Ex Parte Moreb

Patent Trial and Appeal Board

Mar 28, 2013

11260437 (P.T.A.B. Mar. 28, 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.
11/260,437 10/28/2005 Philip Moreb 118860-21 5175
59582 7590 03/28/2013
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
CAMARGO, MARLY S.B.
ART UNIT PAPER NUMBER
2664
MAIL DATE DELIVERY MODE
03/28/2013 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 PHILIP MOREB
____________________

Appeal 2012-003322
Application 11/260,4371
Technology Center 2600
____________________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed Oct. 28, 2005 claiming priority from Provisional
Application No. 60/622,598 filed Oct. 28, 2004. The real party in interest is
Forensic Visions Inc. (App. Br. 3.)
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Application 11/260,437

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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1, 2, 11,
and 12. Claims 3-10 and 13-20 have been canceled. (App. Br. 5.) We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant’s invention is directed to the field of forensics as well as
surveillance utilizing a wireless or wired camera in communication with a
digital video recorder (DVR). (Spec. 1 ¶ [0002].)2
Representative Claim
Independent claim 1, reproduced below, further illustrates Appellant’s
invention:
1. A portable device for receiving and recording audio and
video information captured by a plurality of wireless and/or
hard-wired video cameras, comprising:
a carrying case including a base unit and a cover attached
to said base unit;
a digital video recorder and control device provided
within said carrying case;
receiving means provided within said carrying case for
receiving the audio and video information captured by the
plurality of video cameras and transmitted to said receiving
means, the captured audio and video information recorded in a
memory device of said digital video recorder;

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed July 26, 2011; and Reply Brief (“Reply Br.”) filed Dec. 29, 2011. We
also refer to the Examiner’s Answer (“Ans.”) mailed Oct. 20, 2011.
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wherein said receiving means include one or more plugs
for wired communication with one or more hard-wired video
cameras, and one or more antennas for wirelessly receiving the
information captured by one or more wireless video cameras;
a video monitor in communication with said receiving
means and said digital video recorder for displaying the video
information captured by the plurality of video cameras in real
time and for displaying said video information recorded in said
memory device of said digital video recorder on a time delayed
basis;
wherein said digital video recorder is capable of
simultaneously recording the audio and video information
captured by more than one of said wireless and/or hard-wired
video cameras; and
wherein said video monitor is capable of simultaneously,
separately displaying the video information captured by more
than one of said wireless and/or hard-wired video cameras.
Rejection on Appeal
The Examiner rejects claims 1, 2, 11, and 12 under 35 U.S.C. § 103(a)
as being unpatentable over Stewart (U.S. Patent 6,504,706 B2, issued Jan. 7,
2003), An (US Patent Pub. No. 2004/0131327 A1, published Jul. 8, 2004),
Buehler (US Pat. Pub. No. 2004/0130620 A1, published Jul. 8, 2004), and
Kligman (US Pat. Pub. No. 2001/0037509 A1, published Nov. 1, 2001).

ISSUES
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Did the Examiner err in improperly identifying the scope and
content of the prior and the level of ordinary skill in the art?
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2. Did the Examiner err in determining that one of ordinary skill
in the art would reasonably have combined the references?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.

