Ex Parte Kim

Patent Trial and Appeal Board

Sep 26, 2016

11286679 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111286,679 11122/2005 Samuel Kim
64884 7590 09/26/2016
BERGMAN & SONG, LLP
P.O. BOX 400198
CAMBRIDGE, MA 02140
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.
K2000-0001-P002 8381
EXAMINER
MATTHEWS, CHRISTINE HOPKINS
ART UNIT PAPER NUMBER
3735
MAILDATE DELIVERY MODE
09/26/2016 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 SAMUEL KIM
Appeal2014-009420
Application 11/286,679
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a motion
sickness abatement device. The Examiner rejected the claims as anticipated.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm the rejection of
claims 8-11 and 48. For claims 56-58, we reverse the rejection of record
and enter a New Ground of Rejection.
1 Appellant identifies the Real Party in Interest as the inventive entity, Sam
Kim (see App. Br. 3).
Appeal2014-009420
Application 11/286,679
Statement of the Case
Background
Appellant's invention "relates generally to a method, apparatus, and
system to allow a passenger in a moving vehicle to read text or view an
image while reducing or preventing motion sickness" (Spec. i-f 2).
The Claims
Claims 8-11, 48, and 56-58 are on appeal. Independent claim 8 is
representative and reads as follows (emphasis added):
8. A motion sickness abatement device comprising:
a video camera, said video camera being coupled to a
vehicle, said video camera being adapted to primarily receive a
first external image from a direction forwardly of, and external
to said vehicle; and
display means for receiving said first image and displaying
said first image to a passenger in a first viewing region, and for
displaying a second image of a document unrelated to said first
external image to said passenger in a second viewing region,
whereby said second image may be read while said first and
second images are viewed simultaneously, thereby minimizing
motion sickness in said passenger.
The Issue
The Examiner rejected claims 8-11, 48, and 56-58 under 35 U.S.C.
§ 102(e) as being anticipated by Eichmann2 (Ans. 2-5).
The Examiner finds that Eichmann teaches
a motion sickness abatement device comprising: a video camera
412, said video camera being coupled to a vehicle (Fig. 4), said
camera being adapted to primarily receive a first external image
from a direction forwardly of, and external to, the vehicle (due to
2 Eichmann, US 6,947,071 B2, issued Sept. 20, 2005.
2
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Application 11/286,679
camera being capable of acquiring an image as a result of
panning vertically or horizontally or zooming - col. 3, lines 31-
35; col. 9, lines 16-20 and 31--40); and display means 410 for
receiving the first image and displaying the first image in a first
viewing region (Fig. 3) and for displaying a second image of a
document unrelated to the first external image (due to a camera
being panned or zoomed) to the passenger in the second viewing
region (Fig. 3 and col. 6, lines 18--42), whereby the second image
may be read while the first and second images are viewed
simultaneously (col. 6, lines 38--42), thereby minimizing motion
sickness in the passenger.
(Id. at 2.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's finding that Eichmann anticipates claims 8,
48, and 56-58?
Findings of Fact
1. Figure 3 of Eichmann is reproduced below
310
Figure 3 shows
[a] display 310 [that] is operable to display two video images 316
simultaneously in a split screen format. ... [T]he controls 314
and 318 in this embodiment can also be capable of selecting the
3
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Application 11/286,679
mode of viewing (i.e. split screen, picture-in-picture, full screen,
cycling of either images or modes, and the like) and/ or selecting
the image or images 316 to be viewed.
(Eichmann 6:20-29; see also Ans. 2.)
2. Figure 4 of Eichmann is reproduced below
Figure 4 shows
a single display 410 and a plurality of cameras 412. In the
embodiment shown, the system has two cameras 412 that
communicate with a single display 410. Since there is an image
416 generated by each camera 412, it is desirable to allow the
display 410 to view both of the images 416. This can be
accomplished by any arrangement known in the art. For
example, the display 410 can have split screen or picture-in-
picture feature to show both images simultaneously, or can
manually or automatically cycle through the images.
