HANWHA TECHWIN CO., LTD.

Patent Trials and Appeals Board

Mar 14, 2022

2021000296 (P.T.A.B. Mar. 14, 2022)

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. 15/321,840 12/23/2016 Sungbong CHO HT70016 7388 71433 7590 03/14/2022 McLean IP Global 3010 Lyndon B Johnson Freeway Suite 1200 Dallas, TX 75234 EXAMINER SHIBRU, HELEN ART UNIT PAPER NUMBER 2484 NOTIFICATION DATE DELIVERY MODE 03/14/2022 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): contact@mcleanip.com jason.pahng@gmail.com jason.pahng@mcleanip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUNGBONG CHO, JEONGHUN LEE, and SEHYUEN RYU ____________ Appeal 2021-000296 Application 15/321,840 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, JOHHNY A. KUMAR, and MICHAEL CYGAN, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-16, which constitute all the claims pending in this application. Claims 17-24 are withdrawn. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We Reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2012). According to Appellant, the real party in interest in this appeal is “Hanwha Techwin Co., Ltd.” See Appeal Br. 2. Appeal 2021-000296 Application 15/321,840 2 STATEMENT OF THE CASE 2 Introduction Embodiments of Appellant’s claimed subject matter relate to “a remote control method, and more particularly, to a method of remotely controlling an image processing device.” See Spec. 1. Independent Claim 1 1. A remote control system comprising: an at least one source terminal capturing a monitoring image of a particular area; an image processing device assigning a channel number for identifying the monitoring image to each of at least one monitoring image transmitted by the at least one source terminal, and receiving at least one of the at least one monitoring image and displaying a received image on a display; and a mobile terminal receiving screen state information transmitted by the image processing device, and the mobile terminal generating a menu screen based on the received screen state information, and the mobile terminal receiving an input from a user through the menu screen and controlling the display of the image processing device according to a function of the menu screen received through the menu screen and selected by the user, wherein the menu screen of the mobile terminal is generated based on the screen state information, and the screen state information includes at least one of a screen 2 We herein refer to the Final Office Action, mailed September 30, 2019 (“Final Act.”); the Supplemental Appeal Brief, filed May 18, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed August 27, 2020, and the Reply Brief, filed October 9, 2020 (“Reply Br.”). Appeal 2021-000296 Application 15/321,840 3 state of the image processing device, content information output to the display of the image processing device, real-time output state information of a content output to the display of the image processing device, screen split mode information of the image processing device, pan- tilt-zoom (PTZ) support information of the source terminal, audio output state information of the image processing device, time information, and recording state information; and wherein the mobile terminal receives an input signal through a PTZ control menu; and transmits, to the image processing device, a signal for a PTZ control action of the source terminal based on the input signal so that at least one of panning action, tilting action and zooming action is to be applied to the source terminal according to the signal. Appeal Br. 21-22, Claims App. (disputed “wherein clause” claim limitation emphasized). Prior Art Evidence Relied Upon by the Examiner Name Reference Date Wilson 3 US 2008/0309759 A1 Dec. 18, 2008 Cheng US 2012/0044354 A1 Feb. 23, 2012 3 All reference citations are to the first-named inventor only. Appeal 2021-000296 Application 15/321,840 4 Table of Rejections Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1-4 112(a) Failure to comply with written description requirement B 1-4, 16 103 Cheng, Wilson C 5-15 102(a)(1) Cheng ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Written Description Rejection A of Claims 1-4 under 35 U.S.C. § 112(a) Regarding written description Rejection A, the Examiner finds: Claim 1 recites “the mobile terminal receives an input signal through a PTZ control menu.” However, the specification is silent in regard to the said “PTZ control menu” let alone the mobile terminal receiving an input signal through it. Dependent claims 2-4 inherit the deficiency of independent claim 1 and thereby are rejected under such. Final Act. 9. Appeal 2021-000296 Application 15/321,840 5 In support, Appellant refers to original claim 10. See Appeal Br. 11. We note that original claim 10 recites: The method of claim 5, wherein the paired mobile terminal receives an input from a user through the menu screen and controls the display of the image processing device according to a function of the menu screen selected by the user, and the menu screen supports at least one of a pan-tilt-zoom (PTZ) control mode, a screen split mode, an audio output mode, a content output position change mode, and a user input mode. (emphasis added). Our reviewing court guides that original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (“[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.”) (citing Eli Lilly, 119 F.3d at 1568) (emphasis added). “Although many original claims will satisfy the written description requirement, certain claims may not.” Ariad 598 F.3d at 1349. The Patent Rules require: [t]he claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. 