ANALYSIS
Based on Appellant’s arguments we select independent claim 1 as
representative of Appellant’s arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(iv).
Scope and Content of Prior Art
Appellant contends that Buehler in the prior art “raises the issue of
analogy.” (App. Br. 19.) Appellant more particularly argues that Buehler
“does not, by reasons of its manifest lack of portability in a carrying case,
fall within the same field of endeavor as Appellant’s invention.” (App. Br.
20.) We do not agree with Appellant that Buehler necessarily falls outside
of the scope of Appellant’s invention merely because Buehler’s invention is
not portable, for the reasons discussed below.
Prior art is analogous when it is: (1) from the same field of endeavor
as the claimed invention; or (2) reasonably pertinent to the particular
problem faced by the inventor. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004); In re Wood and Eversole, 599 F.2d 1032, 1036 (CCPA 1979).
Where an art citation that is not from the same field of endeavor as a claimed
invention, it must be “reasonably pertinent” to the problem addressed by the
inventor. Prior art is “reasonably pertinent” when it would “logically
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commend itself” to an inventor’s attention in considering his problem. In re
Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007)(citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also
MPEP § 2141.01(a).
In the present case, the Examiner relied upon the teachings of Buehler
to show that a surveillance system having a plurality of cameras was well-
known in the art at the time of Appellant’s invention. (See Ans. 8-9, 18.)
Buehler is directed to the field of video analysis within a monitored
environment. (See Buehler, Abst.) As noted above, Appellant’s invention is
directed to “forensics as well as surveillance utilizing a wireless or wired
camera . . . .” (Spec. ¶ [0002] (emphasis added).) Because Buehler and the
present invention are directed to the field of surveillance (“monitored
environment”), we do not find that Buehler’s lack of portability renders the
teachings of Buehler non-analogous to the present invention. While we are
fully aware that hindsight bias often plagues determinations of obviousness,
Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that
the Supreme Court has clearly stated the “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,
401 (2007). We observe that Appellant has not shown how the cited
combination of references would have yielded unpredictable results.
Accordingly, we do not agree with Appellant that the Examiner failed to
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determine the appropriate level of skill in the art because the prior art
reflects the appropriate level.3
Motivation to Combine
Appellant contends that the Examiner failed to do more than state in
conclusory fashion why one of ordinary skill in the particular art to which
Appellant’s invention pertains could be “reasonably expected” to have
combined the references as the Examiner has argued. (App. Br. 22.) The
Examiner provides rationale for combining the references. (Ans. 8, 9-12,
and 13.)
“[F]actfinders may use common sense in addition to record evidence
to determine the legal issue of obviousness.” Perfect Web Tech., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009); see also Wyers v.
Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010); Ball Aerosol and
Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (2009). In
bridging the gap between prior art references and a conclusion of
obviousness, the factfinder may rely on the prior art references themselves,
the knowledge of those of ordinary skill in the art, the nature of the problem
to be solved, market forces, design incentives, the “interrelated teachings of
multiple patents,” (emphasis added) “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent,” or
the background knowledge, creativity, and common sense of the person of

3 Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed.
Cir. 1983). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001)
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ordinary skill. KSR, 550 U.S. at 418–21; see also Ruiz v. A.B. Chance Co.,
234 F.3d 654, 665 (Fed. Cir. 2000).
Thus, the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art, and an obviousness
“analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418. See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Here, for the reasons stated by the Examiner (Ans. 20), it is our view
that an artisan possessing common sense and creativity at the time of the
invention would have been familiar with various video and surveillance
systems, both portable and computer-based, at the time of Appellant’s
invention. Because the obviousness analysis may “include recourse [by the
factfinder] to logic, judgment, and common sense available to the person of
ordinary skill that does not necessarily require explication in any reference,
Perfect Web, 587 F.3d at 1329, and the technology is easily understandable,4
we conclude that the Examiner has stated “some rational underpinning to
support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appellant has not shown
error in the Examiner’s rationale.

4 See Centricut, LLC v. Esab Group, Inc. 390 F.3d 1361, 1369 (Fed. Cir.
2004).
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Appellant’s argument that the Examiner’s motivation to combine the
references is insufficient because the references are disparate is similarly
unavailing. (Reply Br. 7-9.) The record reflects that it is common sense that
a surveillance audio/video system be portable. See In re Lindberg, 194 F.2d
732, 735 (CCPA 1952) (Portability of a claimed device is insufficient to
patentably distinguish the device over an otherwise old (known) device
unless there are new or unexpected results.). While Stewart is directed to a
portable presentation system, as determined by the Examiner, cameras are
one of the peripherals that can be attached to Stewart’s system, thereby
suggesting the ability to monitor in real-time. (Ans. 18; Stewart, col. 3, ll.
33-38.) Buehler, as discussed supra, is analogous art in that it describes
video surveillance and analysis utilizing cameras and a monitor. (Ans. 9.)
Thus, we find Appellant’s contrary arguments unpersuasive of error in
the Examiner’s obviousness rejection of representative claim 1. Appellant
also does not persuade us of error in the Examiner’s obviousness rejection of
independent claim 11, which includes limitations of commensurate scope, or
dependent claims 2 and 12 not separately argued with particularity (supra).
Accordingly, we affirm the Examiner’s obviousness rejection of claims 1, 2,
11, and 12.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in rejecting claims 1,
2, 11, and 12 under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner’s rejection of claims 1, 2, 11, and 12 under
35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh