Ex Parte KOSTEPEN

Patent Trial and Appeal Board

Sep 26, 2018

14666973 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/666,973 03/24/2015
52558 7590 09/26/2018
PANASONIC AUTOMOTIVE SYSTEM
COMPANY OF AMERICA
776 HWY 74 SOUTH
c/o Panasonic Legal
PEACHTREE CITY, GA 30269
FIRST NAMED INVENTOR
HAKAN KOSTEPEN
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.
11123.1095US 1035
EXAMINER
RAO, ANAND SHASHIKANT
ART UNIT PAPER NUMBER
2486
MAIL DATE DELIVERY MODE
09/26/2018 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 HAKAN KOSTEPEN 1
Appeal2018-003874
Application 14/666,973
Technology Center 2400
Before CARLA M. KRIVAK, IRVIN E. BRANCH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8 and 21-32, which are all the pending claims (see Final Act. 1
and App. Br. 11-14 (Claims App'x)). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 The Appeal Brief identifies the Applicant, Panasonic Automotive Systems
Company of America, Division of Panasonic Corporation of North America,
as the real party in interest (i.e., the Appellant). App. Br. 3.
Appeal2018-003874
Application 14/666,973
Introduction
Appellant states the invention relates "to operating a camera that may
be installed in a motor vehicle." Spec. ,r 2. Appellant teaches a method of
operating a camera, in which the camera is used to begin capturing images in
response to detecting a vehicle has arrived at a geographic point of interest
that is in a database of such points of interest. Spec. ,r 5, Abstract.
Claims 1 is illustrative of the claims on appeal:
1. A method of operating an in-vehicle camera,
comprising the steps of:
providing a database of geographic locations of points of
interest;
detecting that the vehicle has arrived at one of the
geographic locations of the points of interest; and
in response to the detecting step, beginning to capture
images with the camera.
App. Br. 11 (Claims App'x).
Rejections & References
Claims 1-8 and 21-32 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Bengtsson (US 2007/0019072 Al, published Jan. 25, 2007).
Final Act. 1-3; Ans. 2-5.
ANALYSIS
In rejecting claim 1, the Examiner finds paragraph 23 of Bengtsson
discloses "detecting that the vehicle has arrived at one of the geographic
locations of the point of interest" and paragraph 16 discloses "in response to
the detecting step, beginning to capture images with the camera," as recited.
Ans. 2. Appellant argues the Examiners findings are erroneous. App. Br. 7-
8; Reply Br. 3. Appellant's argument is persuasive.
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Appeal2018-003874
Application 14/666,973
Appellant specifically contends that although Bengtsson discloses an
aircraft that includes cameras that record images, "Bengtsson is completely
silent as to ... recording images in response to detecting that aircraft 20 has
arrived at any particular location." App. Br. 7. We agree. Bengtsson
discloses a system and method "for processing digital images onboard an
aircraft or other vehicle" that "provide[ s] active entertainment features for
passengers during flight" (Bengtsson ,r,r 1, 2). Bengtsson paragraphs 16 and
23, which the Examiner cites for disclosing the "in response to detecting"
"that the vehicle has arrived at one of the geographic locations of the points
of interest" requirements, relevantly disclose (a) cameras that can be
remotely controlled (i-f 16) and (b) that users ofBengtsson's invention can
"capture the events of a trip or adventure while still traveling[,] thereby
creating a record for sharing their adventure and passing time during the
trip" (i-f 23). Bengtsson also discloses a user interface for controlling the
recording of images from the cameras on the aircraft as well as for
reviewing, organizing, saving, and downloading images to create digital
travel albums, to which the user can add information such as dates, weather
conditions, etc. See ,r,r 18-21.
Anticipation is a strict standard that requires finding each and every
element as set forth in the claim, expressly or inherently, in a single prior art
reference. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). "Because the hallmark of anticipation is prior
invention, the prior art reference - in order to anticipate under 35 U.S.C.
§ 102 - must not only disclose all elements of the claim within the four
comers of the document, but must also disclose those elements arranged as
in the claim." Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369
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Appeal2018-003874
Application 14/666,973
(Fed. Cir. 2008) (emphasis added; citation and internal quotation marks
omitted); see also id. at 1371 ("Thus, it is not enough that the prior art
reference discloses part of the claimed invention, which an ordinary artisan
might supplement to make the whole, or that it includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention.").
Regardless of what Bengtsson may suggest, we agree with Appellant
that Bengtsson does not disclose using its system to begin recording images
in response to detecting the aircraft has arrived at a particular location.
Thus, Appellant's argument-that Bengtsson does not disclose, as necessary
for an anticipation rejection, the above-discussed "in response to" limitations
recited in claim I-is persuasive.
Accordingly, we do not sustain the 35 U.S.C. § I02(a)(l) rejection of
claim 1. We likewise do not sustain the rejection of independent claims 21
and 30, which include commensurate requirements for which the Examiner
relies upon the same findings (see App. Br. 12, 13 (Claims App'x) and Ans.
3, 5). We also, accordingly, do not sustain the rejection of dependent claims
2-8, 22-29, 31, and 32.
DECISION
We reverse the Examiner's 35 U.S.C. § I02(a)(l) rejection of claims
1-8 and 21-32.
REVERSED
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