May Patents Ltd.

Patent Trials and Appeals Board

Jul 27, 2020

15097562 - (D) (P.T.A.B. Jul. 27, 2020)

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.
15/097,562 04/13/2016 Yehuda BINDER BINDER-005-US9 8978
131926 7590 07/27/2020
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
FEREJA, SAMUEL D
ART UNIT PAPER NUMBER
2487
MAIL DATE DELIVERY MODE
07/27/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YEHUDA BINDER

Appeal 2019-003108
Application 15/097,562
Technology Center 2400
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE

1 Appellant has identified four prior appeals that “may be related to, directly
affect or be directly affected by, or have a bearing on” the present appeal.
Appeal Br. 2. These four prior appeals are (a) 2016-001549 based on
Application No. 13/528,205, (b) 2018-006266 based on Application No.
13/893,909, (c) 2018-007309 based on Application No. 13/893,976; and, (d)
2018-002514 based on Application No. 12/256,468. See Appeal Br. 2.
Appeal 2019-003108
Application 15/097,562

2
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 7–18, which constitute all the
claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to electric shavers
having electronic imaging functions.” Spec. 1:2–3. Apparatus claim 1 is the
sole independent claim, is illustrative of the claims on appeal, and is
reproduced below.
1. A handheld device for capturing and displaying images
and for identifying an element in the images, the device
comprising:
a first digital camera for capturing a first image, the first
digital camera comprising a first optical lens for focusing the
received light and a first output for outputting a first digital signal
carrying a representation of the first captured image;
a second digital camera for capturing a second image
distinct from the first image, the second digital camera
comprising a second optical lens for focusing the received light
and a second output for outputting a second digital signal
carrying a representation of the second captured image;
a multiplexer coupled to the first and second outputs for
producing multiplexing the first and second digital signals to
produce a multiplexed signal;
a port for coupling to a communication medium;

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “May
Patents Ltd.” Appeal Br. 2.
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a transmitter coupled between the port and the multiplexer
for transmitting the multiplexed signal to the communication
medium;
a digital image processor coupled to the digital cameras
for receiving the digital signals for receiving and processing the
captured images;
a rechargeable battery coupled to power the digital
cameras, the digital image processor, and the multiplexer; and
a single portable and handheld casing housing the digital
cameras, the digital image processor, and the multiplexer,
wherein the casing comprises two opposed first and
second exterior surfaces, the first optical lens is attached to the
first surface and the second optical lens is attached to the second
surface, and
wherein the digital image processor is operative to identify
the element in the captured images using pattern recognition.
EVIDENCE
Name Reference Date
Seo et al. (“Seo”) US 2006/0019700 A1 Jan. 26, 2006
Feher US 2007/0030116 A1 Feb. 8, 2007
Oswald et al. (“Oswald”) US 2007/0279482 A1 Dec. 6, 2007
Doughty US 2008/0176077 A1 July 24, 2008
Kesselman et al.
(“Kesselman”)
US 2008/0198801 A1 Aug. 21, 2008
REJECTIONS
Claim 1 is rejected under pre-AIA 35 § U.S.C. 103(a) as unpatentable
over Oswald and Doughty.
Claims 7–9 and 13–16 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Oswald, Doughty, and Feher.
Claims 10–12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Oswald, Doughty, Feher, and Seo.
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Claims 17 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Oswald, Doughty, Feher, and Kesselman.
ANALYSIS
The rejection of claim 1
as unpatentable over Oswald and Doughty
The Examiner relies primarily on Oswald for teaching the limitations
of sole independent claim 1, including the recitation to “a first digital
camera” and “a second digital camera.” Final Act. 12. However, the
Examiner acknowledges that “Oswald does not explicitly disclose” the last
“wherein” limitation, i.e., wherein image identification is accomplished
“using pattern recognition.” Final Act. 12. The Examiner relies on Doughty
for such teachings, reasoning that it would have been obvious to “modify”
Oswald to use Doughty’s pattern recognition, “in order to determine strain
fields on the skin surface” and to “quickly and conveniently apply a
removable pattern.” Final Act. 13 (referencing Doughty ¶¶ 7, 8).
Appellant presents many arguments on many fronts including whether
Doughty is “‘from the same field of endeavor’” (Appeal Br. 5), that the
“[E]xaminer [used] the claimed invention itself as a blueprint” (Appeal Br.
6), “such service teaches away from any processing” (Appeal Br. 7), and
comparing the Examiner’s need for a restriction with the Examiner’s finding
of obviousness (Appeal Br. 7–8). However, the most compelling argument
is Appellant’s assertion that the Examiner relied on an “[i]mproper
rationale for combining of the Oswald and Doughty references.” Appeal
Br. 8–12. Appellant addresses the Examiner’s reasoning contending that
Doughty’s “benefit is achieved only when using two cameras directed at
the same object and forming [a] 3D image.” Appeal Br. 11. Appellant
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states, “[i]n contrast, the Oswald reference ONLY teaches two cameras
directed to opposite direction, and hence cannot achieve” the stated benefit
of 3D imaging. Appeal Br. 11. In other words, as per Appellant,
“[m]odifying the two cameras in the Oswald reference clearly changes the
principle of operation of [Oswald’s] mobile device.” Appeal Br. 11.
First, it is to be noted that claim 1 recites “a first digital camera for
capturing a first image” and also “a second digital camera for capturing a
second image distinct from the first image.” Emphasis added. Such
“distinct from” language does not preclude the second image from being
employed to generate a 3D image of an object since two cameras, even if
spaced closely together and pointing in the same direction, can generate
“distinct” images.3
Second, it is not disputed that Oswald is directed to a device “for
simultaneous dual camera video telephony.” Oswald, Title. Oswald
discloses a mobile device, which “includes a first video camera pointing in a
first direction and . . . a second video camera pointing in a second direction.”
Oswald, Abstract; see also Oswald, Figs. 1–3. While this text might suggest
that both cameras may face in the same direction to obtain a 3D image of an
object, further investigation of Oswald shows that this is not the case.
Instead, Oswald clearly teaches “[a] mobile communication device having

