Ex Parte BINDER

Patent Trials and Appeals Board

Jun 19, 2019

13864581 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/864,581 04/17/2013
131926 7590 06/19/2019
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-006-US5 7455
EXAMINER
BUKOWSKI, KENNETH
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
06/19/2019 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
Appeal2017-007904
Application 13/864,581
Technology Center 2600
Before JEFFREYS. SMITH, JOSEPH P. LENTIVECH, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 105-182, which are all of the pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 May Patents Ltd. ("Appellant") is identified as the real party in interest.
App. Br. 2.
Appeal2017-007904
Application 13/864,581
CLAIMED INVENTION
According to Appellant, "[t]he present invention relates generally to
devices (such as displays) controlled by face detection." Spec. 1. Claim
105, reproduced below, is illustrative of the claimed subject matter:
105. A television set for receiving and displaying
television channels, the television set comprising:
a flat screen for displaying the television channels;
a digital camera for capturing an image in digital data
form, said digital camera having a center line of sight and being
mechanically fixed so that said digital camera is maintained in a
fixed position relative to said flat screen;
a communication port for coupling to a network medium;
a transceiver coupled to said communication port for
transmitting serial digital data to, or receiving serial digital data
from, the network medium;
software and a processor to execute said software
coupled to control said flat screen, said transceiver, and said
digital camera; and
a single enclosure housing said flat screen, said digital
camera, said processor, said communication port, and said
transceiver, wherein said transceiver is coupled to said digital
camera for transmitting the image over the network medium.
REFERENCES
Yamaguchi US 2005/0120381 Al June 2, 2005
Binder '152 US 2005/0163152 Al July 28, 2005
Gutta US 6,931,596 B2 Aug. 16, 2005
Cho US 2006/0067367 Al Mar. 30, 2006
Trovato US 2006/0071135 Al Apr. 6, 2006
Kitaura US 2007/0132725 Al June 14, 2007
Binder '202 US 2007/0173202 Al July 26, 2007
Karam US 2008/0244284 Al Oct. 2, 2008
Latta US 2010/0281438 Al Nov. 4, 2010
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Application 13/864,581
Njissang, Wireless HD Next Generation Standard Now Supports 3DTV,
HDCP 2.0, Data Applications and Data Rates in Excess of 10 Gbps
www.wirelesshd.org.
REJECTIONS
Claims 105-110, 124, 125, 129-132, 138-140, 168-171, and 175-181
stand rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Trovato, Gutta, and Applicant Admitted Prior Art. Final
Act. 3-6.
Claims 111-122, 144-151, and 162-164 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Trovato, Binder,
and Applicant Admitted Prior Art. Final Act. 6-8.
Claim 123 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Trovato, Gutta, Njissang, and Applicant Admitted
Prior Art. Final Act. 8-9.
Claims 126-128 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Trovato, Gutta, Cho, and Applicant
Admitted Prior Art. Final Act. 9.
Claims 133-136 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Trovato, Gutta, Binder '152, and
Applicant Admitted Prior Art. Final Act. 9-11.
Claim 137 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Trovato, Gutta, Binder '152, Karman, and
Applicant Admitted Prior Art. Final Act. 11.
Claims 159-161 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Trovato, Gutta, Binder '152, Binder
'202, and Applicant Admitted Prior Art. Final Act. 11.
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Application 13/864,581
Claims 141, 142, and 172-174 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Trovato, Gutta, Kitaura,
and Applicant Admitted Prior Art. Final Act. 12.
Claim 143 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Trovato, Gutta, Latta, and Applicant Admitted Prior
Art. Final Act. 13.
Claims 152-158 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Trovato, Gutta, Binder '202, Cho, and
Applicant Admitted Prior Art. Final Act. 13.
Claims 165-166 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Trovato, Gutta, Binder '202, Kitaura,
and Applicant Admitted Prior Art. Final Act. 13.
Claim 167 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Trovato, Gutta, Binder '202, Latta, and Applicant
Admitted Prior Art. Final Act. 14.
Claim 182 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Trovato, Gutta, Yamaguchi, and Applicant
Admitted Prior Art. Final Act. 14.
ANALYSIS
Having considered the positions advanced by the Examiner and
Appellant in light of this appeal record, we affirm the Examiner's 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
explanation primarily for emphasis.
Appellant argues that the rationale for combining Trovato and Gutta
to reject claim 105 is improper. App. Br. 5-8. Appellant asserts the
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Application 13/864,581
Examiner's rationale is "to provide for television channel capabilities of a
television set to the display of Trovato ... a well known display capability
of displaying television channels in a system." Id. at 6 ( emphases omitted).
Appellant argues this rationale is improper because Trovato does not
disclose televisions and neither Trovato nor Gutta discuss television
channels. Id. Appellant further argues that the combination would change
Trovato' s principle of operation and that the Examiner's stated rationale
demonstrates a long felt need for the claimed invention. Id. at 6-7.
The Examiner responds that Trovato need not mention television sets
