Ex Parte OGUCHI et al

Patent Trial and Appeal Board

Oct 24, 2018

14039198 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/039,198 09/27/2013
52123 7590 10/26/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Takae OGUCHI
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.
P44628 2350
EXAMINER
REISNER, NOAM S
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAE OGUCHI,
TETSUO TAY AMA, EIMEI NAMMA,
and TOHRU TAKAHASHI
Appeal2017-009552
Application 14/039,198 1
Technology Center 2800
Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an
Examiner's decision finally rejecting claims 1, 3-12, 17, 18, 20, 22, and 23
1 The real party in interest is said to be Panasonic Intellectual Property
Management Co., Ltd. Appeal Brief dated December 13, 2016 ("App. Br."),
at 3.
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Application 14/039,198
under 35 U.S.C. § I03(a) as unpatentable over Cirker2 in view of Anderson. 3
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims on appeal are directed to a monitoring apparatus to be
connected to a shutter which opens and closes to limit a capturing area of an
image capturing device, such as a camera, and a monitoring method in the
monitoring apparatus. When the shutter is open, security is protected, and
when the shutter is closed, privacy is protected. See Spec. 1, 11. 11-19.
According to the claimed method, the shutter is controlled (i) to open
in response to a detected opening event ( e.g., an emergency button is
pressed4) and (ii) to close in response to a detected closing event ( e.g., a
predetermined amount of time has passed5). The shutter is further controlled
(i) to open in a monitoring mode and (ii) to close in a non-monitoring mode
based on a particular time schedule. See Appellants' Fig. 9 (identifying, for
example, a monitoring mode from 0:00 to 8:30 on weekdays and a non-
monitoring mode from 8:30 to 17:00 on weekdays). "[W]hen the shutter is
closed during the non-monitoring mode, and the opening event is detected,
priority is given to the opening event over the non-monitoring mode such
that the shutter opens." App. Br. 33-34. "[W]hen the shutter is opened
during the monitoring mode, and the closing event is detected, priority is
given to the monitoring mode over the closing event such that the shutter
remains open." App. Br. 34.
2 US 2011/0103786 Al, published May 5, 2011 ("Cirker").
3 US 2013/0182107 Al, published July 18, 2013 ("Anderson").
4 Spec. 8, 11. 34--35.
5 Spec. 9, 11. 13-16.
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Illustrative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitation at issue is italicized.
1. A monitoring apparatus to be connected to a shutter
which opens and closes to limit a capturing area of an image
capturing device, the monitoring apparatus comprising:
an event detector configured to detect an event indicative
of a closing event or an opening event; and
a first controller configured to control the shutter (i) to
open in response to the opening event detected by the event
detector and (ii) to close in response to the closing event
detected by the event detector, wherein
the first controller further controls the shutter (i) to open
in a monitoring mode and (ii) to close in a non-monitoring
mode, one of the monitoring mode and the non-monitoring
mode being changed to the other one of the monitoring mode
and the non-monitoring mode based on a given time schedule,
when the monitoring apparatus is in the non-monitoring
mode and the shutter is closed, and the event detector detects
the opening event, the first controller prioritizes the opening
event over the non-monitoring mode such that the first
controller controls the shutter to open, and
when the monitoring apparatus is in the monitoring mode
and the shutter is opened, and the event detector detects the
closing event, the first controller prioritizes the monitoring
mode over the closing event such that the first controller
controls the shutter to remain open.
App. Br. 30.
B. DISCUSSION
The Examiner finds that Cirker discloses a monitoring apparatus to be
connected to a shutter which opens and closes to limit a capturing area of an
image capturing device. Final Act. 6. 6 The Examiner finds that Cirker's
6 Final Office Action dated June 14, 2016.
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monitoring apparatus comprises an event detector configured to detect an
event indicative of a closing event or an opening event and a first controller
configured to control the shutter (i) to open in response to the opening event
and (ii) to close in response to the closing event. Final Act. 6. The
Examiner finds that opening and closing the shutter can be construed as
corresponding to the claimed monitoring and non-monitoring modes,
respectively. Final Act. 6. Therefore, the Examiner finds that Cirker's first
controller also controls the shutter (i) to open in a monitoring mode and (ii)
to close in a non-monitoring mode. Final Act. 6.
The Examiner finds that "when the monitoring apparatus is in the
non-monitoring mode and the shutter is closed, and the event detector
detects the opening event, the first controller prioritizes the opening event
over the non-monitoring mode such that the first controller controls the
shutter to open" as claimed. Final Act. 6-7 ( citing Cirker Fig. 8, step 850
("the camera starts in a non-monitoring mode, then transitions to the
monitoring mode in response to the opening event")); see also Final Act. 2-
3 ( finding that "[ t ]he disclosure of Cirker can be construed as being on a
24/7 non-monitoring mode schedule, which is only interrupted when an
opening event causes the need for security to override the need for privacy,
and priority is given to monitoring for security over non-monitoring for
privacy").
The Examiner finds:
Cirker does not disclose that one of the monitoring mode
and the non-monitoring mode is changed to the other one of the
monitoring mode and the non-monitoring mode based on a
given time schedule, and when the monitoring apparatus is in
the monitoring mode and the shutter is opened, and the event
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detector detects the closing event, the first controller prioritizes
the monitoring mode over the closing event such that the first
controller controls the shutter to remain open.
Final Act. 7.
The Examiner, however, finds:
The disclosure of Anderson, in contrast to that of Cirker,
can be construed as having a 24/7 monitoring mode in which
the camera is passively monitoring unless a threshold is reached
(i.e. an[] "opening event" as discussed by Applicant) in which
case the monitoring is increased to also record, and possibly
perform an alarm action. . . . When the motion detection falls
below a threshold (i.e. a "closing event" as discussed by
Applicant), Anderson returns to a passive monitoring mode
where the camera is on and shutter open, but is not recording
Final Act. 3.
The Examiner also finds that Anderson discloses that "the use of an
automated schedule can be useful for automating the monitoring system,
such [as] disabling the alarm during certain times to prevent false alarms."
Final Act. 4 ( citing Anderson ,r 111 ).
Finally, the Examiner finds:
Cirker and Anderson both are deeply concerned with the
competition of security and privacy when it comes to security
cameras. When confronted with such a choice, the ordinary
workman in the art would have ample motivation for selecting
either prioritizing security, which has the advantages of being
more secure and reassuring those being monitored of their
security, or prioritizing privacy, which has the advantages of
making people more comfortable in dressing rooms while also
saving energy. At periods of time when the user would have to
regularly disable the monitor due to privacy concerns, it would
have been obvious to one having ordinary skill in the art that an
automated schedule placing the camera in a default non-
monitoring mode like that of Cirker would save the user time
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for repeatedly placing the camera in a privacy mode, while still
enabling security should an event which required monitoring
should occur. Similarly, at times when there is little concern
for privacy (such as late at night), people may desire to feel
more secure by seeing that something is monitoring the area,
and the presence of a visible monitoring device may act as a
deterrent in and of itself. It therefore would have been obvious
to the ordinary workman to enable a passive monitoring mode
like that of Anderson such that the scene can be remotely
monitored and secured while saving recording space for actual
events of note. Furthermore, the choice of what action to
prioritize, monitoring for security or closing the shutter for
privacy, would be well within the purview of the ordinary
workman in the art in any direction, and since there would be
no unexpected results or undue experimentation would be
obvious to try (i.e. either the schedule takes priority, or the
event detection takes priority) even were the benefits and
motivations not clearly discussed and suggested by Cirker in
view of Anderson (see MPEP 2143).
Final Act. 4--5.
Based on the foregoing, the Examiner concludes that the claimed
monitoring apparatus and method would have been obvious to one of
ordinary skill in the art. See Final Act. 5, 7-8.
