Ex Parte Weber

Board of Patent Appeals and Interferences

Sep 29, 2010

10919843 (B.P.A.I. Sep. 29, 2010)

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.
10/919,843 08/17/2004 Eric D. Weber 2675-044805 8737
28289 7590 09/29/2010
THE WEBB LAW FIRM, P.C.
700 KOPPERS BUILDING
436 SEVENTH AVENUE
PITTSBURGH, PA 15219
EXAMINER
VO, TUNG T
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
09/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC D. WEBER
_____________

Appeal 2009-007246
Application 10/919,843
Technology Center 2600
____________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007246
Application 10/919,843

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-15. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

INVENTION
Appellant’s claimed invention is directed to an underwater fishing
camera that includes a watertight housing having a transparent part and a
video tube received in the watertight housing. The video tube has a light
receiving part positioned to view through the transparent part of the
watertight housing. When the watertight housing is suspended by the cable
in a body of water moving relative to the watertight housing, the watertight
housing faces in a downstream direction in the body of water moving
relative to the watertight housing. See Spec. ¶ [0009].
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An underwater fishing camera comprising:
a watertight housing having a transparent part;
a video tube received in the watertight housing, the video tube having
a light receiving part positioned to view through the transparent part of the
watertight housing;
a light source coupled to the watertight housing and operative to
output light outside the video tube to a side of the transparent part opposite
the light receiving part; and
a cable coupled to the watertight housing, wherein the watertight
housing and the cable are configured whereupon, when the watertight
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Application 10/919,843

3
housing is suspended by the cable in a body of water moving relative to the
watertight housing, the watertight housing is responsive to force(s) applied
thereto by the water due to said relative movement such that the transparent
part of the watertight housing faces in a downstream direction in the body of
water moving relative to the watertight housing.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Motohiko JP 02038995 Feb. 8, 1990
Kawarai JP 04133575 May 7, 1992
The following rejection is before us for review:
The Examiner rejected claims 1-15 under 35 U.S.C. § 103(a) as
unpatentable over Kawarai in view of Motohiko.

ISSUE
The pivotal issue is whether the combination of Kawarai in view of
Motohiko teaches the limitations of: “a light source . . . to output light
outside the video tube to a side of the transparent part opposite the light
receiving part” and “the watertight housing faces in a downstream direction
in the body of water moving relative to the watertight housing,” as recited in
claim 1.

PRINCIPLES OF LAW
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Appeal 2009-007246
Application 10/919,843

4
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court, quoting
Kahn, 441 F.3d at 988, stated that “‘[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). However, “the 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.” Id.
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
“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 the
references would have suggested to those of ordinary skill in the art.” Id. at
425.

ANALYSIS
Appellant does not contest that Kawarai teaches a camera that is
capable of facing downstream in a moving body of water (App. Br. 4).
However, Appellant argues that Motohiko’s camera and lighting lamps,
which are part of an underwater vehicle, enable images to be acquired in the
direction of movement of the underwater vehicle wherein the water is not
Appeal 2009-007246
Application 10/919,843

5
moving (App. Br. 4-5). Appellant concludes that the combination of
Kawarai and Motohiko would not result an underwater camera wherein the
video tube and the light source face in a downstream direction (App. Br. 5).
We are not persuaded by Appellant’s argument.
The Examiner (Ans. 4, 6) relied on Motohiko solely for the teaching
of a light source (Fig. 2, element 19) coupled to a watertight housing (Fig. 2,
watertight housing 6) and operative to output light outside the video tube
(Fig. 2, TV camera 18) to a side of the transparent part opposite the light
receiving part. Note that one cannot show non-obviousness by attacking
references individually (i.e., Motohiko not teaching a camera facing
downstream in a moving body of water) where the rejections are based on
combinations of references (i.e., Kawarai teaches a camera facing
downstream in a moving body of water). See Keller, 642 F.2d at 426.
The test for obviousness is not whether the features of a secondary
reference (i.e., Motohiko) may be bodily incorporated into the structure of
the primary reference but rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.
Id. at 425. The teaching value of Motohiko, introduced into Kawarai, is the
use of a light source on the side of a transparent window to illuminate the
image being received in an underwater environment.
The Examiner (Ans. 4) modified Kawarai’s camera by introducing an
underwater light to a side of the transparent part “to illuminate the light on
the fish when approaching the housing, so that the operator will see the
fish.”
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Application 10/919,843

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We find that the Examiner’s articulated reasoning provides a rational
underpinning to support the legal conclusion of obviousness, because as both
Kawarai and Motohiko deal with taking underwater images, a light source
would provide the advantage of underwater illumination, thereby providing
a better image. See KSR, 550 U.S. at 418.
For the above reasons, we will sustain the Examiner’s rejection of
claim 1 and for similar reasons the rejections of claims 2-15 as no other
additional arguments of patentability were presented with respect to these
claims.

ORDER
The decision of the Examiner to reject claims 1-15 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)(1)(v).

AFFIRMED

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THE WEBB LAW FIRM, P.C.
700 KOPPERS BUILDING
436 SEVENTH AVENUE
PITTSBURGH, PA 15219