and neither reference needs to mention channels to properly combine
Trovato and Gutta. Ans. 3. Further, the Examiner finds that the
combination would not change Trovato' s principle of operation as both
Trovato and Gutta use image detection to effect a display. Id. The
Examiner also determines that the stated rationale does not demonstrate long
felt need for the claimed invention. Id. at 4.
In the Reply, Appellant argues that the Examiner's rationale is trivial
in that it indicates that the motivation for adding television features is to
have television features. Reply Br. 2-3. Further, Appellant argues the
Examiner merely indicates what could be done, rather than what an
ordinarily skilled artisan would have done. Id. at 3. Appellant also argues
that changing Trovato' s display from a single video source that is locally
captured to multiple television channels that are not locally generated would
change its principle of operation. Id. at 4. Further, Appellant asserts that the
decision in Appeal No. 2016-002547 admits to "long desirable need." Id.
We agree with the Examiner regarding Appellant's arguments. First,
the Examiner does not rely on Trovato for the teaching or suggestion of a
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Application 13/864,581
television. Final Act. 3. Therefore, Trovato need not disclose a television
for the combination of Trovato and Gutta to render claim 105 obvious. In re
Mouttet, 686 F.3d 1322, 1332-33 (Fed. Cir. 2012). Nor does Trovato need
to mention a television for Trovato to be combinable with the television
teachings of Gutta. Trovato discloses a mechanism that moves a monitor
relative to the position of a user. Trovato ,i,i 31, 32. Gutta discloses using
the same mechanism for moving a monitor relative to the viewer to move a
flat screen display for television channels relative to the viewer. Gutta 1 :6-
12, 1 :54-2:2. Appellant does not dispute the Examiner's finding that
Trovato's monitor could be used to display television channels. Ans. 3;
Reply Br. 3-4. Accordingly, we agree with the Examiner that the teachings
of the references can properly be combined.
Further, we are not persuaded that Examiner has merely set forth that
Gutta's teachings regarding televisions could be combined with Trovato.
Although the Examiner explains that the references can be combined, a
relevant inquiry for an obviousness analysis, the Examiner also provides a
reason why an ordinarily skilled artisan would want to make the
combination: predictably increasing system versatility by providing a well-
known display of television channels. Final Act. 3.
We are also not persuaded by Appellant's argument that the
Examiner's rationale demonstrates long felt need for the claimed invention.
Although Appellant argues that it is self-evident that the rationale of a
predictable improvement in system versatility demonstrates a long felt need
(Reply Br. 4), we disagree. The predictable result of increasing system
versatility does not demonstrate a persistent need for the claimed invention
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Application 13/864,581
that was recognized by the art, which would be indicative of long felt need.
In re Gershon, 372 F.2d 535, 539 (CCPA 1967).
We are also not persuaded by Appellant's argument that the Decision
for Appeal No. 2016-002457 establishes a long felt need for the claimed
invention. Appellant notes that the '457 Decision indicates "that the Trovato
reference is pertinent to the particular problem of 'allowing convenient or
better control or visualization of a device, such as a display, without using a
remote control"' and argues this statement admits to long felt need. Reply
Br. 4 ( quoting '457 Decision 5). That finding, however, does not establish a
long felt need for the claimed invention at issue here. Instead, it establishes
that, for the claims in the '457 appeal, Trovato satisfied the second criteria
set forth by In re Bigio2 for analogous art. '457 Decision 4-5.
Appellant also argues that statements in the '457 Decision establish,
for claim 105 and other pending claims, that: under Kinetic Concepts,
Trovato and Gutta cannot be combined (Reply Br. 5); Trovato teaches away
from the claimed invention (id. at 6); the stated rationale for combining
Trovato, Gutta, and Applicant Admitted Prior Art is inadequate (id. at 7-8);
combining Trovato and Kitura renders Trovato unsatisfactory for its
intended purpose, provides unexpected results, presents a new problem to
solve, or constitutes major changes to Trovato (id. at 9); Trovato and Kitura
are nonanalogous art (id.); Trovato teaches away from the claimed invention
(id. at 10-11 ); and Trovato and Yamaguchi are non-analogous art (id. at 11-
12). We are not persuaded by any of these arguments. Appellant cites
nowhere that the Board made such findings in the '457 Decision. To the
contrary, to the extent the '457 Decision is pertinent to this appeal, it
2 381 F.3d 1320 (Fed. Cir. 2004)
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undercuts, rather than supports, Appellant's arguments. In the '457
Decision, the Board ruled against Appellant on the issue of analogous art
and the applicability of Kinetic Concepts as argued by Appellant, and the
Board further affirmed obviousness rejections that encompassed every claim
pending in that appeal. '457 Decision 1, 4-7, 11.
Accordingly, for the reasons set forth above and the reasons set forth
by the Examiner, we sustain the rejections of claims 105-182.
DECISION
We affirm the rejections of claims 105-182.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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