Ex Parte 6520642 et al

Patent Trial and Appeal Board

Dec 30, 2013

90012067 (P.T.A.B. Dec. 30, 2013)

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.
90/012,067 12/20/2011 6520642 213/261 9069
34055 7590 12/31/2013
PERKINS COIE LLP - LOS General
POST OFFICE BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/31/2013 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 Chapman/Leonard Studio Equipment, Inc.
1

____________________

Appeal 2013-007687
Application 90/012,067
Patent 6,520,642 B1
2

Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

PER CURIUM.

DECISION ON APPEAL

1
Chapman/Leonardo Studio Equipment, Inc. is the real party in interest.
Appeal Brief 2.
2
Issued February 18, 2003 to Leonard T. Chapman (hereinafter referred to
as the “'642 patent”).
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STATEMENT OF THE CASE
Appellant/Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306
from a Final Rejection of claims 14, 41, and 45-52. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM-IN-PART.

THE INVENTION
Appellant‟s invention is directed generally to “camera dollies and
camera pedestals.” '642 patent, col. 1, ll. 7-8. Claims 14 and 41, reproduced
below, are illustrative of the claimed subject matter:
14. A method of steering a camera dolly comprising the steps
of:
placing the dolly operator's hands on a steering bar on the
dolly;
selecting conventional steering mode by turning the
steering bar, with the operator's hands continuously remaining
on the steering bar;
selecting crab steering mode by turning the steering bar,
with the operator's hands continuously remaining on the
steering bar; and
selecting round steering mode by turning the steering bar,
with the operator's hands continuously remaining on the
steering bar.

41. A camera dolly, comprising:
a chassis;
first, second, third and fourth wheel units attached to the
chassis and rotatable relative to the chassis about a vertical axes
[sic];
steering system means for providing corrective, crab and
round steering mode operation to the wheel units; and
a steering handle on the chassis connected with the
steering system means, for steering the camera dolly and for
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shifting the steering system means into the corrective, crab and
round steering modes.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Krilanovich
Summers et al. (“Summers”)
Fisher
US 2,842,376
US 3,018,116
US 4,257,619
Jul. 8, 1958
Jan. 23, 1962
Mar. 24, 1981

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 14, 41, and 45-52 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fisher and Krilanovich. Ans. 2.
2. Claims 14, 41, and 45-52 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fisher and Summers. Ans. 4.

ANALYSIS
Appellant‟s claimed invention, as described in claims 14, 41, and 52,
for example, involves the ability, in a camera dolly having three steering
modes—crab, round, and conventional/corrective—to select steering modes
without the operator removing his/her hands from the steering mechanism.
It is undisputed that the prior art shows both a three-mode steering
mechanism as shown in Fisher as well as hands-on shifting/selecting as
shown in each of Krilanovich and Summers. See, e.g., App. Br. 8. In
Fisher, the camera operator steers using a T-bar steering mechanism 28, but
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must shift between steering modes using a separate shift lever 30 as shown
in Figure 1 below.

Figure 1 of Fisher reproduced above shows a camera dolly having separate
steering and shifting mechanisms.
As Appellant points out, Fisher suffers from a “hand-off” problem because
the operator must take his/her hand off of T-bar 28 in order to shift using
shift-lever 30. App. Br. 8.
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Krilanovich (and Summers), while only providing steering in two
modes—crab and conventional—solves the hand-off problem via a “steering
handle 13, 14 [] provided with a twist grip actuator in the form of a rotatable
handle bar shaft 55 that drives a reciprocating clutch shaft 54 via a pinion 61
and rack 62 … to select between conventional (Figs. 2 and 4) and crab (Figs.
3 and 5) steering modes.” Ans. 3. See also, Krilanovich col. 1, ll. 15-40;
col. 1, l. 55-col. 2, l. 4; col. 3, l. 75-col. 4, l. 19; col. 4, ll. 40-67; and col. 5, l.
28-col. 7, l. 35. Figures 8 and 9 below show Krilanovich‟s selector
mechanism 55 on the handle 13, 14.

Figures 8 and 9 of Krilanovich reproduced above show a selector
mechanism on the steering handle.
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Apparatus Claims 41, 47, and 52
3

Appellant asserts, inter alia, that claims 41, 47, and 52 “include
steering system means for providing corrective, crab and round steering
mode operation to the wheel units” and that due to this language, “[u]nder
35 U.S.C. 112 (6) these claims shall be construed to cover the corresponding
structure described in the specification and equivalents thereof.” App. Br.
23. We agree that apparatus claims 41, 47,
4
and 52 fall under 35 U.S.C. §
112, sixth paragraph, due to the inclusion of the recited “steering system
means for . . . .” We cannot agree with the Examiner that “the structural
modifier „steering system‟ . . . is known by those of ordinary skill in the art
to denote a type of structural device with a generally understood meaning in
the mechanical arts.” Ans. 12. In the mechanical arts, a “steering system”
allows almost endless possibilities as to the specific structure(s) that would
constitute the steering system such that it would provide no direction as to
any specific structure.
Having made the determination that the “steering system means” of
claims 41 and 52 is a means-plus-function term, we must turn to the
disclosure in Appellant‟s Specification and determine whether the prior art
steering systems are equivalents thereof. As Appellant points out, “[t]he
corresponding structure is shown in Figs. 9 and 10 and described at Col. 6,
lines 8-49 and Col. 16, lines 15-63, Col. 17, line 66 to Col. 18, line 59, and
Col. 19, line 55 to Col. 21, line 18.” App. Br. 23. Appellant further states

3
Although Appellant lists claim 51 in arguing the means-plus-function
language (see App. Br. 23), we believe this to be a typographical error that
should have referenced claim 52. Claim 51 is a method claim whereas claim
52 is an apparatus claim having means-plus-function claim language.
4
Claim 47 depends from claim 41.
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that “[t]he solution disclosed in the patent is a highly complex solution
having a large number of specialized fixed and moving parts” that are not
present in the prior art such as “multiple systems of stacked up short shift
pins pushed vertically through very thin sprockets, in separate front and rear
transmission. ” App. Br. 16 citing Chapman Dec. ¶¶ 1, 2 and 8; Reply Br. 3.
The specific structure developed and disclosed by Appellant in the
specification of the '642 patent to achieve the hands-on shifting in relation to
three-steering modes, i.e., the “steering system means,” is sufficiently
different from the mechanisms disclosed in the cited prior art that we cannot
consider them to be equivalent to Appellant‟s disclosed “steering system
means.” The Examiner also has not articulated any modifications to the
suggested combinations of the prior art that would result in a dolly having a
steering system disclosed in the specification of the '642 patent, or an
equivalent thereof. Accordingly, we reverse the Examiner‟s rejection of
apparatus claims 41, 47, and 52.
Method Claims 14, 45, 46, and 48-51
Appellant makes no separate argument with regard to method claims
14, 45, 46, and 48-51.

App. Br. 8. Accordingly, we select claim 14 as
representative of these method claims and claims 45, 46, and 48-51 stand or
fall with claim 14. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
It is the Examiner‟s position that “it would have been obvious to one
of ordinary skill in the art at the time the invention was made to modify
Fisher by providing a steering mode selector on the steering handle for
selecting between the steering modes because such a steering mode selector
allows the operator to smoothly select the desired steering mode without
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removing his hands from the steering handle such that no jar or interruption
in movement is introduced to the camera dolly.” Final Rej. 3. We agree. It
is clear that Krilanovich and Summers each provides a solution to the hand-
off problem by placing their respective mode selectors on the steering
handle. Hence, the recited method of selecting three steering modes by
turning a steering bar is fairly suggested by Krilanovich and Summers and
would have been obvious to one of ordinary skill in the art.
Appellant asserts that a “person of ordinary skill, motivated to solve
the hand-off problem and considering the combination of Fisher and
Krilanovich, would not be able to make the claimed apparatus or perform the
claimed methods, in any obvious way.” App. Br. 13. Claim 14, however,
recites a broad method having only one structural requirement, namely a
“steering bar on the dolly.” The rest of the claim recites only “selecting”
various steering modes “with the operator‟s hand continuously remaining on
the steering bar.” In particular, claim 14 does not require actual operation of
the camera dolly in each of the three steering modes, nor does the claim
require the transmission/linkage actually shifting into each of the modes.
5

Given this broad recitation, we determine that, despite Appellant‟s
arguments to the contrary, the Examiner has made a sufficient prima facie
showing that it would have been obvious to one of ordinary skill in the art to

5
Claim 14 requires only “selecti[on],” which can be reasonably interpreted
so as only to require a desire for or intent of an outcome without such
outcome being attained. For instance, in an electromechanical device having
a mode selector, if the device is powered off, an operator may “select”
various operating modes but such modes would not actually be achieved
because the power is off. It is not until the device is turned on that selection
translates to the desired outcome, i.e., an implementation of the mode.
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combine the prior art teaching of hand-on selection as shown in Krilanovich
and Summers with three-mode steering as shown in Fisher to result in the
method recited in claim 14.
As noted above, we have found the subject matter of the method
claims on appeal to be prima facie obvious. Whenever obviousness is found
with respect to the subject matter on appeal, and Appellant furnishes
evidence of secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully weighing the evidence for obviousness with
respect to the evidence against obviousness. See, for example, In re Eli Lily
& Co., 902 F.2d, 943, 945 (Fed. Cir. 1990). We are also mindful that the
objective evidence of nonobviousness in any given case may be entitled to
more or less weight depending on its nature and its relationship with the
merits of the invention. See Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1538
(Fed. Cir. 1983).
Appellant‟s secondary considerations amount to alleged failure of
others, long-felt need, and copying. See App. Br. 20. In support, Appellant
submits only a declaration/affidavit by the inventor, Leonard Chapman
(hereinafter “Declaration”). We find the Declaration unpersuasive for
several reasons.
The Declaration states that the claimed subject matter solved a
problem that was long standing in the art. There is no showing, however,
that others of ordinary skill in the art were working on the problem and if so,
for how long. In order to be considered a long felt-need, the need must have
been a persistent one that was recognized by those of ordinary skill in the
art. In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 605 (CCPA 1967)
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(“Since the alleged problem in this case was first recognized by appellants,
and others apparently have not yet become aware of its existence, it goes
without saying that there could not possibly be any evidence of either a long-
felt need in the . . . art for a solution to a problem of dubious existence or
failure of others skilled in the art who unsuccessfully attempted to solve a
problem of which they were not aware.”). Appellant only suggests, but does
not provide sufficient evidence, that the long lapse in time equates to a long-
felt need.
In addition, there is no evidence that if persons skilled in the art who
were presumably working on the problem knew of the teachings of the
above-cited references, they would still be unable to solve the problem. See
Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999)
(evidence of long felt need must show that the problem solved by appellant's
invention was known but not solved prior to the invention). See also
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983) (to
show failure of others, the evidence must establish that others skilled in the
art tried and failed to find a solution for the problem solved by the
Appellant).
Appellant asserts that because the J.L. Fisher Company introduced a
Model 11 after its Model 10, which has the same steering handle and
separate shift lever as the prior model and allegedly embodies the prior art
Fisher patent, “[t]he Fisher Company tried to solve the hand-off problem
when designing the Model 11 dolly, but was not able to do so.” Declaration
¶ 6. This assertion that Fisher Company tried and failed to arrive at a
solution is not substantiated by any underlying objective evidence of record,
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and thus, is entitled to little weight. We do not agree that lack of such a
feature in Model 11 is evidence of an attempt to solve the hand-off problem.
The Fisher Company may have just as easily determined that solving the
