Adasky, Ltd.

Patent Trials and Appeals Board

Feb 2, 2022

2021000239 (P.T.A.B. Feb. 2, 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. 15/799,436 10/31/2017 Vitaly KUPERMAN ADKY P0988 3601 122066 7590 02/02/2022 M&B IP Analysts, LLC 150 Morristown Road Suite 205 Bernardsville, NJ 07924-2626 EXAMINER GILES, NICHOLAS G ART UNIT PAPER NUMBER 2697 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): eofficeaction@appcoll.com pair@mb-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VITALY KUPERMAN and EYAL MADAR Appeal 2021-000239 Application 15/799,436 Technology Center 2600 Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and PHILLIP A. BENNETT, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. 1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Adasky, LTD. Appeal Brief 3. Appeal 2021-000239 Application 15/799,436 2 STATEMENT OF THE CASE Introduction The Application is directed to “camera lenses, and more specifically to removing ice and condensation from windows used in cameras.” Specification ¶ 1. Claims 1-20 are pending; claims 1 and 15 are independent. Appeal Brief 15-18. Claim 1 is reproduced below for reference (emphasis added)2: 1. A window for resistive heating, comprising: a transparent member having an outer edge, wherein the transparent member is made of a first material, wherein the first material is a low conductivity material; at least one set of two conductive pads disposed on the outer edge of the transparent member and electrically coupled to the transparent member and at least one source of electricity, wherein each conductive pad is made of a second material, and wherein obstructive matter accumulated on the transparent member is eliminated via resistive heating when electricity is conducted from the at least one source through the at least one set of two conductive pads and the transparent member; wherein the window is disposed in front of a camera, and the at least one set of two conductive pads is electrically coupled to electrical components of the camera, such that the at least one source of electricity is provided from the electrical components of the camera; and a controller configured to: determine when obstructive matter that can be cleared via heating is disposed on the transparent member; and cause a provision of electrical current to the conductive pads and through the transparent member causing resistive heating when such obstructive matter is detected. 2 We refer to the emphasized claim limitations as the “camera clause.” Appeal 2021-000239 Application 15/799,436 3 References and Rejection Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Askinazi (US 5,818,631; Oct. 6, 1998) in view of Danilov (US 2013/0062228 A1; Mar. 14, 2013) and Zhao (US 2008/0110254 A1; May 15, 2008). Final Action 3. ANALYSIS Appellant argues the Examiner’s rejection of claim 1 is in error, because the cited references do not teach or suggest the camera clause, as recited. See Appeal Br. 8. Particularly, Appellant contends “Danilov merely discloses a separate power supply unit 25 outside of the video camera,” as well as “a heater 11 arranged behind the camera at a distance from glass 5.” Appeal Brief 11, 10. The Examiner finds the combination of Askinazi in view of Danilov teaches or suggests the disputed camera clause. See Final Action 5; Answer 3. Particularly, the Examiner finds Askinazi teaches a “window for resistive heating,” and Danilov teaches a “window being disposed in front of a camera and the conductive pads being electrically coupled to electrical components of the camera.” Final Action 3, 5 (emphases added); Askinazi, Fig. 2; Danilov, Fig. 2. We find the Examiner’s reliance on Danilov is in error. See Reply Brief 5 (“[S]uch an interpretation would render the arrangement with the other features incongruous.”). The camera clause of claim 1 requires a camera having multiple features: there is a window in front of a camera, and electricity is provided from electrical components of the camera to the window. See Appeal Brief 15. In rejecting the claim, the Examiner cites different portions of Danilov to teach the camera: relying on Danilov to teach both (1) a window in front Appeal 2021-000239 Application 15/799,436 4 of a camera, because “Danilov disclosed ‘that a video camera 2 with transparent glass 5 disposed in front’” and (2) electrical components of the camera, because “for purposes of the rejection the examiner considered closed body 1 (as a camera housing container) as the ‘camera’ of the claim, where closed body 1 contains all of . . . power supply unit 25, and transparent glass 5, video camera 2 capturing images.” Answer 3, 5 (emphases added); Danilov, Fig. 2. Although Danilov’s video camera 2 is contained within the closed body 1 (see Danilov, Fig. 2), these are two distinct objects. For example, the transparent glass is in front of video camera 2, but it is inside closed body 1. See Danilov, Fig. 2, ¶ 51. Accordingly, the Examiner has not established Danilov teaches a window disposed in front of the camera, and the camera provides a source of electricity, as required by the camera clause of claim 1. The Examiner does not rely on Askinazi or Zhao for the claimed camera. See Final Action 5. Accordingly, we find the Examiner’s rejection of independent claim 1 is in error. We do not sustain the Examiner’s obviousness rejection of independent claim 1, or the claims dependent thereon. Independent claim 15 recites similar limitations, which are similarly rejected. Accordingly, we do not sustain the Examiner’s rejection of independent claim 15 or the claims dependent thereon. Appeal 2021-000239 Application 15/799,436 5 NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection and separately reject independent claim 1 under 35 U.S.C. § 112(a) for lacking sufficient written description support. Claim 1 recites, inter alia, “wherein the window is disposed in front of the camera.” Appeal Brief 15. We reject independent claim 1 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement, because the disclosure does not convey with reasonable clarity to those skilled in the art that, as of the filing date, Appellant was in possession of the claimed invention. See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). The disclosure is devoid of any window disposed in front of a camera; rather, Appellant’s Specification describes the window is part of the camera. See Specification 7 (“The camera apparatus comprises . . . a window), 17 (“[T]he window may be disposed in a camera.”). The Specification explains the “window may be disposed in front of the lens of the infrared camera” (Specification 18), but we identify no discussion of placing the window in front of the camera itself. Moreover, as the lens itself is inside the camera, the window is both in front of the lens and still part of (compared to in front of) the camera. See Figure 3, ¶ 25 (“Fig. 3 shows an isometric view of a camera 300 including the window 100,” and “[t]he camera 300 also includes a thermal core 310 . . . . [which] may include, but is not limited to, a lens.”) Based on the foregoing, we find the disclosure, as filed, does not describe a window “in front of” a camera, as recited in claim 1. Thus, we do not find any indication that Appellant’s Specification demonstrates Appeal 2021-000239 Application 15/799,436 6 possession of the claim limitation at the time of filing. We reject claim 1 as lacking written description support. For the above reasons, we find claim 1 does not comply with 35 U.S.C. § 112(a). We note the Patent Trial and Appeal Board is a review body, rather than a place of initial examination. We have rejected independent claim 1 based on our authority under 37 C.F.R. § 41.50(b). We have not, however, reviewed the remaining claims to the extent necessary to determine whether those claims are unpatentable. We leave it to the Examiner to ascertain whether the remaining claims should be rejected under 35 U.S.C. § 112, and whether the claims should be rejected under 35 U.S.C. §§ 102 or 103. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1-20 103(a) Askinazi, Danilov, Zhao 1-20 1 112(a) Written Description 1 Overall Outcome 1-20 1 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2021-000239 Application 15/799,436 7 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)