May Patents Ltd.

Patent Trials and Appeals Board

Oct 26, 2020

15213876 - (D) (P.T.A.B. Oct. 26, 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.
15/213,876 07/19/2016 Yehuda BINDER BINDER-006-US9 6644
131926 7590 10/26/2020
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
BUKOWSKI, KENNETH
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
10/26/2020 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 2019-002192
Application 15/213,876
Technology Center 2600
____________________

Before JEFFREY S. SMITH, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.

KENNY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
In a Final Office Action, the Examiner rejected claims 1–61, which
constitute all pending claims. Final Act. 1. Pursuant to 35 U.S.C. § 134(a),
Appellant1 appeals from the Examiner’s decision to reject claims 1–61.
Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as May Patents Ltd.
Appeal Br. 2.
Appeal 2019-002192
Application 15/213,876
2
CLAIMED INVENTION
According to Appellant, “[t]he present invention relates generally to
devices (such as displays) controlled by face detection.” Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A device for use with a cable simultaneously carrying DC
power and bi-directional serial digital data over the same
wires, the device comprising:
a flat screen for visually displaying information;
a digital video camera for capturing digital video data, the
digital video camera having a center line of sight and being
mechanically fixed so that the digital video camera is
maintained in a fixed position relative to the flat screen;
a splitter having first, second, and third ports for passing
the bi-directional serial digital data between the first and
second ports and for passing the DC power between the first
and third ports;
a connector coupled to the first port for connecting to the
cable;
a transceiver coupled between the second port and the
digital video camera for transmitting the digital video data to
the cable; and
software and a processor to execute the software coupled
to control the flat screen, the transceiver, and the digital video
camera.
REFERENCES
Corbett
Yamada
Binder
Cho
Xu
Kitaura
Karam
US 6,061,434
US 2004/0052504 A1
US 2005/0163152 A1
US 2006/0067367 A1
US 2007/0126884 A1
US 2007/0132725 A1
US 2008/0244284 A1
May 9, 2000
Mar. 18, 2004
July 28, 2005
Mar. 30, 2006
June 7, 2007
June 14, 2007
Oct. 2, 2008
Appeal 2019-002192
Application 15/213,876
3
REJECTIONS
Claims 1–61 stand rejected under 35 U.S.C. § 112 (a) for failing to
comply with the written description requirement. Final Act. 11.
Claims 1–8, 11, 15–18, 30–43, 46, and 61 stand rejected under 35
U.S.C. § 103 as unpatentable over the combination of Binder and Xu. Final
Act. 12.
Claims 9, 10, 19–21, 44, 45, and 50–52 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Binder, Xu, and Applicant
Admitted Prior Art (AAPA). Final Act. 15.
Claims 12, 13, 47, and 48 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Binder, Xu, and Cho.
Final Act. 16.
Claims 14 and 49 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Binder, Xu, and Karman. Final Act.
17.
Claims 22–26 and 53–57 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Binder, Xu, and Yamada. Final Act.
18.
Claims 27 and 58 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Binder, Xu, Yamada, and Corbett.
Final Act. 19.
Claims 28, 29, 59, and 60 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Binder, Xu, and Kitaura. Final Act.
19.
ANALYSIS
Having considered the positions advanced by the Examiner and
Appellant in light of this appeal record, unless noted otherwise, we affirm
Appeal 2019-002192
Application 15/213,876
4
the Examiner’s written description and obviousness rejections for the
reasons set forth in the Answer to the Appeal Brief and Final Office Action
appealed from, which we adopt as our own. We add the following
explanations regarding the written description rejection, primarily for
emphasis.
35 U.S.C. § 112(a)
A. Claims 1–30 and 33–38
The Examiner finds that the Specification does not describe the
splitter and splitter arrangements recited in claims 1–30 and 33–38. Final
Act. 11. Each of these claims recites, or incorporates through dependency,
the limitation of “a splitter having first, second, and third ports for passing
the bi-directional serial digital data between the first and second ports and
for passing the DC power between the first and third ports.” Claims 1 and
33 expressly recite this limitation. Claims 2–30 and 34–38 incorporate this