(Eichmann 6:33--42; see also Ans. 2.)
3. Eichmann teaches that "[t]he camera can be equipped to have
the capability to zoom in or out. Additionally, the camera can have the
capability to pan horizontally and/or vertically, or a combination of the two"
(Eichmann 3:31-35; see also Ans. 2).
4. Eichmann teaches that "[t]he camera 112 is operable to process
a still and/or moving image 116 taken from the camera 112 and transmit the
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Application 11/286,679
image 116 via a data signal" (Eichmann 5:62---65; see also Ans. 5) for
"situations in which the user of the device desires to see an area or object
that is not viewable from the current orientation of the user" (Eichmann 6:9-
11).
5. The Specification teaches that "[t]he term document is to be
construed broadly to include text, graphics, moving images, and other
perceptible data adapted for conveying information to a user" (Spec. i-f 17).
6. The Specification teaches that "[i]n operation, the occupant 110
views text and/or graphics presented on the document presentation device
102 while, substantially simultaneously, viewing the external environment
106" (id. at ,-r 77).
7. The Specification teaches that "[i]t is to be understood,
however, that the same or equivalent functions and components incorporated
in the motion sickness reduction system, methods and apparatus may be
accomplished by different embodiments that are also intended to be
encompassed within the spirit and scope of the invention" (Spec. i-f 67).
Principles of Law
A prior art reference can only anticipate a claim if it discloses all the
claimed limitations "'arranged or combined in the same way as in the
claim."' Wm. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683F.3d1356,
1361 (Fed. Cir. 2012).
Analysis
We agree with the Examiner that independent claims 8 and 48 are
anticipated by Eichmann. We address Appellant's arguments below.
5
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Application 11/286,679
Claims 8 and 48
In regard to claim 8, Appellant contends that Eichmann
repeatedly and consistently discusses monitoring the interior of
a vehicle. While it is possible that cameras like those of
Eichman[ n] might be manufactured to provide a sufficient range
of pan to view the exterior of the vehicle there is no teaching in
Eichman[n] to do so, much less do so "primarily." Moreover, by
specifying that those cameras are for "monitoring ... a vehicle
interior" Eichman[ n] teaches directly away from such a
construction. In like fashion, the Patent Office suggests that an
Eichman[ n] camera might be used to image a document so as to
meet the requirements of the subject claim. There is, however,
absolutely no teaching or suggestion in Eichman[n] to do so.
(App. Br. 8 (alteration original); see also Reply Br. 8-10.) In regard to
claim 48, Appellant contends that Eichmann "does not teach providing a
'video camera ... adapted to receive a first external image ... primarily
external to ... [a] vehicle'" (App. Br. 9 (alteration original)).
We are not persuaded. Claim 8 requires "said video camera being
adapted to primarily receive a first external image from a direction
forwardly of, and external to said vehicle," and claim 48 requires "said video
camera being adapted to receive a first external image from a direction
forwardly of, and primarily external to, said vehicle" (emphasis added).
Eichmann teaches that "[t]he camera can be equipped to have the capability
to zoom in or out. Additionally, the camera can have the capability to pan
horizontally and/or vertically, or a combination of the two" (FF 3).
"[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure." Catalina
Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). "A patent applicant is free to recite features of an apparatus either
6
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Application 11/286,679
structurally or functionally .... Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). "'Functional' terminology may render a
claim quite broad. By its own literal terms a claim employing such language
covers any and all embodiments which perform the recited function." In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971). Therefore, "[i]fthe prior art
structure is capable of performing the intended use, then it meets the claim"
See Schreiber, 128 F.3d at 1478 and see Swinehart, 439 F.2d at 213.
