Ex Parte BINDERDownload PDFPatent Trials and Appeals BoardJun 4, 201913893976 - (D) (P.T.A.B. Jun. 4, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/893,976 05/14/2013 131926 7590 06/04/2019 May Patents Ltd. c/o Dorit Shem-Tov P.O.B 7230 Ramat-Gan, 5217102 ISRAEL FIRST NAMED INVENTOR Yehuda BINDER 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. BINDER-005-USS 1072 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 06/04/2019 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 1 Appeal2018-007309 Application 13/893,976 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE2 This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's Non-Final Rejection of claims 1, 9-13, 17-20, 24, 25, 31, and 1 "The real party in interest is May Patents Ltd." App. Br. 2. Accordingly, we proceed on the basis that, for the purposes of this appeal, May Patents Ltd. is the "Appellant." 2 Appellant identifies the following as related appeals: (a) Appeal No. 2016- 001549 (Application No. 13/528,205; Board decision reversed the Examiner's rejection) and (b) Appeal No. 2018-006266 (Application No. 13/893,909; Board decision affirmed the Examiner's rejection). App. Br. 2. Appellant does not also mention Appeal No. 2018-002514 (Application No. 14/256,468; Board decision and rehearing decision affirmed the Examiner's rejection). Appeal2018-007309 Application 13/893,976 40. 3 Non-Final Act. 1, 10. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we do not find error in the Examiner's rejections. Accordingly, we AFFIRM the Examiner's rejections of these claims. THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates generally to electric shavers having electronic imaging functions." Spec. 1. 4 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 compnsmg: a first digital camera for capturing a first image, said 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 said first image, said 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 digital image processor coupled to said digital cameras for receiving said digital signals for receiving and processing the captured images; a display coupled to said digital cameras and having a flat screen for visually displaying the captured images; 3 The Examiner mistakenly characterizes claim 40 as being withdrawn (see Non-Final Act. 1 (Office Action Summary)), but provides a reason for its rejection in the body of the non-final action (see Non-Final Act. 10). 4 Appellant's Specification lacks both line and paragraph numbering. Hence, we refer to Appellant's Specification via page number only. 2 Appeal2018-007309 Application 13/893,976 a multiplexer coupled to said 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; a transmitter coupled between said port and said multiplexer for transmitting the multiplexed signal to the communication medium; a rechargeable battery coupled to power said digital cameras, said digital image processor, and said display; and a single portable and handheld casing housing said digital cameras, said digital image processor, said multiplexer, and said display, wherein said casing comprises two opposed first and second exterior surfaces, said first optical lens is attached to said first surface and said second optical lens is attached to said second surface, and wherein said digital image processor is operative to identify the element in the captured images using pattern recognition. REFERENCES RELIED ON BY THE EXAMINER Taylor et al. Shirakawa Sloan et al. Oswald et al. us 5,654,758 US 2003/0117501 Al US 2005/0008229 Al US 2007 /0279482 Al THE REJECTIONS ON APPEAL 5 Aug. 5, 1997 June 26, 2003 Jan. 13,2005 Dec. 6, 2007 Claims 1, 9-13, and 31 are rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Oswald and Sloan. 6 5 The rejection of claims 1, 9-13, 17-20, 24, 25, and 40 under 35 U.S.C. § 112 as being indefinite has been withdrawn. See Advisory Action dated March 2, 2018; see also App. Br. 2. 6 The Examiner mistakenly indicated that this was an anticipation rejection under 35 U.S.C. § I02(b) (see Non-Final Act. 7), but corrected this mistake in the Examiner's Answer. See Ans. 6. Appellant recognized this mistake 3 Appeal2018-007309 Application 13/893,976 Claims 17-20, 24, and 25 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Oswald, Sloan, and Shirakawa. Claim 40 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Oswald, Sloan, and Taylor. ANALYSIS The rejection of claims 1, 9-13, and 31 as unpatentable over Oswald and Sloan Appellant argues claim 1 separately (see App. Br. 4--11 ), claims 9-11 together (see App. Br. 11-12), and claim 31 separately (see App. Br. 12-13). Appellant presents no separate arguments for claim 12 ( which depends from claim 1) or claim 13 ( which depends from claim 12). We select independent claim 1 and dependent claims 9 and 31 for review, with the remaining claims (i.e., claims 10-13) standing or falling with their respectively selected claim 1 or 9. See 37 C.F.R. § 4I.37(c)(l)(iv). Claim 1 Appellant