3 Some common definitions of “distinct” are “distinguished as not being the
same, not identical” (Dictionary.com) and “distinguishable to the eye or
mind as being discrete . . . or not the same” (Merriam-Webster.com).
Appellant’s Specification uses this term in the same manner. See, e.g., Spec.
5:22 (using “distinct separated wire sets”); 36:12–13 (using “distinct and
different pins”).
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two video cameras having pointing directions 180º apart that operate
simultaneously.” Oswald ¶ 16. This is consistent with Oswald’s device
illustrated in Figures 1–3, i.e., two cameras on opposite sides of the mobile
device pointing in opposite directions. See also Oswald ¶¶ 27 (“a first video
camera 304 on its front face 303 and a second video camera 306 on its back
face 305”), 28 (discussing the “pointing directions” depicted in Figure 3 of
cameras 304 and 306). To be clear, Oswald teaches first camera 304 as
“typically having a pointing direction in the direction of the user,” which is
an “opposite orientation of the second image taken by the second video
camera 306 that is on the back face 305 of the device.” Oswald ¶ 36. As per
the teachings of Oswald, the first camera is used to track the user “in real-
time to determine their body and facial movements” while the second
camera is pointing in the “direction as the movement of the user.” Oswald
¶ 39. For example, Oswald states that this device “could allow a reporter to
capture a sequence of images of the scene, and simultaneously capture a
sequence of images of himself or herself describing the scene.” Oswald
¶ 16.
Doughty, on the other hand, is specific to “three dimensional (3D)
image correlation photogrammetry.” Doughty ¶ 2, id. (“This technique
allows for non-contact determination of 3D coordinates and 3D
displacements, 3D speeds, and accelerations, and plane strain tensor and
plane strain rate.”). Doughty is directed to “determin[ing] strain fields on
the skin surface of a living human” and a way to “quickly and/or
conveniently apply a removable pattern.” Doughty ¶¶ 7, 8. Thus, as
depicted in Doughty, the dual cameras’ focus is in the same general direction
and is upon the same object to achieve a three-dimensional representation of
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that object for strain measurement purposes. See, e.g., Doughty ¶ 47
(addressing “3D deformation and strain measurements”), 65 (addressing the
use of spaced 2D images to achieve 3D data), Fig. 6 (illustrating a flowchart
of stereo imaging).
Thus, combining Oswald’ apparatus with Doughty’s pattern
recognition teachings “in order to determine strain fields on the skin surface”
(as per the Examiner’s reasoning) would require both of Oswald’s cameras
to focus in essentially the same direction and upon the same object in order
to achieve stereo imaging of that object for strain measurement purposes.
This contradicts Oswald’s teachings that the cameras face in opposite
directions. See, e.g., Oswald, Abstract, ¶¶ 16–18, 27, 28, 36, 39.
We further note that the Examiner’s response does not address this
issue, or otherwise explain how the proposed modification would not change
the principle of operation of Oswald. See Ans. 17–18. Accordingly, and
based on the record presented, we agree with Appellant that “[m]odifying
the two cameras in the Oswald reference clearly changes the principle of
operation of [Oswald’s] mobile device.” Appeal Br. 11. In other words, the
Examiner has failed to provide articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)); see also Appeal Br. 9. We reverse the
Examiner’s rejection of independent claim 1 as being unpatentable in view
of Oswald and Doughty.
The remaining rejections of dependent claims 7–18
The Examiner does not rely on the further teachings of Feher, Seo,
and Kesselman in a manner that might cure the defect of the combination of
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Oswald and Doughty discussed above. See Final Act. 14, 16, 17.
Accordingly, we reverse the Examiner’s rejections of these claims (i.e.,
claims 7–18) as well.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103(a) Oswald, Doughty 1
7–9, 13–16 103(a) Oswald, Doughty,
Feher
7–9, 13–16
10–12 103(a) Oswald, Doughty,
Feher, Seo
10–12
17, 18 103(a) Oswald, Doughty,
Feher, Kesselman
17, 18
Overall
Outcome
1, 7–18

REVERSED