Ex parte Lee et al.

Board of Patent Appeals and Interferences

Aug 22, 2000

08698707 (B.P.A.I. Aug. 22, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES K. LEE and FREDERICK J. JEFFERS
____________

Appeal No. 1998-0866
Application No. 08/698,7071
____________

ON BRIEF
____________

Before HARKCOM, Vice Chief Administrative Patent Judge, ABRAMS
and LAZARUS, Administrative Patent Judges.

LAZARUS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-5, which are all of the claims pending
in this application.

1 Application for patent filed August 16, 1996.
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BACKGROUND
The appellants' invention relates to a camera with a
magnetic roller recorder for repetitively recording owner-
personalization information along a magnetic track on the
filmstrip (specification, page 1). A copy of the claims under
appeal is set forth in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Brock et al. (Brock) 5,519,464 May 21, 1996
Goto et al. (Goto) 5,543,872 Aug. 6, 1996
Swanson et al. (Swanson) 5,572,267 Nov. 5, 1996
(filed Aug. 23, 1994)

Claims 1-5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Swanson in view of either Brock or Goto.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 13, mailed October 1, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 12, filed August 18, 1997) for the
appellants' arguments thereagainst.

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OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
We cannot sustain the examiner's rejection of appellants'
claims 1-5 under 35 U.S.C. § 103.
At the outset, we particularly note that independent
claim 1 is drawn to a camera and a recording device.
Claim 1 recites,
1. A camera comprising an information-bearing medium movable
to record non-varying information on a filmstrip, is
characterized in that: said information-bearing medium is a
magnetic roller recorder having a roller periphery on which is
magnetically stored the non-varying information; and means
rotationally supports said roller recorder in place for
stationary rolling contact of said roller periphery with a
magnetic track on a filmstrip as the filmstrip is advanced,
whereby the non-varying information can be repetitively
recorded along the magnetic track on the filmstrip.

The examiner's rejection of claim 1 points out that
"[t]he difference between Swanson et al. and the claimed
invention is the magnetic roller recorder is rotatably mounted
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on the camera body" (final, page 2). Brock and Goto are cited
for their teaching of employing a plate at the back of a
camera to support the magnetic recorder and the examiner
concludes that "it would have been obvious to one of ordinary
skill in the art
at the time the invention was made to modify Swanson et al. by
rotatably mounting the magnetic roller recorder on the camera
body by having 'a plate which rotationally supports said
magnetic roller recorder in place and is constructed to be
fitted to said rear housing portion to light-tightly seal said
rear opening'" (final, pages 2-3).
Appellants urge that "Brock et al. and Goto et al. are
quite different than Swanson et al." in that "Brock et al. and
Goto et al. simply show fixed magnetic heads 60 and 8 in
cameras... [n]o information is permanently stored on the
magnetic heads, and the magnetic heads are stationary" whereas
"[i]n Swanson et al. , non-varying information is permanently
stored on the rotatable roller wheel... intended for a single
brief recording of the information only at one location on the
MOF" (brief, page 5). Appellants conclude that "one of
ordinary skill in the art would not necessarily be motivated
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to combine the three references for the purpose of recording
information on the MOF (much less be motivated to arrive at
the claimed invention), because of the diverse approaches they
teach" (brief, page 5).
In response, the examiner urges that "[s]uch argument
should not be deemed persuasive because 'the diverse
approaches they teach' do not lead the ordinary artisan away
from modifying Swanson et al. in the manner set forth by the
Examiner" (answer, page 5).
We note that in the SUMMARY OF THE INVENTION section
Swanson teaches that it is advantageous to provide an
unpowered recording medium external to the camera (col. 2,
lines 1-21). Swanson notes that "there is a need for a system
that permits information to be recorded into the MOF layer of
photographic film without requiting (sic) specially-equipped
cameras and without requiring entry of information by the
photographer" (col. 1, lines 59-62). Thus, Swanson recognizes
that known internal camera recording devices have some
disadvantages over a recording device external to the camera.

