Ex parte Winningstad

Board of Patent Appeals and Interferences

Jul 31, 1998

08146525 (B.P.A.I. Jul. 31, 1998)

Application for patent filed November 1, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte C. NORMAN WINNINGSTAD

_____________
Appeal No. 96-0552
Application 08/146,5251
______________
ON BRIEF
_______________
Before THOMAS, FLEMING and LEE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 to 11 and 14 to 20, which constitute
all the claims remaining in the application.
Appeal No. 96-0552
Application 08/146,525
2
Representative claim 18 is reproduced below:
18. A portable video recording system comprising:
a video sensor for receiving video images;
an audio sensor for receiving sounds;
a recorder unit for recording signals from the video and
audio sensors;
a jacket for fitting on an operator; and means for attaching
the video sensor, audio sensor and recorder unit on the jacket so
that when the operator puts on the jacket, images within the
operator’s line of sight are automatically tracked and received
by the video sensor independently of the operator’s hands and the
weight of the video recording system is evenly distributed on the
operator.
The following reference is relied on by the examiner:
Campbell 4,516,157 May 7, 1985
Claims 1 to 6, 8, 9, 11 to 15 and 17 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Campbell, and claims 7,
10, 16 and 18 to 20 stand rejected under 35 U.S.C. § 103 as being
obvious over Campbell.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answers for the
respective details thereof.
OPINION
We reverse both rejections of all the claims on appeal.
Appeal No. 96-0552
Application 08/146,525
3
At the outset, we note that claim 18 has been reproduced
above because of the note made by the examiner at the bottom of
page 2 of the answer. Claim 18 as reproduced in the brief is not
claim 18 on appeal. The above reproduced version of claim 18 is
the original unamended version of this claim, since claim 18 has
not been amended during the prosecution of the application.
As to independent claim 1, we agree with appellant’s view
that Campbell does not show or even suggest a portable video
camera that has a separate power supply and recording unit
located on opposite sides of an operator. Although we find that
col. 4, lines 42 to 49 do teach that the bulk of a recorder as
well as its power supply may be separated into two components in
separate containers, this portion and any other portion of
Campbell do not indicate that the power supply is located on an
opposite side of the operator from where the recorder unit is
located as required by independent claim 1 on appeal. In a
related sense, the distribution of the weight feature recited in
claim 1 and at the end of independent claim 11 on appeal is also
not taught in Campbell. Therefore, the artisan would not have
been placed in possession of the presently claimed invention in
independent claims 1 and 11 as is required by 35 U.S.C. § 102.
Appeal No. 96-0552
Application 08/146,525
4
The examiner’s responsive arguments at pages 5 through 7 of
the answer relating to the rejection of claims under 35 U.S.C.
§ 102 relate to positions proper to be advocated within 35 U.S.C.
§ 103 and not § 102. Use of the language such as quite obvious,
a suggestion implies, the disclosure in Campbell implicitly
suggests, and a mere design choice are arguments properly raised
within 35 U.S.C. § 103 and not 35 U.S.C. § 102.
Finally, claim 2 is rejected under 35 U.S.C. § 102, yet
contains a feature of a garment where a video sensor is attached
to the first shoulder of the garment and the audio sensor is
attached to the second shoulder of the garment. Dependent claim
7 and independent claim 18 stand rejected under 35 U.S.C. § 103
and specify that the attaching means is a jacket worn by an
operator. Our detailed study of Campbell leads us to conclude
that there is no express teaching or showing in Campbell of a
garment let alone a garment having a video sensor attached to a
first shoulder and an audio sensor attached to a second shoulder
of the same garment in dependent claim 2, as well as no teaching
or suggestion within 35 U.S.C. § 103 as to dependent claim 7 and
independent claim 18 of a jacket such that the attaching means
may comprise a jacket worn by an operator. The teachings and
showings in the various figures as well as the teachings and
Appeal No. 96-0552
Application 08/146,525
5
suggestions at col. 4, lines 42 to 49 and lines 66 to 68; col. 5,
lines 9 to 14 and 46 to 50 as well as col. 5, line 55 through
col. 6, line 20 do not lead us to conclude otherwise.
In view of the foregoing, the decisions of the examiner
rejecting various claims 1 to 11 and 14 to 20 under 35 U.S.C.
§ 102 and § 103 are reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 96-0552
Application 08/146,525
6
Stephen S. Ford
Marger, Johnson, McCollom & Stolowitz, P.C.
1030 S.W. Morrison Street
Portland, OR 97205