Our interpretation of the "adapted to" limitation is consistent with the
Specification, which broadly recognizes that alternate embodiments are
within the scope of the claimed inventions (FF 7). Moreover, the
Specification does not exclude or disclaim any specific camera, camera
structure, or camera location in the car, but simply indicates that the camera
should be oriented to capture stationary reference points in the external
environment (FF 6; see also, e.g., Spec i-fi-121, 25. ). Consequently, our
interpretation is not "so broad as to include a configuration expressly
disclaimed in the specification." In re Man Machine Interface Technologies
LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that
Eichmann discloses that the camera can pan vertically or
horizontally or zoom in/out (col. 3, lines 31-35; col. 9, lines 16-
20 and 31--40). Such functions would enable the camera to pan
such that an exterior of the vehicle is being viewed, and zoom
out such that an exterior of the vehicle may be viewed through
the front windshield.
(Ans. 6.) Moreover, a teaching away argument is inapplicable when, as
here, the rejection is based on anticipation. Celeritas Techs., Ltd. v.
Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) ("Thus, the
7
Appeal2014-009420
Application 11/286,679
question whether a reference 'teaches away' from the invention is
inapplicable to an anticipation analysis.").
Claim 9
Appellant contends that "Fig. 3, however, does not illustrate any
coincident portions (i.e., overlap) of viewing regions" (App. Br. 9; see also
Reply Br. 10-12).
We do not find this argument persuasive. Appellant's claims and
Specification do not define "coincident." The Specification teaches that
"[i]n operation, the occupant 110 views text and/or graphics presented on the
document presentation device 102 while, substantially simultaneously,
viewing the external environment 106" (FF 6). Eichmann teaches "[a]
display 310 [that] is operable to display two video images 316
simultaneously in a split screen format ... capable of selecting the mode of
viewing (i.e. split screen, picture-in-picture, ... " (FF 1; see also FF 2).
Therefore, we agree with the Examiner that
"Coincident" is not interpreted by the examiner to mean
"overlap", rather to mean "happening at the same time" or
"occupying the same place or position" as the term is commonly
defined. Eichmann's teaching of a split-screen (col. 6, lines 25-
28) meets these definitions. Eichmann also teaches a PIP
(picture-in-picture) function (col. 6, lines 25-28), which would
also arguably fit the definition of "overlap" as one image of the
PIP overlaps the other since it lies within the boundaries of the
other.
(Ans. 7.)
Accordingly, we affirm the rejection of claims 8, 9, and 48. Because
claims 10 and 11 depend from claim 8, we affirm the rejection of those
claims as well.
8
Appeal2014-009420
Application 11/286,679
Claims 56-58
The Examiner finds that Eichmann teaches "a video camera 412, said
video camera being coupled to a vehicle outside of a passenger compartment
of said vehicle (Fig. 4) (interpreting the 'passenger compartment' as a seat)"
(Ans. 3).
We are not persuaded. We agree with Appellant that "[s]uch an
unfounded interpretation is facially inconsistent with common usage" (App.
Br. 9). "The protocol of giving claims their broadest reasonable
interpretation during examination does not include giving claims a legally
incorrect interpretation." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
The Examiner also finds, regarding claims 57 and 58, that "Eichmann
discloses that the camera can pan vertically or horizontally or zoom in/out ..
. Such functions would enable the camera to pan such that the video camera
is directed exclusively outwardly of the passenger compartment" (Ans. 8).
We find this argument unpersuasive because these claims require a
"camera being directed exclusively outwardly", a limitation reasonably
interpreted as structural, not functional. While Eichmann's teaching of a
camera that can pan or zoom may render claims 57 and 58 obvious (as
discussed in the New Grounds below), such a teaching does not necessarily
anticipate because the camera in Eichmann is not necessarily "directed
exclusively outwardly". "Inherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." MEHL/Biophile Int 'l.
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
We reverse the anticipation rejection of claims 56-58 over Eichmann.
9
Appeal2014-009420
Application 11/286,679
Claims 56-58-New Ground ofRejection
Under the provisions of 3 7 C.F .R. § 41. 50(b ), we enter the following
new ground of rejection.
Claims 56-58 are rejected under 35 U.S.C. § 103(a) as obvious over
Eichmann and Minaudo.3
The issue with respect to this rejection is: Does the evidence of
record support the conclusion that Eichmann and Minaudo render claims
56-58 obvious?
Findings of Fact
8. Minaudo teaches "[a] vision enhancement system for use on a
vehicle includes a camera mounted behind the exterior body of the vehicle"
(Minaudo Abstract), that"[ o ]ther vehicular vision enhancement camera
systems are known which record events occurring in the exterior and/ or in
front of a vehicle" (id. i-f 6), and that "the cameras of such systems are
generally mounted in the front or on top of the vehicle" (id. i-f 7).
9. Minaudo teaches "it is known to mount a camera within the
passenger compartment (e.g., in a sun visor or dashboard) for displaying and
recording events occurring in front and inside of a vehicle" (Minaudo i-f 6).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
3 Minaudo et al., US 2003/0122929 Al, published July 3, 2003
("Minaudo ").
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Application 11/286,679
Analysis
Eichmann teaches a device comprising: a video camera being adapted
to primarily receive a first external image from a direction forwardly of, and
external to, said vehicle; and display means for receiving said first external
image and displaying said first external image to a passenger in a first
viewing region, and for displaying a second image of a document unrelated
to said first external image to said passenger in a second viewing region,
whereby said second image may be read while said first and second images
are viewed simultaneously (FF 1-6).
Eichmann fails to teach "said video camera being coupled to a vehicle
outside of a passenger compartment of said vehicle" as required by claim 56.
Eichmann also fails to teach a camera "directed exclusively outwardly" as
required by claims 57 and 58.
However, Minaudo evidences that it is well-known that "the cameras
of such systems are generally mounted in the front or on top of the vehicle"
that "record events occurring in the exterior and/or in front of a vehicle" (FF
8) as well as recording events inside the vehicle (FF 9).
With respect to the limitation concerning the "document," the
Specification teaches that "[t]he term document is to be construed broadly to
include text, graphics, moving images, and other perceptible data adapted for
conveying information to a user" (FF 5). Eichmann teaches that "[t]he
camera 112 is operable to process a still and/or moving image 116 taken
from the camera 112 and transmit the image 116 via a data signal" (FF 4
(emphasis added)). We also observe that Eichmann teaches
In addition, in automobiles and in some other vehicles, it
is becoming more popular to include integrated display devices
such as a computer screen, a television, and/ or a video monitor
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Application 11/286,679
in a vehicle. These devices are utilized, for example, for running
graphical navigational programs, receiving and displaying
television signals, playing video tapes and digital video
recordings and playing computerized games. In vehicles
equipped with these devices, it would be advantageous, for
example, to be able to view a child in the back seat of the vehicle
by transmitting a video image of the child to one of these display
devices.
(Eichmann 8:8-18.) Therefore, we conclude that Eichmann renders obvious
a "display means for receiving ... a second image of a document unrelated
to said first external image" as required by claim 57. Eichmann also teaches
"said second image representing information substantially permanently
encoded in an electronic storage medium" as required by claim 58 because
such "document" must be stored in order to be reproduced or displayed.
Therefore, it would have been obvious to one of ordinary skill in the
art to modify Eichmann's device to have an interior camera and a "video
camera being coupled to a vehicle outside of a passenger compartment of
said vehicle" to yield a predictable system that permits recording of events
occurring both inside and outside a vehicle for "situations in which the user
of the device desires to see an area or object that is not viewable from the
current orientation of the user" (FF 4) as required by claim 56.
In addition, it would have been obvious to one of ordinary skill in the
art to direct Eichmann's camera located within the passenger compartment
exclusively outward because Minaudo teaches an interest in recording
"events occurring in the exterior and/or in front of the vehicle" (FF 8) and
the ordinary artisan would have found it predictable to use a camera located
in the passenger compartment to record exterior images as required by
claims 57 and 58.