hand-off problem was unnecessary at the time and introduced a subsequent
model for other reasons, such as cost. Appellant‟s suggestion is certainly
plausible, but without actual evidence thereof it is merely conjecture.
Further, the Declaration only asserts that the particular solution(s) the
inventor tried took numerous failures before finally achieving the successful
solution disclosed in the ‟642 patent. Declaration ¶ 8. Although Appellant
asserts, albeit via attorney argument (see Reply Br. 2), that the prior art
cannot be combined as suggested by the Examiner, the Declaration does not
state or otherwise establish that the Declarant or anyone else in the art
actually tried and failed to combine the specific teachings of the prior art
devices in Fisher, Krilanovich, and Summers or similar devices.
Regarding copying, Appellant alleges copying only by showing that
subsequent devices incorporated three-mode selectors, but does not provide
any comparison as to how those subsequent devices achieved three-mode
steering while avoiding the hand-off problem so as to establish that the
subsequent devices are, in fact, copies of the device disclosed in the '642
patent. See Declaration ¶ 9. “Not every competing product that arguably
falls within the scope of a patent is evidence of copying.” Iron Grip Barbell
Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). The
Declaration is insufficient to show, however, that each of the dollies alleged
to be copies of Appellant‟s invention achieve three-mode steering in a
manner consistent with Appellant‟s disclosed solution.
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Copying may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d
1186, 1196-97 (Fed.Cir.2003); direct evidence such as disassembling a
patented prototype, photographing its features, and using the photograph as a
blueprint to build a virtually identical replica, see Advanced Display Sys.,
Inc. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000); or access to,
and substantial similarity to, the patented product (as opposed to the patent),
Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027
(Fed.Cir.1985), overruled on other grounds by, Midwest Indus., Inc. v.
Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed.Cir.1999) (en banc). The
Appellant's Declaration and the record are devoid of objective evidence
noted above that may indicate copying. Appellant‟s Declaration only shows
that each device uses a rotating handle selector on the T-bar, which was
already known from Krilanovich and Summers.
Furthermore, Appellant provides no time-frame in which the alleged
copies were developed. “Independently made, simultaneous inventions,
made „within a comparatively short space of time,‟ are persuasive evidence
that the claimed apparatus „was the product only of ordinary mechanical or
engineering skill.‟” Geo. M. Martin Co. v. Alliance Mach. Sys. Int'l LLC,
618 F.3d 1294, 1305 (Fed. Cir. 2010) (citing Concrete Appliances Co. v.
Gomery, 269 U.S. 177, 184 (1925).) Accordingly, based on the evidence
before us, the fact that five dollies providing three-mode, hands-on
operation, were subsequently introduced could just as easily be evidence of
simultaneous invention. Accordingly, we cannot say, based upon the
evidence before us that achieving the general concept of three-mode, hands-
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on steering requires anything more than ordinary mechanical or engineering
skill in view of the prior art of record.
In sum, the preponderance of the evidence provided by Appellant is
insufficient to support Appellant‟s contention that the method of claim 14
would not have been obviousness when that evidence is weighed in light of
the teachings of Fisher, Krilanovich, and Summers. Accordingly, we affirm
the Examiner‟s rejections of claim 14 as unpatentable over the combinations
of Fisher with either of Krilanovich or Summers. For similar reasons, we
also affirm the rejections of claims 45, 46, and 48-51.

DECISION
For the above reasons, we REVERSE the Examiner‟s decision to
reject claims 41, 47, and 52 and we AFFIRM the Examiner‟s decision to
reject claims 14, 45, 46, and 48-51.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

alw

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Patent Owner:
Perkins Coie LLP-Los General
Post Office Box 1208
Seattle, WA 98111-1208

Third Party Requester:
Crockett & Crockett, PC
26020 Acero
Suite 200
Mission Viejo, CA 92691