The Appellants argue that Anderson, like Cirker, teaches that the
detected event is always given priority over the operation mode. App. Br.
19. That is, "the mode/state of the system is always switched based on a
detected event regardless of whether the '24/7' monitoring mode system is
in the active mode or the passive mode." App. Br. 18 (emphasis omitted).
We disagree with the Appellants that the detected event in Anderson
is given priority over the operation mode. Regardless of whether
Anderson's system is in the active mode (e.g., recording an event) or the
passive mode (i.e., receiving images), Anderson's system is, nonetheless,
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always in the monitoring mode. That is, Anderson's system detects events
based on video processing of a substantially live sequence of images from a
video camera. Anderson ,r 45. Thus, Anderson's monitoring system
operates in a continuous or 24/7 monitoring mode, as found by the
Examiner. See App. Br. 22 ("ANDERSON always stays in the '24/7'
monitoring mode even while switching between active and passive
monitoring"); App. Br. 19 ("ANDERSON fails to disclose a closable shutter
at all"); cf Spec. 22, 11. 6-8 ( disclosing that the shutter is in the open state
during the monitoring mode).
The Appellants also argue that a conflict between a detected event, an
operation mode, and a schedule never occurs in Cirker or Anderson. App.
Br. 21. According to the Appellants,
since no conflict arises where a controller receives conflicting
instructions to control a status of the shutter (e.g., because both
of the references fail to disclose multiple factors that could give
rise to conflicting instructions to control the shutter, and instead
solely rely on a detected event to change a state of the
monitoring system), it is submitted that neither reference
discloses or renders obvious prioritizing, for any reason, the
"monitoring" mode over the closing event such that the
controller controls the shutter to remain open, as generally
recited in independent claims 1, 17 and 22.
App. Br. 22 ( emphasis omitted).
In response, the Examiner explains:
[T]he combination [ of Cirker and Anderson] as a whole must
be considered. Cirker clearly discloses a closing event which
instructs the camera to close a shutter. In combination, such an
instruction, when provided to the combination of Cirker in view
of Anderson when in the monitoring mode disclosed in
Anderson, would defer to the passive monitoring instruction
during those times when a monitoring mode like that of
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Anderson is utilized. As shown in Anderson step 75,[7J when
motion alert level falls below a threshold, which according to
Cirker is a closing event which, in a non-monitoring mode,
would instruct the shutter to close, the camera instead reverts to
a passive monitoring operation [in Anderson] rather than
closing the camera shutter of Cirker.
Ans. 9-10 (emphasis omitted). 8
The Examiner recognizes that one of ordinary skill in the art could
reasonably choose to give priority to closing the shutter as disclosed in
Cirker. Ans. 11. Nonetheless, the Examiner finds:
[I]t is just as reasonable for the ordinary workman in the art to
be persuaded by Anderson that passive monitoring, even if no
video is sent for privacy reasons, is beneficial and preferred for
certain uses. Merely because one viable combination is
suggested does not mean that any other reasonable
interpretation of the combination is improper, rather that both
would be well within the purview of the ordinary workman in
the art, especially when given conflicting benefits like security
and privacy. The ordinary workman would be well within their
capabilities to choose which scenarios and uses are best suited
for giving higher deference to privacy, and those scenarios and
uses are best suited for giving higher deference to security.
Ans. 11.
In response, the Appellants argue that:
[O]bviousness-based rejections cannot be maintained on the
basis of conclusory statements. Rather, the Examiner must
provide articulated reasoning with some rational underpinning
to support such a conclusion. In the present case, because the
7 Anderson Figure 4. Step 75 asks "Motion Alert Level> Event
Threshold?" If yes, step 76 indicates that the event is recorded, and if no,
step 77 asks "Motion Alert Level > Alarm Threshold?" If the answer to step
77 is no, the system returns to the passive monitoring mode and receives
images ( step 71).
8 Examiner's Answer dated May 1, 2017.
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closing event is always prioritized over maintain[ing] the
monitoring mode, Appellant submits that CIRKER and
ANDERSON both prioritize privacy over security, and thus the
Examiner's conclusion of obviousness is not supported by facts
gleaned from the prior art.
Reply Br. 15-16. 9
The Appellants' argument is not persuasive of reversible error in the
rejection on appeal. As discussed above, Anderson does not prioritize a
closing event over the monitoring mode, and thus does not prioritize privacy
over security. Rather, Anderson discloses a 24/7 monitoring mode.
Moreover, contrary to the Appellants' argument, the Examiner provides
articulated reasoning with some rational underpinning to support the
conclusion of obviousness. See Final Act. 4--5; Ans. 11. Significantly, the
Appellants do not direct us to any error in the Examiner's finding that it
would have been within the level of ordinary skill in the art "to choose
which scenarios and uses are best suited for giving higher deference to
privacy, and those scenarios and uses [which] are best suited for giving
higher deference to security." Ans. 11; see also KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person
of ordinary creativity, not an automaton.").
Finally, the Appellants argue that Cirker, either alone or in
combination with Anderson, "fails to disclose or render obvious a
monitoring apparatus including, inter alia, a controller that switches
operation modes between the non-monitoring mode and the monitoring
mode based on a time schedule [as claimed]." App. Br. 23 (emphasis
added). Referring to Anderson paragraph 111, which was relied on by the
9 Reply Brief dated July 3, 2017.
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Examiner, the Appellants argue that "defining a schedule to activate or
disable an alarm of an activity monitor of a '24/7' monitoring mode system
is completely different than opening/closing a shutter of a monitoring
apparatus based on a time schedule [as claimed]." App. Br. 24 (emphasis
omitted).
The Examiner recognizes that the timed schedule disclosed in
Anderson relates to activating and deactivating the alarm. Ans. 12.
Nonetheless, the Examiner explains:
Applying this principal of scheduled monitoring modes to the
combination of Cirker in view of Anderson would [] be well
within the purview of the ordinary skill in the art at the time the
invention was filed to provide for times when the non-
monitoring mode of Cirker is preferred and times when the
monitoring mode of Anderson is preferred, just as Anderson
teaches scheduling times when the alarm on mode is preferred
and times when the alarm off mode is preferred.
Ans. 12.
Again, in response, the Appellants argue that "defining a schedule to
activate or disable an alarm of an activity monitor is independent of, and
different from, defining a schedule to switch between the active and passive
monitoring modes of the activity monitor." Reply Br. 18 ( emphasis
omitted). For that reason, the Appellants argue that the Examiner "relies on
impermissible hindsight bias to support his position." Reply Br. 18.
The mere fact that Anderson discloses that a schedule may be used to
activate or deactivate an alarm rather than to switch a monitoring system to a
monitoring or a non-monitoring mode, without more, is not persuasive of
reversible error. "A person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR, 550 U.S. at 421. In that regard, the
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Examiner finds that one of ordinary skill in the art would have understood
that automating a schedule for setting a monitoring system to monitoring and
non-monitoring modes would save time while still balancing security and
privacy concerns. Final Act. 4; see also In re Venner, 262 F.2d 91, 95
(CCPA 1958) ("it is well settled that it is not 'invention' to broadly provide
a mechanical or automatic means to replace manual activity which has
accomplished the same result"). The Appellants do not direct us to any
evidence to the contrary.
On balance, a preponderance of the evidence weighs in favor of the
Examiner's conclusion of obviousness. Therefore, the obviousness rejection
of independent claims 1, 1 7, and 22 is sustained.
The Appellants do not present arguments in support of the separate
patentability of any of dependent claims 3-12, 18, 20, and 23. Therefore,
the obviousness rejection of claims 3-12, 18, 20, and 23 also is sustained.
C. DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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