Ex Parte Hellman et al

Patent Trial and Appeal Board

Sep 26, 2017

11882059 (P.T.A.B. Sep. 26, 2017)

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.
11/882,059 07/30/2007 Aviad Heilman 39888 2327
67801 7590 09/28/2017
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
EXAMINER
JONES, HEATHER RAE
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
09/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AVIAD HELLMAN and MENACHEM ZIBZINER1
Appeal 2017-005100
Application 11/882,059
Technology Center 2400
Before ERIC B. CHEN, and JEREMY J. CURCURI, and
IRVIN E. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 1—6, 8—12, 16-46, and 49-63, which are all claims pending in the
application. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Real Party in Interest is Video Domain Technologies Ltd. App. Br. 2.
Appeal 2017-005100
Application 11/882,059
CLAIMED SUBJECT MATTER
According to Appellants, the subject matter of the Specification is
directed to “surveillance systems and in particular to surveillance systems
that include cameras.” Spec. p. 1,11. 11—12.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A surveillance unit, comprising:
a video camera which provides a plurality of images in the
form of electrical signals;
control circuitry which determines when to store images
captured by the camera; and
a slot for operationally receiving a memory card on which
the images are stored as determined by the control circuitry; and
wherein the memory card further comprises a storage area
for operational data of the surveillance unit.
REFERENCES AND REJECTIONS
Appellants appeal the Examiner’s rejections as follows:2
1) Claims 1-6, 8-12, 16-18, 21-24, 26, 28-31, 52-55, 57, 58, and 61
under 35 U.S.C. § 103(a) as unpatentable over Courtney (EP 0 967
584 A2; publ. Dec. 29, 1999) (hereinafter “Courtney”) in view of
Steinberg et al. (US 6,006,039; iss. Dec. 21, 1999) (hereinafter
“Steinberg”) in view of Fukuoka (US 7,432,952 B2; iss. Oct. 7,
2008) (hereinafter “Fukuoka”).
2) Claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Steinberg in view Courtney in view Fukuoka.
3) Claims 25, 27, and 32—34 under 35 U.S.C. § 103(a) as
unpatentable over Courtney in view of Fukuoka in view of
2 See App. Br. 9-10; Ans. 2-48.
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Steinberg and further in view of Aviv (US 6,028,626; iss. Feb. 22,
2000) (hereinafter “Aviv”).
4) Claims 35—38 and 42-46 under 35 U.S.C. § 103(a) as unpatentable
over Okuda et al. (US 6,262,657 Bl; iss. July 17, 2001)
(hereinafter “Okuda”) in view of Steinberg in view of Lee (US
5,680,123; iss. Oct. 21, 1997) (hereinafter “Lee”) in view of
Monroe (WO 99/35818 Al; publ. July 15, 1999) (hereinafter
“Monroe”) in view of Corrigan et al. (US 5,585,575; iss. Dec. 17,
1996) (hereinafter “Corrigan”).
5) Claims 39-41, 49, and 50 under 35 U.S.C. § 103(a) as
unpatentable over Okuda in view Steinberg in view Lee in view of
Monroe in view of Corrigan and further in view of Aviv.
6) Claims 51 and 59 under 35 U.S.C. § 103(a) as unpatentable over
Courtney in view of Fukuoka in view of Steinberg and further in
view of Monroe.
7) Claim 56 under 35 U.S.C. § 103(a) as unpatentable over Courtney
in view of Fukuoka in view of Steinberg in view of Monroe and
further in view of Rogers et al. (US 6,346,964 Bl; iss. Feb. 12,
2002) (hereinafter “Rogers”).
8) Claims 60 and 63 under 35 U.S.C. § 103(a) as unpatentable over
Courtney in view of Fukuoka in view Steinberg and further in view
of Ito et al. (US 6,456,321 Bl; iss. Sept. 24, 2002) (hereinafter
“Ito”).
9) Claim 62 under 35 U.S.C. § 103(a) as unpatentable over Steinberg
in view of Courtney in view of Fukuoka and further in view Ito.
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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner can satisfy this burden by showing ‘“some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “‘The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.’” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(quoting KSR, 550 U.S. at 416).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of [those]
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review”); and In reNievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures”). Rather, “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.” KSR, 550 U.S. at
417.
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“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Further,
[i]f. . . the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention's limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of
no significance to claim construction because it cannot be said to
constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999) (citations omitted).
If the Examiner’s burden is met, the burden then shifts to Appellants
to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill in the
art at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Citing a large number of references does not negate the obviousness
of the combination when the prior art uses the various elements for the same
purposes as they are used by appellants, making the claimed invention as a
whole obvious in terms of 35 U.S.C. § 103. In re Gorman, 933 F.2d 982,
987 (Fed. Cir. 1991).
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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, 27F.3d551,553
(Fed. Cir. 1994).
ANALYSIS
Appellants’ arguments (App. Br. 9-47) do not persuade us of error in
the Examiner’s rejections (Ans. 2—48). We adopt the Examiner’s findings
and conclusions (id.) that claims 1—6, 8—12, 16-46, and 49-63 are
unpatentable over the cited references, and we adopt the Examiner’s
response (id. 48—71) to Appellants’ arguments (App. Br. 9-47), which
Appellants do not persuasively rebut (Reply Br. 2—13). We provide the
following for emphasis.
Appellants’ arguments alleging error because a person of ordinary
skill in the art would not combine the teachings of the references in
“surveillance” systems and/or surveillance applications (see, e.g., App. Br.
18—21, Reply Br. 2—3) are unpersuasive because use in surveillance does not
amount to a patentable distinction over the same structure used in other
applications; nor does use in surveillance defeat the Examiner’s reasons for
combining the various references (see, e.g., Ans. 4), even if those references
are not specifically related to surveillance. Schreiber, 128 F.3d at 1477 (“It
is well settled that the recitation of a new intended use for an old product
does not make a claim to that old product patentable”) (citations omitted).
With respect to the obviousness rejections generally, the Examiner has
provided evidence that the various elements existed in the prior art and
Appellants have not persuaded us that combining them would have been
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beyond the skill of an ordinarily skilled artisan. KSR, 550 U.S. at 417 (“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”); Leapfrog, 485 F.3d at 1161 (‘“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results’”) (quoting KSR, 550 U.S. at
416); KSR, 550 U.S. at 418 (The Examiner can satisfy this burden by
showing “‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’”) (quoting Kahn, 441 F.3d at
988). We find the Examiner has advanced a prima facie case that the claims
would have been obvious, which Appellants have not persuasively rebutted.
Appellants’ arguments alleging error because certain references
“teach away” (see, e.g., App Br. 22—23) are unpersuasive of error.
Appellants’ assertions are not supported with sufficient persuasive argument
or evidence that the references discouraged or would have misled from the
claimed invention. See Gurley, 27 F.3d at 553.
We find unpersuasive of error Appellants’ arguments that claim 61 ’s
“wherein the images stored on the memory card can be viewed only by
removing the card from the slot and inserting the card into a suitable reader”
is absent in the prior art. Appellants state that “the [EJxaminer ignores the
teachings of the same reference, Courtney, after the section indicated by the
Examiner.” Reply Br. 4. But as Appellants’ argument acknowledges, the
section discussing displays was not cited by the Examiner. Id. Negative
limitations such as “can be viewed only by ...” do not amount to a
patentable distinction just because the prior art somewhere discloses the
structure that makes the negation possible, in this case a display. Removing
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the display (i.e., not including a display in the proposed structure) discloses
the limitation.
For the remaining arguments, Appellants are referred to the
Examiner’s responses (Ans. 48—71) in view of the principles of law recited
above.
DECISION
In view of the foregoing, we affirm the Examiner’s decision to reject
claims 1—6, 8—12, 16-46, and 49-63.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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