Ex Parte Bennett et al

Patent Trial and Appeal Board

May 30, 2018

13947706 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/947,706 07/22/2013
23345 7590
MCGUIREWOODS, LLP
1750 TYSONS BLVD
SUITE 1800
Tysons Corner, VA 22102
06/01/2018
FIRST NAMED INVENTOR
Dyer M. BENNETT
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2055882-5002US 7542
EXAMINER
BOYLAN, JAMES T
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
patents@mcguirewoods.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DYER M. BENNETT, SAMUEL HOLLIMAN, and
JAMES STUART REYNOLDS
Appeal2017-002953
Application 13/947,706 1
Technology Center 2400
Before JEAN R. HOMERE, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-27, which constitute all the claims pending in this
application. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants' Brief ("App. Br.") identifies Sirchie Acquisition Company
LLC as the real party in interest. App. Br. 3.
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Application 13/947,706
CLAIMED SUBJECT MATTER
The claims are directed to a digital video comparator for forensic
evidence which has multiple independently-controllable cameras and is
configured to allow a user to view forensic evidence with a continuous video
feed, capture images, and/ or enhance the views through the use of
incorporated lighting and matching filters. Spec. Abstract. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A comparator system, comprising:
a mounting base;
a vertical mounting structure connected to and extending
upward from the mounting base;
a plurality of movable arms connected to the vertical
mounting structure;
a plurality of cameras, each camera mounted to a
respective one of the plurality of movable arms; and
a computer communicatively coupled to the plurality of
cameras, the computer configured to receive image signals from
the plurality of cameras for forensic analysis.
App. Br. 20 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Demizu et al. ("Demizu")
Ogami
Paladini et al. ("Paladini")
Holland et al. ("Holland")
Engelen et al. ("Engelen")
Wakaizumi et al. ("Wakaizumi")
US 200710206094 Al
US 2012/0197438 Al
US 2013/0261446 Al
US 2014/0055619 Al
US 2014/0343699 Al
US 6,199,444 Bl
2
Sept. 6, 2007
Aug. 2, 2012
Oct. 3, 2013
Feb.27,2014
Nov. 20, 2014
Mar. 13, 2001
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Application 13/947,706
REJECTIONS
Claims 1 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogami and Paladini. Final Act. 3. 2
Claims 2, 3, 6-8, 12, 13, 16, 17, 22, and 25-27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ogami, Paladini, and
Holland. Final Act. 4--10.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogami, Paladini, Holland, and Engelen. Final Act. 10-11.
Claims 5 and 9-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogami, Paladini, and Demizu. Final Act. 11-13.
Claims 15 and 18-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogami, Paladini, Holland, and Demizu. Final Act. 13-15.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogami, Paladini, Holland, Engelen, and Demizu. Final
Act. 15.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogami, Paladini, and Wakaizumi. Final Act. 16.
ISSUES
First Issue: Has the Examiner erred in finding Ogami and Paladini
teach or suggest "a vertical mounting structure connected to and extending
upward from the mounting base," and "a plurality of moveable arms
2 We note the final Office Action includes a typographical error that lists the
incorrect claims as rejected over Ogami and Paladini. Based on the analysis
that follows, it is clear that independent claims 1 and 21 are rejected. See
Final Act. 3--4 (analyzing claims 1 and 21 ).
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connected to the same vertical mounting structure," as recited in independent
claims 1, 12, and 21?
Second Issue: Has the Examiner erred in finding it would have been
obvious to a person of ordinary skill in the art to combine the teachings of
Ogami and Paladini in the manner claimed?
Third Issue: Has the Examiner erred in finding Holland teaches or
suggests "a plurality of light sources associated with each of the plurality of
cameras are configured to selectively project white light, blue light, UV
light, green light, cyan light, amber light, red light and infrared light," as
recited in dependent claims 25-27?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments set forth in the Appeal Brief and the Reply Brief. We are not
persuaded by Appellant's arguments. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2-16) and (2) the findings, reasons, and explanations set
forth by the Examiner in the Examiner's Answer in response to Appellant's
Brief (Ans. 2-18) and concur with the conclusions reached by the Examiner.
We highlight the following for emphasis.
First Issue
Claim 1 recites the limitations "a vertical mounting structure
connected to and extending upward from the mounting base," and "a
plurality of movable arms connected to the vertical mounting structure." In
rejecting claim 1 as obvious over Ogamiand Paladini, the Examiner relies
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primarily on Paladini for these limitations. 3 More specifically, the Examiner
finds these limitations taught by Paladini as in two different ways as shown
below (we provide these annotations to better illustrate the Examiner's
findings):
Annotated Figure 2 of Paladini Shows a First Mapping to the
Disputed Claim Limitations (Final Act. 3--4)
3 We note in passing that although the Examiner does not rely on Ogami for
these limitations, it appears that Ogami also discloses them.