37 C.F.R. § 1.75(d)(1) (emphasis added). Appeal 2021-000296 Application 15/321,840 6 Here, we find “clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” Id. For example: “receiving an input from a user through the menu screen and . . . pan-tilt-zoom (PTZ) support information of the source terminal.” Spec. 2, ll. 5,12-13. Essentially the same description is found on page 4 of the Specification, at lines 12 and 26. Because we find Appellant provides sufficient written description support in the original Specification to show possession of the invention claimed, we are constrained on this record to reverse the Examiner’s Rejection A of claims 1-4 under 35 U.S.C. § 112(a) for purportedly failing to comply with the written description requirement. Rejection B under 35 U.S.C. § 103 of Independent Claim 1 We focus our analysis on the last recited “wherein” clause of independent claim 1:4 wherein the mobile terminal receives an input signal through a PTZ [Pan, Tilt, Zoom] control menu; and transmits, to the image processing device, a signal for a PTZ control action of the source terminal based on the input signal so that at least one of panning action, tilting action and zooming action is to be applied to the source terminal according to the signal. (emphasis added). 4 Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). Appeal 2021-000296 Application 15/321,840 7 The Examiner finds the “wherein” clause of claim 1 is taught or suggested by Cheng. The Examiner finds that “all setting[s] of one or more camera[s] can be controlled from the computer 20a, device 38 or computer 34; units 20a, 38 and 34 may also send a control signal to pan, tilt and zoom.” Final Act. 11 (see Fig. 2 of Cheng). As evidence in support, the Examiner relies upon paragraphs 55 and 51 of Cheng. See Final Act. 11. We note that paragraph 30 of Cheng also describes elements 20a, 38, 34, which are depicted in Figure 2: Advantageously, the present system 12 includes a simplified configuration for the user as the users operating the various computing devices 20a-20c and 34 and 38 can simply connect directly to the camera 10 and 10a to configure the camera's settings via a drop down menu that is readily available with any mobile device that is connected to the internet 22 or connected to the camera 10 and 10a. Cheng ¶ 30 (emphasis added). In the Answer, the Examiner further explains that “the user operating the various computing devices 20a-20c and 34 and 38 can simply connect the camera to configure the camera’s settings via a drop down menu that is readily available with any mobile device.” Ans. 16. (citing ¶ 30 of Cheng). In the Reply Brief, Appellant refocuses the arguments from the Appeal Brief in rebuttal to the Examiner’s explanations in the Answer. Id. Appellant urges: Regarding claim 1, the most critical error of reasoning of the examiner is that Cheng’s device 34 [remote user laptop] does not send one of panning, tilting, and zooming signal to Cheng’s device 20a, as required in claim 1. Appellant’s device 130 sends one of panning, tilting, and zooming signal to 110 as required in Appeal 2021-000296 Application 15/321,840 8 claim 1 and as shown in Figure 1 of the originally filed drawings. Reply Br. 2-3 (emphasis added). As an initial matter of claim construction for the claim 1 terms “source terminal” and “image processing device” under BRI, we must provide “an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017) (citations omitted). Here, in support of the intended claim interpretation, Appellant reproduces Figure 1 from the Specification on page 3 of the Reply Brief. For clarity, we reproduce below Appellant’s Figure 1, that depicts a system diagram of a remote control system: Appeal 2021-000296 Application 15/321,840 9 Appellant’s Figure 1 is shown above depicting a system diagram of a remote control system, including at least one of source terminals 120, 121, and 122, an image processing device 110, and a mobile terminal 130. See Spec. page 4. Claim Construction for Claim 1 Term “source terminal” Consistent with the corresponding description found in the Specification for Appellant’s Figure 1 (reproduced above), we construe the claimed “source terminals” generally as cameras (e.g., depicted as 120, 121, 122) having integrated terminal features: Each of the source terminals 120, 121, and 122 monitors a particular area, captures an image of the area, and transmits the image to the image processing device 110. Each of the source terminals 120, 121, and 122 includes a terminal for transferring an input through text or creating a content. The created content is transmitted to the image processing device 110. Spec. 4, ll. 5-9 (emphasis added). But we note the exemplary supporting description on the same page of the Specification is broader: “Examples of the source terminals 120, 121, and 122 may include a network camera, a mobile phone, a camera, and a smartphone, and also include all thin terminals supporting processing and replaying of multimedia.” Spec. 4, ll. 19-21 (emphasis added). Claim Construction for Claim 1 Term “image processing device” Turning to the Specification for context, we note that image processing device 110, as depicted above in Appellant’s Figure 1, is described as follows: Appeal 2021-000296 Application 15/321,840 10 The image processing device 110 and the at least one of the source terminals 120, 121, and 122 may communicate with each other by wires or wirelessly. Examples of wireless communications may include Wi-Fi, wireless broadband Internet (WiBro), high speed downlink packet