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Application 11/286,679
We recognize, but find unpersuasive, Appellant's contention,
regarding the Examiner's anticipation rejection, that "while the Patent Office
repeatedly asserts that Eichman[ n] teaches a 'motion sickness abatement
device' as claimed, in fact the subject reference addresses different and non-
analogous art" (App. Br. 13). The "motion sickness abatement" represents
an intended use of the apparatus, but imposes no specific structural
limitations on the apparatus. "An[] intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates." Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003). Moreover, Eichmann and Minaudo are both directed to the same
field of endeavor, camera systems mounted on vehicles for monitoring
events inside or outside the vehicle (FF 1-9).
SUMMARY
In summary, we affirm the rejection of claims 8 and 48 under 35
U.S.C. § 102(e) as being anticipated by Eichmann. Claims 9-11 fall with
claim 8.
We reverse the rejection of claim 56-58 under 35 U.S.C. § 102(e) as
being anticipated by Eichmann.
We reject claims 56-58 under 35 U.S.C. § 103(a) as obvious over
Eichmann and Minaudo as set forth above.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
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Application 11/286,679
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."
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 proceeding 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 ....
Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
14
Notice of References Cited
*
Documeni Number Date
Country Code-Nun1ber-Kind Code MM-YYYY
A US- 2003/0122929 Al 07-2003
B US-
c US-
D US-
E US-
F US-
G US·
H US-
US-
J US-
K US-
L US-
M US-
*
Document Number Date
Country Code-Number-Kind Code MM-YYYY
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Application/Control No.
l li286,679
Examiner
U.S. PATENT DOCUMENTS
Name
Iv1inaudo et al.
FOREIGN PATENT DOCUMENTS
Couniry
NON-PATENT DOCUMENTS
Name
Appiicant(s)IPatent Under Patent
Appeal No.
2014-009420
I Page 1 of1
Classifica1ion
Classifica1ion
* Include as applicable: Au1hor, Tille Date. Publisher. Edition or Volume, Pe1iinen1 Pages)
u
v
w
x
*!\copy of this t"eference :snot be1n9 furnished wnn tn:s Off;ce act:on (See MPEP § 707.05(a).)
Dates in MM-YVYY forrna.t are publication dates. Classifications n1ay be US or foreign.
U.S. Pa.tent and Trademaok Oftice
PT0-892 (Rev 01-2001) Noiice of References Cited Part of Paper No.
1111111111111111111111111111111111111111111111111111111111111111111111111111111111 11111111
US 20030122929Al
(19) United States
(12) Patent Application Publication (rn) Pub. No.: us 2003/0122929 Al
Minaudo et al.
(54) VEmCULAR CATWERA. SYSTKM
(76) fnvenlors: B. Philip Mimrndo, S1erling Heigh1s,
Mf (US); Theodore Adamczyk JR.,
Macomb, Ml (US)
(21)
(22)
Correspondence Address:
CHRISTOPHER DKVRI ES
Genera! Motors Corporation
Legal Staff, Mail Code 482-C23-B21
P.O. Rox :mu
Detroit, MI 48265-3000 (US)
Appl. No.: 10/037,829
Piled: Jnn.3,2002
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Publlcntlon Ciassificntlon
(51) Int. Cl.7 ................................................. H04N 7/18
(52) U.S. CJ. ...................................... 348i148; 348/143
(57) ABSTRACT
A vision enh;rncemefll sys1em for use on a vehicle includes
a camera moumed behind the exterior body of ihe vehick.
A movcabk door is mounted in tbe vehicle's body rnd is
positioned in tlu.: camera's lirn: of sight. The door is capable
c1f being rnoved bct\veen a closed position and an open
position. An actuator is coupled to the door for selectively
positioning the door in either an open or dosed position.
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VEHICUL-\R CAJVIERA. SYSTEM
1I~CIJNICAL FiELD
[0001] This invention relates generally to camera systems,
r:nd more particularly to a vi:,ion enhancing camera system
for use on a motor vehicle.
HACKCiROUND OF THE INVENTION
[Wl02] From their inception, motor vehicles have been
provided with vision enhancing equipment lo t·
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