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~---------------:---:-------------------------;
[~~!!!~-:~·~:~:~~-~~~~~:~-~~~~~~~~-----------_j .. ~, ,,,
Annotated Figure 2 of Paladini Shows a Second Mapping to the
Disputed Claim Limitations (Ans. 16-17)
Appellants argue the Examiner has erred because the claims require
the recited "plurality of moveable arms" to be connected to "the same
vertical mounting structure," a configuration not shown in the first mapping
of Paladini provided by the Examiner. App. Br. 11. More specifically,
Appellants argue that only a single moveable arm is shown as being attached
to any vertical mounting structure. App. Br. 12. Appellants further contend
Paladini fails to show the recited "vertical mounting structure" because it
discusses a "base" only in connection with the nuclear probe 12, "it appears
logical that the base of the robotic assembly 11 is not the same as the base
for the 3D scanner 19." Id.
Appellants also argue the second mapping of Paladini is deficient
because the tabletop identified by the Examiner as the "vertical mounting
structure" is not "extending upward from" the mounting base. More
specifically, Appellants argue "extending" means "to stretch out or draw out
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to a certain point, or for a certain distance or time," citing a corresponding
dictionary definition. Reply Br. 2. Appellants argue Paladini does not fall
within the scope of this definition because "Paladini merely shows the plate
being placed on the smaller bottom structure in FIG. 2, but does not provide
any description as to whether the plate is extending from the bottom
structure or not," and that "the plate and the bottom structure appear to be
two separate pieces." Reply Br. 3.
We are not persuaded by Appellants' arguments and find both
mappings of Paladini to the claims are supported by a preponderance of the
evidence. Appellants contend claim 1 requires the "plurality of moveable
arms" must be connected to the same vertical mounting structure. However,
the language of claim 1 imposes no such requirement. The language in
claim 1 recites "a vertical mounting structure." It is well-understood that in
a claim using an open-ended transition term "comprising," the article "a"
ordinarily means "one or more." SanDisk Corp. v. Kingston Tech. Co., 695
F.3d 1348, 1360 (Fed. Cir. 2012) ("general rule that the use of the indefinite
articles 'a' or 'an' means 'one or more"'). Moreover "the later use of 'the'
and 'said' to refer back to an earlier claim term does not limit that claim
term to the singular." Id. Here, the claim recites "a vertical mounting
structure," which is properly understood to mean "one or more vertical
mounting structures."
Claim 1 does not specify that the "plurality of moveable arms" must
be connected to the "same" vertical mounting structure. Rather, it merely
recites that the plurality of moveable arms be "connected to the vertical
mounting structure." Under the rule set forth in SanDisk Corp., "the vertical
mounting structure" is properly understood as encompassing "the one or
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more vertical mounting structures." As such, the moveable arms need not be
attached to a single, or the same, vertical mounting structure, and instead
need only be attached to any one, or more than one, of the one or more
vertical mounting structures. This interpretation is confirmed by Appellants'
use of the phrase "a respective one of the plurality of moveable arms" later
in the claim, which indicates Appellants' intent to specify that each camera
is mounted to a specific moveable arm. That is, Appellants' choice not to
limit "connected to the vertical mounting structure" in a similar fashion
demonstrates that claim 1 does not require that the moveable arms be
connected the same vertical mounting structure.
Based on this construction, we agree with the Examiner that the first
mapping of Paladini teaches or suggests the recited vertical mounting
structure from claims 1 and 21 4 because it shows two (i.e., one or more)
separate structures extending from the mounting base (i.e., the table top),
and it also shows the more than one (i.e., a plurality) of moveable arms (11)
connected to the one or more vertical mounting structures.
We also are not persuaded the Examiner erred with respect to the
second mapping of the claim to Paladini. The language of the claim does
not impose any size or shape requirements on the "mounting base" or the
"vertical mounting structure" other than to specify that the vertical mounting
structure is "connected to" and "extending upward from" the base.
4 We note Appellants argue claim 12 separately and that claim 12 recites
"wherein the mounting structure is a common vertical mounting structure
connecting the plurality of moving arms." App. Br. 14--15. Although
Appellants may be correct this limitation of claim 12 does not read on the
Examiner's first mapping of Paladini, we find it does read on the second
mapping as discussed below.