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We find that modification of the Swanson device to
provide an internal recording device as suggested by Brock or
Goto teaches away from the objective disclosed in Swanson and
would not have been an obvious modification at the time the
invention was made to a person having ordinary skill in the
art.
Accordingly, the decision of the examiner to reject claim
1 under 35 U.S.C. § 103 is reversed.
NEW GROUNDS OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of
the board introduces the following new grounds of rejection as
to claims 1, 4 and 5.
Claims 1, 4 and 5 are rejected under 35 U.S.C. § 103 as
being unpatentable over Brock in view of Swanson.
We note that both Brock and Swanson teach recording
magnetic information on a magnetic track on film in a camera.
Each discuss the various types of information that may be
recorded, e.g. the name of the owner of the camera, the date
and/or location of the picture being taken, the camera
settings (Swanson, col. 1, lines 11-37, and Brock, col. 1,
lines 37-50) and the type of recording device suitable to
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record the desired information. Brock teaches a magnetic head
recording device 60 (Fig. 1) which is mounted internal to the
camera along the magnetic track on the filmstrip. Brock
teaches the elements of appellants claim 1 except for the
specific type of recording device. Swanson discloses
recording onto the magnetic strip of film with different types
of recording devices (linear array 18 of Fig. 1 or magnetic
roller 106 of Fig. 3). Other types of recording devices are
discussed, for example "[t]o increase the amount of data that
can be recorded in a fixed length of magnetic media, such as a
frame of a photographic filmstrip, multiple roller wheels may
be provided" (col. 5, lines 23-26). We find that it would be
obvious to modify Brock by providing the roller type of
recording device of Swanson in place of the magnetic head
shown by Brock. The choice of the type of recording device is
an obvious choice as taught by Swanson, and is dependent on
factors such as the amount and type of information to be
recorded. It would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to modify Brock's camera and recording mechanism by
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providing a magnetic roller as the recording mechanism as
taught by Swanson.
We reject appellants' notion that the references are not
combinable because "of the diverse approaches they teach"
(brief, page 5). Rather, we observe that the references
simply teach different ways of recording different types of
desired information on the magnetic strip portion of film. In
the present instance appellants indicate a desire to provide
the same information (e.g. the owner's name and address)
repeatedly for each frame of the film (specification, pages 2-
3). Swanson teaches that his disclosed roller retains
magnetic field strength so that it is capable of "multiple
insertions" (col. 5, line 63) and "[t]he present invention
should therefore not be seen as limited to the particular
embodiment described herein..." (col. 6, lines 20-22).
Likewise, we reject appellants' suggestion that "in
Swanson et al. the roller wheel 106 appears to be at least as
wide as the filmstrip 14" such that "[i]ts use in Brock et al.
and Goto et al. would scratch the film exposures" and "[t]hus,
Swanson et al. would discourage one skilled in the art to make
the combination with Brock et al. and Goto et al." (brief,
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page 5). Clearly each of Swanson and Brock teach the
recording device is to record on the magnetic strip only and
to avoid contamination of the picture portion. We find that
at the time the invention was made a person having ordinary
skill in the art combining the teachings of Brock and Swanson
would provide that the roller be limited to printing on the
magnetic strip without contaminating the picture portion of
the film.
Appellants' claims 4 and 5 further limit claim 1 by
providing that the information magnetically stored on said
roller periphery "constitutes a series of continuously-
repeating complete identical messages" (claim 4) and "are
sufficiently short to ensure that at least one of the
identical messages will be recorded on the magnetic track for
each exposed frame of the filmstrip" (claim 5). Swanson
discloses that the roller wheel depositing the information
onto the magnetized strip "can make one complete revolution
within the space of a single frame" (col. 5, lines 15-16) and
"the pattern can be repeated around the roller wheel,
providing redundant patterns, if desired for error checking or
other safeguard against slippage" (col. 5, lines 19-22). The
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limitations of claims 4 and 5 are taught by, or obvious from,
Swanson’s disclosure of providing repeated messages and a
complete message for each frame.
In summary, this panel of the board has reversed the
rejection of claims 1-5 under 35 U.S.C. § 103 as being
unpatentable over Swanson in view of either Brock or Goto.
Additionally, we have introduced a new ground of
rejection for claims 1 and 4-5.
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences
based upon the same record must be filed within one month from
the date of the decision (37 CFR § 1.197). Should appellants
elect to have further prosecution before the examiner in
response to the new rejection under 37 CFR § 1.196(b) by way
of amendment or showing of facts, or both, not previously of
record, a shortened statutory period for making such response
is hereby set to expire two months from the date of this
decision.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.196(a).
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CONCLUSION
The decision of the examiner is reversed.
REVERSED 37 CFR § 1.196(b)

GARY V. HARKCOM )
Vice Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )

Appeal No. 1998-0866
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LEONARD W. TREASH JR
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
ROCHESTER, NY 14650-2201

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RL/pgg

APPEAL NO. 1998-0866 - JUDGE LAZARUS
APPLICATION NO. 08/698,707

APJ LAZARUS

APJ ABRAMS

APJ HARKCOM

DECISION: AFFIRMED

Prepared By: RBL

DRAFT TYPED: 26 Jun 01

FINAL TYPED: