Ex Parte Stuehmeyer

Patent Trial and Appeal Board

Mar 15, 2016

12924156 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/924, 156 09/23/2010 Timothy E. Stuehmeyer
82357 7590 03/17/2016
James Ray & Associates Intellectual Property, LLC
4268 Northern Pike Rd
Monroeville, PA 15146
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.
TES 13003 6070
EXAMINER
USTARIS, JOSEPH G
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
jray@jrayassoc.com
apogeegroup@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY E. STUEHMEYER
Appeal2014-004911
Application 12/924, 1561
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b ).
We Affirm-in-Part, and enter new grounds of rejection of claims 10,
11, and 18, pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellant, the real party in interest is Timothy E.
Stuehmeyer, the sole inventor. App. Br. 2.
Appeal2014-004911
Application 12/924, 156
STATEMENT OF THE CASE2
The Invention
Appellant's claimed invention relates to a miniature viewing camera
and remote receiver unit. Abstract.
Exemplary Claims
Claims 1 and 10, reproduced below, are representative of the subject
matter on appeal (emphases and lettering added to disputed limitations):
1. A remote visual observation and photography
apparatus for viewing and photographing objects in difficult to
reach, inaccessible narrow and confined spaces and transmitting
images to a remote site, comprising:
an elongated telescoping extensible and retractable wand;
the wand including an upper end and a lower handle end;
a miniature camera for photographing and remotely
transmitting the images of the difficult-to-reach, inaccessible,
narrow and confined spaces;
[L 1] a pivoting member connecting the miniature camera
to the upper end of the wand and having a connection by way of
locking threaded fasteners with the miniature camera and
having a pivot connection with the upper end of the wand;
a multi-channel receiver unit located at a position remote
from the miniature camera with the receiver unit capable of
receiving and processing the images transmitted from the
miniature camera;
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Oct.
21, 2013 ); Reply Brief ("Reply Br.," filed Feb. 28, 2014 ); Examiner's
Answer ("Ans.," mailed Dec. 31, 2013 ); Final Office Action ("Final Act.,"
mailed Mar. 20, 2013 ); and the original Specification ("Spec.," filed Sept.
23, 2010 ).
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Application 12/924, 156
the receiver unit including a plurality of function control
buttons and a display screen for displaying the images
transmitted from the miniature camera; and
the miniature camera transmitting in real time images of
the difficult-to-reach, inaccessible, narrow and confined spaces
and objects and features therein to the remotely situated
receiver unit.
10. The remote visual observation and photography
apparatus of claim 1, wherein the connection by way of locking
threaded fasteners with the miniature camera includes [L2] a
stem or rod extending from a surface of the miniature camera
being opposite to a surface of the miniature camera having lens
disposed thereon, the stem or rod having an aperture formed
therethrough.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
l'n."'.ln pf "'.ll T N h. r\O 1 L1.-'\ 1 T11 hr 1 Q ') (\(\(\
'-.../VU_I__I_ VL u_1_. \......./U v,VJ _._,-___,__, .JU_I_J _I_V' ,L.,,VVV
("Coan")
Watkins US 2002/0162867 Al Nov. 7, 2002
Chang US 2007 /0092088 Al Apr. 26, 2007
Matas et al. US 2008/0052945 Al Mar. 6, 2008
("Matas")
Heckendom et al. US 2008/0073495 Al Mar. 27, 2008
("Heckendom")
Marcus3 US 7,379,664 B2 May 27, 2008
Khamsepoor et al. US 2011/0243548 Al Oct. 6, 2011
("Khamsepoor")
3 The Marcus reference, cited in Appellant's Background section of the
Specification (2), but not cited in an Information Disclosure Statement, was
not relied upon by the Examiner. Instead, Marcus is utilized by the Board in
the new grounds of rejection set forth herein.
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Application 12/924, 156
Re} ections on Appea/4
RI. Claims 1, 6-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Coan5, Heckendom, and Watkins.
R2. Claims 2-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Coan, Heckendom, Watkins, and
Chang.
R3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Coan, Heckendom, Watkins, and
Khamsepoor.
R4. Claims 11, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Coan, Watkins, and
Khamsepoor.
R5. Claims 12, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Coan, Watkins, Khamsepoor,
and Chang.