access (HSDPA), world interoperability for microwave access (WIMAX), Zigbee, and Bluetooth. Examples of the image processing device 110 may include a network video recorder (NVR), a digital video recorder (DVR), a set-top box, a personal computer, a digital television, a media projector, a handheld device, and a consumer electronics device. Spec. 4, ll. 10-18 (emphasis added). As previously noted, the Examiner finds that “all setting[s] of one or more camera[s] can be controlled from the computer 20a, device 38 or computer 34; units 20a, 38 and 34 may also send a control signal to pan, tilt and zoom.” Final Act. 11; see also Cheng Fig. 2. In the Answer, the Examiner explains that “the user operating the various computing devices 20a-20c and 34 and 38 can simply connect the camera to configure the camera’s settings via a drop down menu that is readily available with any mobile device.” Ans. 16. (citing ¶ 30 of Cheng). The Examiner reasons that Cheng’s mobile device 34 controls the camera 10 setting, which in turn (in the case of a zoom setting), causes the size of the image displayed at computer 20a to change. See Ans. 16. See Cheng, Fig. 1. The Examiner thus finds: changing the camera setting changes the size of the image that is displayed. As such the display of computer 20a is controlled by the menu that is available on the mobile device. Hence computer 20a is controlled by the mobile device and arguments in items 1 and 2 are moot. Furthermore in paragraph 0055 Cheng discloses computer 20a send[s] [a] control signal to [a] Appeal 2021-000296 Application 15/321,840 11 specific digital camera to pan, tilt and zoom (argument in item 3 is moot). Ans. 16 (emphasis added). Thus, we understand the Examiner’s mapping5 as reading the claimed “image processing device” on one of Cheng’s computers 20a, 20b, or 24 (Final Act. 10). Cheng expressly describes that “first destination 24 may be a computer 20a, 20b or 20c that is located closely adjacent to the camera 10.” Cheng ¶ 24. Although Appellant’s Specification does include an example of the claimed image processing device (110) that may include, inter alia, a personal computer (Spec. 4, l. 16), we do not find remote mobile devices 34 or 38 in Cheng’s Figure 2 connect to cameras 10 or 10a via computer 20a (i.e., “image processing device”) as an intermediary device, in a manner that teaches or suggests the transmission of a signal from the mobile terminal directly to the “image processing device” for “PTZ control action of the source terminal,” in the manner claimed: wherein the mobile terminal receives an input signal through a PTZ [Pan, Tilt, Zoom] control menu; and transmits, to the image processing device, a signal for a PTZ control action of the source terminal based on the input signal so that at least one of panning action, tilting action and zooming action is to be applied to the source terminal according to the signal. 5 The USPTO mapping rule requires: “When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. § 1.104(c)(2) (2019) (emphasis added). Appeal 2021-000296 Application 15/321,840 12 Claim 1 (emphasis added). Moreover, because of the lack of clarity in the Examiner’s mapping of the disputed claim limitations, and the lack of any clear claim construction by the Examiner regarding the disputed limitations, we find some degree of speculation would be required to affirm the Examiner on this record. However, “[a] rejection . . . must rest on a factual basis . . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Applying this legal guidance here, we decline to engage in speculation. We will not sustain the Examiner’s rejection without some concrete evidence in the record supporting the Examiner’s underlying factual finding and legal conclusions. See, e.g., In re Vaidyanathan, 381 F. App’x 985 (Fed. Cir. 2010), and In re Wallen, 565 F. App’x 867 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001) (“[T]he Board must point to some concrete evidence in the record in support of these findings. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.”). Accordingly, for essentially the same reasons argued by Appellant in the Briefs, we are constrained on this record to reverse the Examiner’s obviousness Rejection B of independent method claim 1. Because we have reversed the Examiner’s Rejection B of independent claim 1, for the same reasons, we reverse the Examiner’s Rejection B of associated dependent claims 2-4, which each depend directly from claim 1. Appeal 2021-000296 Application 15/321,840 13 We separately address infra obviousness Rejection B of dependent claim 16, which depends directly from independent claim 14 (rejected under anticipation Rejection C). Rejection C under 35 U.S.C. § 102 of Independent Claims 5 and 14 A legal conclusion that a claim is anticipated involves two analytical steps. See e.g., Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two- step inquiries. The first step in both analyses is a proper construction of the claims. . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” (internal citations omitted)). The claim is read on the corresponding features found in the reference: “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999). We have provided our claim construction above for the claim terms “image processing device” and “source terminal.” We note that independent claim 5 is silent regarding any mention of a “source terminal,” as recited in independent claims 1 and 14. In support of anticipation Rejection C of independent claims 5 and 14, the Examiner finds: “computer 34 and device 38 are receiving data from computer 20a (or receiving the current setting to be adjusted from computer 20a).” Ans. 18. The Examiner further explains the basis for the anticipation rejection: “In other words, the computer 34 must know how the image is displayed or the parameters of the image displayed on the computer 20a before Appeal 2021-000296 Application 15/321,840 14 performing any adjustment. How the image is displayed on the computer device refers to the screen state information of the computer 20a.” Id. (emphasis added). However, we are unable to find evidence in the cited paragraphs of Cheng that shows “computer 34 must know how the image is displayed or the parameters of the image displayed on the computer 20a before performing any adjustment.” 6 Ans. 18 (emphasis added). To the extent the Examiner is reading the “image processing device” of claims 5 and 14 on Cheng’s computer 20a (functioning as an intermediary device between the remote user device 34 (or 38) and cameras 10 and 10a (see Cheng’s Figure 2), we find no cited evidence in the record to support such a reading for essentially the same reasons discussed above regarding Rejection B of claim 1 under 35 U.S.C. § 103. To the contrary, paragraph 30 of Cheng describes that computer 20a can connect directly with the cameras 10 and 10a, as depicted in Cheng’s Figure 2: Advantageously, the present system 12 includes a simplified configuration for the user as the users operating the various computing devices 20a-20c and 34 and 38 can simply connect directly to the camera 10 and 10a to configure the camera’s settings via a drop down menu that is readily available with any mobile device that is connected to the internet 22 or connected to the camera 10 and 10a. Cheng ¶ 30 (emphasis added). 6 “Inherency … may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999) (internal citations omitted). Appeal 2021-000296 Application 15/321,840 15 Rejection C under 35 U.S.C. § 102 of Independent Claim 14 We additionally note that the Examiner relies on the mapping for claim 1 (rejected under obviousness Rejection B), without providing any separate detailed mapping for independent claim 14 (as rejected under anticipation Rejection C), even though claims 1 and 14 recite different language and are thus of different scope. See Final. Act. 15 (“Regarding claim 14, the limitation[s] of claim 14 can be found in claim 1 above. Therefore claim 14 is analyzed and rejected for the same reasons as discussed in claim 1 above.”). But the legal analysis to support an anticipation rejection (for claim 14) is not the same as the legal analysis to support a rejection under 35 U.S.C. § 103 (for claim 1). Although “anticipation is the epitome of obviousness” (Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984)), the inverse is not true. And “when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection,” the prima facie burden has not been met and the rejection violates the minimal notice requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Procedural due process requires notice and a fair opportunity for Appellant to respond. See e.g., Mathews v. Eldridge, 424 U.S. 319, 348-49 (1976) (“The essence of due process is the requirement that ‘a person in jeopardy of serious loss (be given) notice of the case against him and opportunity to meet it.’”) (internal citation omitted). On this record, we find the Examiner has not provided sufficiently detailed mapping for independent claim 14, as required under 37 C.F.R. Appeal 2021-000296 Application 15/321,840 16 § 1.104(c)(2) (2019),7 to satisfy the minimal notice requirement to establish the prima facie case, pursuant to the statutory requirements of 35 U.S.C. § 132(a). See supra n.5. See also In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Therefore, on this record and based upon a preponderance of the evidence, Appellant has persuaded us that the Examiner’s anticipation Rejection C of independent claims 5 and 14 is in error. 8 Accordingly, for essentially the same reasons argued by Appellant in the Briefs, as discussed above, we are constrained on this record to reverse the Examiner’s anticipation Rejection C of claims 5-15. Rejection B of Dependent Claim 16 For the same reasons discussed above regarding independent claim 14, we also reverse obviousness Rejection B of dependent claim 16, which depends directly from independent claim 14. We note that each dependent claim includes all the limitations of the claim(s) from which it depends. See 35 U.S.C. § 112(d). 7 An agency is bound by its own regulations. Service v. Dulles, 354 U.S. 363, 388 (1957). 8 Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments regarding anticipation Rejection C. See Beloit Corp., 742 F.2d at 1423. Further regarding anticipation Rejection C, we find Appellant’s “teaching away” argument is misplaced (App. Br. 18, last paragraph), because “[t]eaching away is irrelevant to anticipation.” Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). Appeal 2021-000296 Application 15/321,840 17 CONCLUSIONS The Examiner erred in rejecting claims 1-4 under 35 U.S.C. § 112(a) for failing to comply with the written description requirement The Examiner erred in rejecting claims 1-4 and 16 under 35 U.S.C. § 103, over the collective teachings and suggestions of the cited Cheng and Wilson references. The Examiner erred in rejecting claims 5-15 under 35 U.S.C. § 102(a)(1), as being anticipated by Cheng. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4 112(a) Failure to comply with written description requirement 1-4 1-4, 16 103 Cheng, Wilson 1-4, 16 5-15 102(a)(1) Cheng 5-15 Overall Outcome 1-16 REVERSED