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Appellants do not dispute that Paladini's tabletop (i.e., the vertical mounting
structure) is "connected to" the table base (i.e., the mounting base). They
dispute that it is not "extending upward from" the table base because the
base "is substantially smaller than the horizontal flat surface of the plate";
they also argue the tabletop and table base "appear to be two separate
pieces." Reply Br. 3. As we noted above, there is no requirement in the
language of the claims regarding the shape of the "vertical mounting
structure," nor is there any recited requirement that the mounting base and
the vertical mounting structure be a single integrated structure. As such, the
fact that the tabletop and table base in Paladini may be separate pieces does
not remove them from the scope of the limitation. Additionally, Appellants
rely on an overly restrictive interpretation of "extend." Appellants submit a
dictionary definition which defines "extend" as "to stretch out or draw out to
a certain point." Reply Br. 2. Another dictionary, however, defines
"extend" to mean "cause to cover a larger area; make longer or wider."
Extend, NEW OXFORD AMERICAN DICTIONARY 612 (3d. ed. 2010). Here, the
tabletop causes the table base to cover a larger area, and it also makes it
longer or wider. As such, we are not persuaded the Examiner erred in
finding Paladini' s tabletop is "connected to and extending upward from" the
table base. Moreover, each of the moveable arms in Paladini is connected to
the same tabletop. As such, even under Appellants' proposed interpretation
that the claims require the arms be connected by the same vertical mounting
structure, the disputed limitations are taught by the Examiner's second
mapping of Paladini. Accordingly, we are not persuaded the Examiner erred
in finding Paladini teaches or suggests the disputed limitations in
independent claims 1, 12, and 21.
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Second Issue
The Examiner finds a person of ordinary skill in the art would have
found it obvious to modify Ogami with the teachings of Paladini "in order to
control the precision of the captured images using robotic positioning."
Final Act. 4. Appellants contend the Examiner has improperly combined the
teachings of Ogami and Paladini. More specifically, Appellants argue:
Ogami' s system is also using robotic hands, which enables it to
control the precision of the captured images without the asserted
modification using Paladini, and thus the asserted modification
would not make any difference in controlling the precision of the
captured images as asserted by the Office Action.
App. Br. 13. We disagree that the references have been improperly
combined. The standard for determining whether a claim is obvious is "an
expansive and flexible approach." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 415 (2007). As found by the Examiner, both references teach the use of
robotics for capture of images. However, Paladini' s dual arm configuration
provides improved mobility and tracking capabilities, as well as control of
the precision of images through modifications to sampling densities and
other imaging settings. See, e.g., Paladini i-fi-1 5, 56---60. Appellants argue
these benefits are already present in Ogami, but we discern no teachings in
Ogami providing this type of control of the imaging quality. Substituting
Paladini' s configuration for Ogami' s furthers this goal, and as such, we find
the Examiner's reasoning provides articulated reasoning with a rational
underpinning for the combination. KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
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Third Issue
Appellants separately argue for patentability of dependent claims 25-
27 which recite light sources "configured to selectively project white light,
blue light, UV light, green light, cyan light, amber light, red light and
infrared light." App. Br. 23-24 (Claims Appendix). Appellants contend the
Examiner erred because Holland, the reference relied upon to teach this
limitation, teaches only wavelengths in the visible spectrum, and that the
recited "UV light and infrared light are inherently not disclosed by Holland
since these wavelengths are not visible." App. Br. 14. We are not
persuaded by this argument, and we agree with the Examiner's response as
set forth in the Answer:
A user can selectively set the wavelength settings, such as the
user desires, to allow a controller to emit specific wavelength
ranges for illumination purposes. Even though, Holland does not
explicitly disclose illumination light of infrared and UV, it is well
known in the art that a camera can capture images with
illumination sources such as infrared and UV. At the time of the
invention, one of ordinary skill would have been familiar with
imaging technologies and would have understood, that in order
to improve imaging technologies by Ogami, Holland would have
been beneficial. Accordingly, one of ordinary skill in the art at
the time of the invention would have been motivated to include
such illumination sources as taught by Holland in in order to
obtain this advantage. Moreover, to such a person, doing so
would have represented nothing more than a user design
requirement. Therefore, it would have known well known in the
art, to allow a user to set the desired wavelength range anywhere
in the electromagnetic spectrum (EM) to include wavelengths
outside the visible spectrum and to include infrared light and UV
light to improve image quality.
Ans. 18. Accordingly, we are not persuaded the Examiner erred in rejecting
claims 25-27 and we sustain their rejection.
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Summary
Because we are not persuaded the Examiner has erred in finding
Paladini teaches or suggests the disputed limitations, and because the
Examiner's reasoning provides articulated reasoning with a rational
underpinning for the combination of Ogami and Paladini, we sustain the
rejections of independent claims 1, 12, and 21. Because we agree with the
Examiner that Holland renders obvious the disputed limitations in dependent
claims 25-27, we also sustain the rejection of those claims. Appellants do
not separately argue any other dependent claims. As a result, the remaining
claims fall along with their respective independent claims.
DECISION
We affirm the Examiner's rejection of claims 1-27.
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)(l )(iv).
AFFIRMED
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