initially argues that Oswald and Sloan are non-analogous art. See App. Br. 4--5. The Examiner, however, explains that "both belong to the field of digital cameras and digital image processing technologies." Ans. 7. There is merit to the Examiner's findings since both references incorporate cameras whose images are processed. See, e.g., Oswald Fig. 1 and Sloan Figs. 7, 8A, 8B. Appellant further contends that Oswald and Sloan are not in the same field because they reside in different U.S. patent classifications. See App. Br. 5. However, the Examiner explains that "the classification system is for guiding the field of search" and is not applicable stating "[i]t is assumed that rejection under pre-AIA 35 U.S.C. [§] 103(a) is applied." App. Br. 4. 4 Appeal2018-007309 Application 13/893,976 for establishing non-analogous art. Ans. 7. The Examiner also provides examples of devices from different classifications being combined together. See Ans. 7 ("[f]or example, a tablet or a laptop or a cellphone has a digital camera"). The Examiner's explanation is persuasive. Appellant further references MPEP § 808.02(A) stating that Appellant "was requested to elect between multiple inventions" and, consequently, the elected invention is non-obvious due to this restriction requirement. See App. Br. 6-7; Reply Br. 2-3. We have previously dealt with this issue in related cases and have not found this argument to be persuasive. See Decision on Appeal No. 2018-002514 (page 5); Decision on Request for Rehearing of Appeal No. 2018-002514 (pages 2--4); and, Decision on Appeal No. 2018-006266 (page 7). We incorporate such analysis from these earlier Decisions herein. Appellant argues that the Examiner's stated reason for the combination of Oswald and Sloan "amounts to nothing more than a conclusory statement." App. Br. 7; see also Reply Br. 3--4. As expressed by the Examiner, the reason one skilled in the art would combine Sloan's teachings with Oswald's device is "to provide [an] improved unconstrained system of image recognition from imperfect imagery data." Non-Final Act. 9. 7 The Examiner explains, "[t]he image processing taught by Sloan adds more useful functions to the camera in Oswald" (Ans. 8), and Appellant does not explain how such reasoning (with rational underpinning) is, instead, "conclusory." Appellant additionally argues that the Examiner has changed 7 Appellant refers to "imperfect imaginary data"; whereas, the Examiner actually stated "imperfect imagery data." 5 Appeal2018-007309 Application 13/893,976 the reason for the combination, and that it is "a 'moving target'" (Reply Br. 4), but we do not agree with Appellant in this regard. Appellant further contends, "the rationale provides no link to the present application." App. Br. 7. However, Appellant does not explain how the Examiner's reliance on improving image recognition as taught by Sloan (see Sloan ,r 17 (referenced at Non-Final Act. 9)) has "no link" to Appellant's claim 1, which recites "identifying the element in the captured images." Appellant also argues that the Examiner relied upon hindsight to arrive at this rejection. See App. Br. 8-9; see also Reply Br. 7. We disagree with Appellant's assessment and instead agree with the Examiner that "[t]he combination of Oswald and Sloan is based on the knowledge of one skilled in the art" and also as expressly disclosed in these references. Ans. 9. We, thus, do not agree with Appellant that such information was "gleaned only from applicant's disclosure." App. Br. 9. Appellant additionally references Sloan and how this reference "teaches two distinct and functionally separated devices." App. Br. 9. This, according to Appellant, is distinct from claim 1, which "recites a single device in a single enclosure." App. Br. 9; see also Reply Br. 5, 6. In effect, "the Sloan reference teaches away from BOTH functionalities in the SAME enclosure." App. Br. 9. However, the Examiner did not rely on Sloan for the structural arrangement of the various components. Instead, the Examiner relied on the primary reference (Oswald) for the recited components, and on Sloan for teaching "a processor for identifying an element (a person) in a captured image." Non-Final Act. 8. Thus, Appellant's arguments regarding 6 Appeal2018-007309 Application 13/893,976 bodily incorporating various structure from Sloan into Oswald are not persuasive of Examiner error. See Ans. 9. As a variation of the above argument, Appellant contends that Sloan "requires a bulky and complicated hardware and software" and that "[a]dding the image recognition functionalities to the portable mobile device of Oswald, will render it bulky and stationary." App. Br. 10. On this point, the Examiner explains that "to consolidate two different functions into a single device is within the knowledge of one skilled in the art" and provides such examples as a digital clock also having a digital thermometer and a digital calendar. Ans. 10. We are not persuaded of Examiner error on this point. Appellant further contends that image processing "induces latency," which renders Oswald's invention ("directed to real time and simultaneous transmission[s]") "not satisfactory." App. Br. 10; see also Reply Br. 6-7. The Examiner explains, however, that "claim 1 does not specifically define how fast the images are analyzed." Ans. 11. There is merit to the Examiner's response since unclaimed features cannot impart patentability. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Appellant also argues that Oswald is "a communication only device" and that "Oswald teaches away from any manipulation of data in general, and image processing in particular." App. Br. 11; see also Reply Br. 7, 8. Indeed, Oswald is a communication device that is configured to receive and transmit video signals. See Oswald Abstract; see also Ans. 11. However, Appellant's argument that Oswald "teaches away" from manipulating data is not persuasive in view of Oswald's express disclosure of capturing, processing, encoding, multiplexing, and transmitting modules that treat 7 Appeal2018-007309 Application 13/893,976 image data. See, e.g., Oswald Fig. 1. Appellant does not explain how these modules, clearly identified and described in Oswald, fail to manipulate data. Accordingly, we are not persuaded by Appellant's argument that Oswald "teaches away from any manipulation of data." App. Br. 11. In summation, Appellant has not provided persuasive arguments as to why or how the Examiner erred in relying on the teachings of Oswald and Sloan to render claim 1 (and dependent claims 12 and 13) obvious. Claim 9 Claim 9 depends from claim 1 and includes the additional limitation of an image processor "operative to identify [a] plurality of elements in the captured images." The Examiner relies on the teachings of Sloan for this. See Non-Final Act. 9. Appellant seeks to construe these claims such that "the recited 'images' refer to the single first and single second captured images, not to multiple images captured by a single camera." App. Br. 11. In other words, these first and second captured images are associated with the recited first and second cameras, respectively, and do not pertain to "multiple images captured by a single camera." Appellant argues that Sloan "focuses on detecting a SINGLE target in an image" and that the associated algorithms "are directed only to detecting a single appearance in an image of the target." App. Br. 12. First, Sloan is not limited to only detecting a single appearance in an image, but instead, Sloan expressly discusses searching for "the presence, or likelihood of presence, of specific target images" (i.e., plural). Sloan ,r 2; see also Ans. 12. Second, regarding the source of the first and second captured images, Oswald clearly discloses first and second cameras, each having their own receiving modules. See Oswald Fig. 1. The Examiner has 8 Appeal2018-007309 Application 13/893,976 relied on Sloan for disclosing enhanced image recognition capabilities and it is not clear why such enhancement would be limited to only one of Oswald's cameras/modules, rather than both such cameras/modules. Further, claim 9 specifically recites "operative to identify [a] plurality of elements in the captured images" without specifically identifying the source of these "captured images," and Sloan would appear to teach that limitation. See Hiniker, 150 F.3d at 1369 ("the name of the game is the claim"). Accordingly, we are not persuaded the Examiner erred in rejecting claim 9 (and claims 10 and 11) as being obvious over Oswald and Sloan. Claim 31 Claim 31 depends from claim 1 and further recites "simultaneously displaying on said screen at least part of the first captured image and at least part of the second captured image at different locations on said screen." The Examiner relies on Oswald for disclosing this limitation. Non-Final Act. 9. Figures 7 and 8 of Oswald illustrate different "picture-in-picture" formats (Oswald ,r,r 12, 13, 32) that can be employed. See Ans. 12-13. Hence, Oswald teaches the simultaneous display of first and second images at different locations of a screen as recited. Appellant's arguments to the contrary (see App. Br. 12) are not persuasive. Accordingly, we are not persuaded the Examiner erred in rejecting claim 31 as being obvious over Oswald and Sloan. Claims 17-20, 24, 25, 40 Appellant does not present arguments regarding the rejection of claims 17-20, 24, and 25 over Oswald, Sloan, and Shirakawa; or the rejection of claim 40 over Oswald, Sloan, and Taylor. Accordingly, we sustain the Examiner's rejections of these claims. 9 Appeal2018-007309 Application 13/893,976 DECISION The Examiner's rejections of claims 1, 9-13, 17-20, 24, 25, 31, and 40 are affirmed. No time period for taking any subsequent action in connection with this appeal (see 37 C.F.R. § 1.136(a)(l )) may be extended (see 37 C.F.R. § 1.136(a)(l )(iv)). AFFIRMED 10 Copy with citationCopy as parenthetical citation