R6. Claims 13 and14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Coan, Watkins, Khamsepoor,
Chang and Matas.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 8-33), we decide the
appeal of Rejection R 1 of claims 1 and 7 on the basis of independent
claim 1; we decide the appeal of Rejection RI of separately argued
dependent claims 6, 8, and 9, infra.
4 We note the Examiner has withdrawn the 35 USC§ 112, second paragraph
rejection of claims 2-8 in the Advisory Action mailed on Mar. 20, 2013.
5 The Examiner misspells the Coan reference as "Coen" in the Briefs.
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Application 12/924, 156
We address Rejection R3 of separately argued dependent claim 10,
infra.
We address Rejection R4 of claims 11, 17 and 18 separately, infra.
We address rejections R2 of claims 2-5, R5 of claims 12, 15, and 16,
and R6 of claims 13 and 14, not argued separately, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with Appellant's arguments with respect to Rejection R3 of
dependent claim 10. However, we disagree with Appellant's arguments with
respect to Rejection R 1 of claims 1 and 6-9 and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and arguments
regarding claims 1 and 10 for emphasis as follows.
1. Rejection RI of Claims 1 and 6-9
Issue
Appellant argues (App. Br. 15-19; Reply Br. 2--4) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Coan, Heckendom, and Watkins is in error. These
contentions present us with the following issue:
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Application 12/924, 156
Did the Examiner err in finding the cited prior art combination teaches
or suggests the contested limitation of" a pivoting member connecting the
miniature camera to the upper end of the wand and having a connection by
way of locking threaded fasteners with the miniature camera and having a
pivot connection with the upper end of the wand," as recited in claim 1?
Analysis
Appellant contends the Examiner uses an improper "substitution of
one known element for another" where "three components" (threaded pin,
slot and nut) are "substituted for at least two components" (ball and its
pivot). App. Br. 15. Appellant contends this is "more than 'substitution of
one known element for another' as has been established by KSR." App.
Br. 15-16.6
We are not persuaded by Appellant's arguments and agree with the
Examiner that substituting Coan's pivot member featuring a ball joint with
Watkin's pivot connection using threaded pin, slot and clinch nut is merely a
substitution of one known pivot joint assembly with another. Ans. 3-5. We
agree with the Examiner that the substitution is between the overall joints,
and that one pivot joint including an additional individual part compared to
the other does not render the substitution improper. Id. Furthermore, we
note Appellant admits the substitution is between "three components" and
"at least two components," thus obviating any absolute numerical basis for a
contention. App. Br. 15.
We also note that Appellant, while referencing KSR generally to
support the "improper substitution" contention, does not provide any specific
citation to KSR. App. Br. 16. We decline to speculate as to what precise
6 KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
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Application 12/924, 156
citation Appellant might have been considering in his reference to KSR in
the Brief. Appellant's assertions of improper substitution thus amounts to
unsupported attorney argument, and, therefore, we give them little weight.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996).
Appellant further contends the Examiner's "proposed combination
clearly changes the principle of (pivoting) structure of Coan." App. Br. 17.
Appellant asserts this is because "Watkins operates on a principle that the
threaded members 328 are hand tightened" (App. Br. 16), whereas Coan's
"ball joint does not require any effort to selectively (repeatedly) tighten and
loosen threaded fasteners." Id.
We are not persuaded by Appellant's arguments, and agree with the
Examiner's stated reasoning that both Coan and Watkins teach the pivoting
principle of secure pivoting, whether hand-tightened or not. Furthermore,
Appellant's argument is not commensurate with the scope of the claim
because Appellant's argued limitation alluding to any effort required to
tighten or loosen certain members is not recited in apparatus claim 1.
Therefore, we agree with the Examiner that the combination of Coan and
Watkins does not change the principle of pivoting in the Coan reference.
Ans. 7.
Appellant further argues a lack of motivation and a lack of proper
rationale to combine the references. App. Br. 17-19. Appellant contends
the "pivoting structure of threaded fasteners of Watkins would not have
afford Coan with more than he already possessed." App. Br. 18.
Appellant furthermore argues, "teachings of the prior art references
conflict. Coen provides for a ball-based pivoting. Watkins uses threaded
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fasteners and slots to pivot his camera in a different manner than Coen
does." Id.