limitation through dependency from claims 1 and 33, respectively.
Appellant argues that the Specification describes the recited splitter
because splitters were well known in the art and, in related applications, the
Examiner did not reject the claims that recite splitters. Appeal Br. 7.
Appellant further argues that Figure 58 of the Specification describes the
recited splitter. Reply Br. 2.
We sustain the Examiner’s written description rejection of these
claims. First, the fact that splitters were well known in the art does not mean
that Appellant had possession of the claimed device with the recited splitter.
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
(“a description that merely renders the invention obvious does not satisfy the
[written description] requirement”) (citing Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1571–72 (Fed. Cir. 1997)). Second, the fact that the
Appeal 2019-002192
Application 15/213,876
5
Examiner did not reject similar recitations in other applications does not
mean that the rejection here is in error. Third, Appellant’s reliance in its
Reply on Figure 58 for written description support is belated. Appellant
should have presented its argument regarding Figure 58 in its Appeal Brief,
so the Examiner could respond. 37 C.F.R. § 41.41(b)(2). Fourth, even if we
were to consider Appellant’s argument regarding Figure 58, we would not
agree that Figure 58 demonstrates support for the limitation at issue. In its
Reply, with annotations, Appellant identifies how Figure 58 purportedly
shows a splitter with first, second, and third ports. Reply Br. 2. Appellant,
however, has not identified how the identified splitter is (i) “for passing the
bi-directional serial data between the first and second ports” and (ii) “for
passing the DC power between the first and second ports.” Id. And such
characteristics are not apparent from Appellant’s annotations, the
Specification, or the text of the Reply Brief. Id. Thus, we sustain the
written description rejection of claims 1–30 and 33–38.
B. Claims 24–27 and 55–58
The Examiner finds that the Specification does not describe the
cellular modem recited in claims 24–27 and 55–58. Final Act. 11. Each of
claims 24–27 and 55–58 recite, or incorporate through dependency, the
limitation of “a cellular modem coupled to the cellular antenna for
transmitting serial digital data to, or receiving serial digital data from, the
cellular telephone network.” Claims 24 and 55 expressly recite this
limitation. Claims 25–27 and 56–58 incorporate this limitation through
dependency from clams 24 and 55, respectively.
Appellant argues that the term “cellular modem” was well known in
the art and that the Specification discloses cellular communication. Appeal
Br. 5. Appellant also argues that the term “cellular modem” has been recited
Appeal 2019-002192
Application 15/213,876
6
in claims in related application that were not rejected for a lack of written
description. Id. at 5–6; Reply Br. 2.
We sustain the Examiner’s written description rejection of these
claims. First, the fact that cellular modems were well known in the art does
not mean that Appellant had possession of the claimed device using the
recited cellular modem. Ariad, 598 F.3d at 1352. Second, the fact that the
Examiner did not reject similar recitations in other applications does not
mean that the rejection here is in error.
C. Claims 31, 32, 39–54, and 59–61
The Examiner does not identify any recitation in claims 31, 32, 39–54,
and 59–61 as lacking written description support. Final Act. 11. Further,
none of these claims depend from any of claims 1–30, 33–38, and 55–58,
addressed above. Thus, we do not sustain the written description rejection
of claims 31, 32, 39–54, and 59–61.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–61 112 Written
Description
1–30, 33–38,
55–58
31, 32,
39–54,
59–61
1–8, 11, 15–
18, 30–43, 46,
61
103(a) Binder, Xu 1–8, 11, 15–
18, 30–43, 46,
61

9, 10, 19–21,
44, 45, 50–52
103(a) Binder, Xu, AAPA 9, 10, 19–21,
44, 45, 50–52

12, 13, 47, 48 103(a) Binder, Xu, Cho 12, 13, 47, 48
14, 49 103(a) Binder, Xu,
Karman
14, 49
Appeal 2019-002192
Application 15/213,876
7
Claims
Rejected
35
U.S.C.
§ Reference(s)/Basis Affirmed Reversed
22–26, 53–57 103(a) Binder, Xu,
Yamada
22–26, 53–57
27, 58 103(a) Binder, Xu,
Yamada, Corbett
27, 58
28, 29, 59, 60 103(a) Binder, Xu,
Kitaura
28, 29, 59, 60
Overall Outcome 1–61

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED