph 3 of
Gromov teaches using "cables to transport data signals and electrical power
together to provide power and data signals to each station." Consequently,
Appellant's contention that the Examiner failed "to address any powering
scheme in general," and more particularly, one that transmits data and power
"concurrently," is not persuasive.
Appellant further argues that "[t]he Ryan and Hanson reference[s]
are non-combinable" because they "are directed towards respectively
different fields and purposes, and are based on respectively different
structures." App. Br. 6; see also id. at 7-9; Reply Br. 6 ("the references are .
. . not analogous"). It appears Appellant has not fully comprehended how
these two references are applied by the Examiner. The Examiner first
addresses Ryan's camera (Ryan describes it as a "digital camera" (Ryan
Abstract)), but notes there is no explicit disclosure in Ryan of this digital
4 The Examiner also relied on AAPA for such teaching (see Final Act. 4;
Ans. 7) but we need not also address this redundant citation in view of the
teachings of Gromov.
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camera "making videos." Final Act. 4. The Examiner then references
Hanson because "Hanson teaches a camera 108 making pictures and
videos." Final Act. 4 (emphasis added); see also Ans. 9 (referencing Hanson
,r 31 ). The Examiner concludes that it would have been obvious "to
incorporate a video function to the camera in Ryan for making videos" and
that this would be "so that one can see live images of the shaved area."5
Final Act. 4. Thus, the question is not whether the structure of Ryan and the
structure of Hanson are combinable ( or in the same field or have the same
purpose or are analogous) because the Examiner is not combining or
incorporating structure from Hanson. Instead, the Examiner recognizes
Ryan's digital camera and Hanson's video teachings and concludes that the
incorporation of a video function into Ryan's digital camera would have
been obvious to one skilled in the art. See Final Act. 4; see also Ans. 9, 10.
Appellant fails to explain how that conclusion was in error, or that the
combination of references would not have done as the Examiner says it
would have done, especially in view of Hanson's teaching to include a video
function "so that one can see live images of the shaved area" as stated by the
Examiner. Final Act. 4. Accordingly, Appellant's contentions on this point
are not persuasive of Examiner error, including Appellant's contention that
the Examiner relied on "facts gleaned from [Appellant's] claim or the
specification." App. Br. 6-9.
Appellant also contends the Examiner provided an "[i]mproper
rationale for combining 'cable'" because this rationale was "conclusory
5 Appellant acknowledges that Ryan addresses "real-time display of the
image of the skin area as a mirror replacement." App. Br. 13 (citations to
Ryan omitted).
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and insufficient to provide any primafacie burden rejection." App. Br. 9;
see also id. at 10. As indicated above, the Examiner relies on Gromov (and,
redundantly, AAP A) for teaching a cable coupling. See Final Act. 4; Ans. 7.
The Examiner also references "Fig. 2 in Watanabe" for teaching "lines" that
"represent cables for transferring signals among the components." Ans. 11.
The Examiner further notes that "[ c ]laim 1 does not have any specific
structure for the connector/coupling;" that "Gromov also teaches a cable
transferring signals and power;" that "[t]his knowledge is known;" and, that
"any general coupling/connector will read on claim 1." Ans. 11. In such
matters, we have been instructed that "when a patent 'simply arranges old
elements with each performing the same function it had been known to
perform; and yields no more than one would expect from such an
arrangement, the combination is obvious." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). Additionally, we are instructed that "if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill." Id. Here, Appellant does not explain how the use
of such cabling and/or coupling is beyond the ability of one skilled in the art.
Accordingly, and in view of the above, Appellant's contention regarding use
of a "cable" to transmit signals is not persuasive of Examiner error.
Appellant further contends that "Ryan and Gromov are not
combinable" because "the final action does not provide any reasoning for
combining these references." App. Br. 10. This contention is not persuasive
because, as addressed above, Gromov ( and AAP A) "teach[ es] signals being
transferred through cables" with the Examiner noting "that coupling in cable
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Application 14/256,468
connection[s] is well known in the art." Final Act. 4. Appellant does not
explain how such teachings are not combinable with Ryan, or how the
Examiner's conclusion that "it would have been obvious ... to use cable for
transferring signal from the shaving device of Ryan" is in error. Final Act.
5. Thus, Appellant is not persuasive that the Examiner's reasoning is faulty.
See Reply Br. 7.
Appellant also contends that Ryan and Gromov are "non-analogous"
because Ryan relates to clippers or shavers while Gromov relates to
telephonic communication. App. Br. 11. Even presuming Ryan and
Gromov are not in the same field of endeavor, the problem still remains as to
how Ryan's display (which may or may not be detachable, see Ryan 3:11;
3:16-18) is to receive its data/power. See Ans. 12 ("Ryan and Gromov are
related together as how to power and transfer digital signals using cables.").
This problem of conveying data and power ( and the resolution thereof) was
also faced by Appellant. For example, Appellant's Specification states,
"such communication can use a conductive medium such as cables or wires,
or any other metallic medium" and that "[i]n one embodiment, powerline
communication is used wherein the AC power wiring is used as the
communication medium." Spec. 4:24--27. With respect to the Examiner's
suggested combination, Ryan expresses a preference for a "wireless
connection" (Ryan 4: 1-2), but this does not rule out a wired connection,
such as that discussed in Paragraph 3 of Gromov (i.e., "cables to transport
data signals and electrical power together"). Hence, these similar problems
are resolved in a like manner, i.e., conveying data and power via a cable.
Thus, Appellant's argument that Ryan and Gromov are non-analogous art,
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when their combination addresses the same problem addressed by Appellant,
is not persuasive. App. Br. 11.
Appellant further argues that "Ryan teach[s] away from 'cable
connection."' App. Br. 11. This is not the case because, as indicated above,
Ryan only teaches a preference for a wireless connection, not that there
cannot be a wired connection. See Ryan 4:1-2; see also Ans. 13.
Appellant also contends that the Examiner's proposed "modifications
would change the principle of operation of the shaver in Ryan." App. Br.
13. However, Appellant does not explain how a wired shaver whose digital
camera also has video capability would prevent Ryan's shaver from
performing its principal task of shaving and imaging the area to be shaved.
Appellant also addresses the Examiner's reliance on AAP A stating
that such reliance is improper. See App. Br. 13, 14. Without agreeing one
way or the other to Appellant's contention, the Examiner's reliance on
AAP A was, as stated above, redundant or an alternative to the teachings of
Gromov. See Final Act. 4; Ans. 7. Because we have already addressed the
teachings of Gromov as they relate to the claim limitations at issue, our
decision is not affected by the inclusion or exclusion of AAP A from
consideration.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1 and 22-25 as being obvious over
Ryan, Hanson, Fujimura, Watanabe, AAPA, and Gromov.
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DECISION
The Examiner's rejection of claims 1 and 22-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal (see 37 C.F.R. § 1.136(a)(l)) maybe extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED
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