We are not persuaded by Appellant's arguments for both the reasons
discussed above, and because the Examiner has rebutted these additional
arguments in the Answer. Ans. 7-10. Appellant has presented no evidence
that replacing the ball-based pivoting of Coan with the threaded fasteners
and slots pivoting assembly of Watkins was "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor has
Appellant provided objective evidence of secondary considerations which
our reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341,
1352 (Fed. Cir. 2013).
Accordingly, on this record, Appellant has not provided sufficient
evidence or argument to persuade us of any reversible error in the
Examiner's reliance on the combined teachings and suggestions of the cited
prior art combination to teach or suggest all the limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1 and grouped claims which fall therewith. See Claim Grouping,
supra.
Further, while Appellant raised additional arguments for patentability
of dependent claims 6, 8, and 9, rejected on the same basis as claim 1 (App.
Br. 19-21 ), we find the Examiner has rebutted each of those arguments in
the Answer by a preponderance of the evidence. Ans. 10-13. Therefore, we
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adopt the Examiner's findings and underlying reasoning, which we
incorporate herein by reference. Consequently, we have found no reversible
error in the Examiner's rejections of dependent claims 6, 8, and 9.
2. Rejection R2 of Claims 2-5
Appellant has not provided separate arguments with respect to
dependent claims 2-5, which depend from independent claim 1. We sustain
the Examiner's rejection of these claims under 35 U.S.C. § 103(a) for the
reasons given above for claim 1.
3. Rejection R3 of Claim 10 and Rejection R4 of claims 11 and 18
The Examiner finds Khamsepoor at paragraph 0028 and figure 2A
teaches "an extension coupling stem device 160 that is a stem or a rod, that
the extension 160 is located on the backside surface to that of the camera
opposite to a surface (the front surface) of the miniature camera having a
lens disposed thereon, and that the stem has an aperture 160d formed
therethrough." Ans. 13.
The Examiner further finds: "The stem device 160 is located on an
opposite rear surface to the front surface of the camera housing as shown by
figure 2A. Further, the stem 160 extends from that opposite surface in a
downward direction also shown by figure 2A." Ans. 14
Appellant contends the claimed subject matter requires that "a stem or
rod extending from a surface of the miniature camera being opposite to a
surface of the miniature camera having lens disposed thereon." App. Br. 23.
Appellant further contends "Coan, Watkins and Khamsepoor attach the pivot
to the edge/surface of the camera that is disposed normal (90 degrees) to the
surface having lens disposed thereon." Id. Thus, Appellant argues the cited
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references do not teach or suggest a pivot being attached to the surface
opposite the surface having a lens.
After reviewing the cited portions of the reference( s ), as relied on by
the Examiner (Final Act. 16-1 7, Ans. 13-15), we find the preponderance of
evidence supports Appellant's contentions (App. Br. 23-24), at least
regarding contested limitation [L2], i.e., "a stem or rod extendingfrom a
surface of the miniature camera being opposite to a surface of the miniature
camera having lens disposed thereon," as recited in claim 10. (Emphasis
added).
Although the Examiner has located an arguably close reference that
teaches a rod extending from a surface generally perpendicular to a surface
of the camera containing the lens (Khamsepoor, Fig. 2A, i-f 28), i.e., from a
bottom edge of the camera, we find the Examiner has not specifically
identified where contested limitation [L2], which claims attaching a rod to
the surface opposite that containing the lens; is taught or suggested in
Khamsepoor.
The PTO bears the initial burden of showing a prima facie case of
obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). Only
when a prima facie case of obviousness is established by the Examiner, does
the burden then shift to the applicant to come forward with evidence and/or
argument supporting patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed.
Cir. 2002). However, the prima facie burden has not been met and the
rejection does not adhere to the minimal requirements of 35 U.S.C. § 132
"when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection." Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
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Here, we find the Examiner has not clearly mapped at least contested
claim limitation [L2] to a corresponding specific feature described in
Khamsepoor, or any of the other references cited for this rejection.
For at least these reasons, we are persuaded of error regarding the
Examiner's § 103 rejection R3 of dependent claim 10, and rejection R4 of
independent claims 11 and 18, which each recite the contested "opposite"
limitation of claim 10 using commensurate or similar language. Therefore,
we reverse Rejection R3 of dependent claim 10 and Rejection R4 of
independent claims 11 and 18.
Because we have reversed the Examiner's rejections of independent
claims 11 and 18 on appeal, we also reverse Rejections R4, R5, and R6 of
dependent claims 12-17, which depend from claim 11.
NEW GROUNDS OF REJECTION UNDER § 103
CLAIMS 10, 11AND18
Under our authority under 37 C.F.R. § 41.50(b), we set forth new
grounds of rejection for claims 10, 11 and 18 under 35 U.S.C. § 103, as
being obvious over Marcus, U.S. patent No. 7,379,664 B2, in combination
with the references previously cited by the Examiner in Rejections R3
(claim 10 - over the combination of Coan, Heckendorn, Watkins and
Khamsepoor) and R4 (claims 11 and 18- over the combination of Coan,
Watkins and Khamsepoor). We note Marcus is a prior art U.S. patent cited
by Appellant in the Background section of the Specification. Spec. 2.
We adopt the Examiner's findings and conclusions in the Answer and
the Final Rejection for claims 10, 11, and 18, with the exception of the
findings regarding claim lO's limitation [L2] and the commensurate
limitations recited in claims 11 and 18.
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Regarding limitation [L2], we find Marcus's camera 102, which is
affixed to actuation table 114 with a ball and socket arrangement located
between the table and camera, where the actuation table 114 may be
mounted horizontally beneath camera 102, and where "it is conceivable
some manner of actuation table 114 may be mounted vertically to a vertical
surface of camera 102" teaches or at least suggests disputed limitation [L2]'s
"a stem or rod extending from a surface ... being opposite to a surface of
the miniature camera having lens .... " See Marcus, col. 4, 11. 49---61.
Specifically, we find the above-cited disclosure of Marcus teaches or
at least suggests limitation [L2]'s placement of "opposite to a surface of the
miniature camera having lens disposed thereon." We find the cited sections
of Marcus, in combination with the Examiner's applied prior art, teach or
suggest claim 1 O's disputed limitation [L2]. We have, therefore, entered a
new ground of rejection of claim 10 under 35 USC 103(a) over Marcus in
combination with Coan, Heckendom, Watkins and Khamsepoor.
We also find the combination of Marcus with the Examiner's cited
prior art in Rejection R4 teaches or suggests the disputed limitation [L2],
present in commensurate form in independent claims 11 and 18, and have
also entered a new ground of rejection of claims 11 and 18 under 35 USC
103(a) over Marcus in combination with Coan, Watkins and Khamsepoor.
We conclude the claimed inventions of claims 10, 11, and 18 would
have been obvious to a person of ordinary skill in the art in light of the
references relied upon in the new grounds of rejection. We reach this legal
conclusion because we are of the view that using "a stem or rod extending
from a surface of the miniature camera being opposite to a surface of the
miniature camera having lens disposed thereon" would have been obvious to
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try since there are only a small, finite number of possible surfaces upon
which the connection including a rod or stem can extend. 7
We leave it to the Examiner to determine the applicability of the thrust
of the new grounds of rejection to dependent claims 12-17, which depend
from independent claim 11.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2---6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a reply brief that were not raised in
the appeal brief or are not responsive to arguments raised in the Examiner's
Answer will not be considered except for good cause, see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to obviousness Rejection
RI of claims 1 and 6-9 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 2-5 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
7 Thus, where "the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option," a solution that is obvious to try may, indeed, be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citing
KSR, 550 U.S. at 398. See also Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1364 (stating the number of options must be "small or
easily traversed").
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(3) The Examiner erred with respect to obviousness Rejection R3
of claim 10 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we do not sustain the rejection.
(4) The Examiner erred with respect to obviousness Rejections R4-
R6 of claims 11-18 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we do not sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-9, and we
reverse the Examiner's decision rejecting claims 10-18.
In new grounds of rejection, we reject claims 10, 11 and 18 as being
obvious under 35 U.S.C. § 103(a) over the references cited and for the
reasons stated herein.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
... shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
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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-IN-PART
37 C.F.R. § 41.50(b)
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