Ex parte LEMELSON

Board of Patent Appeals and Interferences

Jan 31, 2002

08483928 (B.P.A.I. Jan. 31, 2002)

1
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not written for publication and is not binding precedent of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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEROME H. LEMELSON
__________
Appeal No. 2000-2232
Application 08/483,928
___________
HEARD: January 23, 2002
___________
Before HAIRSTON, KRASS, and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 21-
37, all of the claims pending in the present application.
Claims 1-20 have been canceled.
The invention relates generally to a portable camera and
recording unit capable of recording motion pictures and still
Appeal No. 2000-2232
Application 08/483,928
Specification, page 1, lines 2-5.1
We note that the copy of claim 28 in Appellant's2
Appendix A is incorrect as it does not contain the changes
made in Appellant's Amendment C (paper no. 9). In
subparagraph (c) of this claim, at line 1 the words "manually
operated" are not deleted, and the words "by a camera
operator" are not inserted after the word "activated". Our
decision considers this claim as presented in Amendment C and
not as set forth in Appellant's Appendix A.
2
image signals, and still images on hard copies . In1
particular, the portable unit (figure 2, item 10) comprises a
hand-held, box-like housing (figure 2, item 11) supporting a
camera (figure 1, item 32), a video recorder and reproduction
device (figure 1, item 24), a video-signal display unit
(figure 1, item 27), and a printer (figure 5, item 80;
specification, page 26). The portable unit also includes a
manually operated selection switch (figure 5, item 82)
which couples either the camera output or the video recorder
and reproducer output to the video-signal display unit, and a
manually operated printing trigger (figure 5, item 80c).
Independent claim 21 is reproduced as follows :2
21. A portable video unit comprising:
(a) a hand-held, box-like housing supporting:
(i) a camera having an output for electrical video
Appeal No. 2000-2232
Application 08/483,928
3
picture signals representative of image phenomena
occurring outside said housing,
(ii) a video recorder and reproduction device
electrically coupleable to the output of the
camera and
having an output for picture signals reproduced from a
record member supported in said housing,
(iii) a video-signal display unit including a
display screen viewable from the exterior of said
housing, and
(iv) a printer electrically coupled to the video
recorder and reproduction device;
(b) a manually operated selection switch having two
positions, wherein, without operating any other
switch, in the first position, the video-signal display
unit is coupled to the output of said camera and, in the
second position, the video-signal display unit is coupled to
the output of said video recorder and reproduction
device; and
(c) a manually operated printing trigger that, when in a
predetermined position, causes the printer to output a
hard copy of the image displayed on the screen.
The Examiner relies on the following references:
Lemelson 3,943,563 Mar. 9, 1976
Munsey 4,057,836 Nov. 8, 1977
Camras 4,097,893 Jun. 27, 1978
Kimura 4,507,686 Mar. 26, 1985
Lemelson 4,604,668 Aug. 5, 1986
Lemelson 4,819,101 Apr. 4, 1989
Claims 21-37 stand rejected under the judicially created
Appeal No. 2000-2232
Application 08/483,928
The Brief was received October 18, 1999.3
The Reply Brief was received April 3, 2000.4
4
doctrine of obviousness-type double patenting over claims 1-22
of Lemelson 4,819,101 (hereinafter "Lemelson '101") in view of
Lemelson 3,943,563 (hereinafter "Lemelson '563").
Claims 21, 23-28, 30 and 32-37 stand rejected under the
judicially created doctrine of obviousness-type double
patenting
over claims 1-19 of Lemelson 4,604,668 (hereinafter "Lemelson
‘668") in view of Lemelson 3,943,563 (hereinafter "Lemelson
'563").
Claims 21-23, 25-28, 30-32 and 34-37 stand rejected under
35 U.S.C. § 103 as being unpatentable Lemelson '563 in view of
Camras and Kimura.
Claims 24, 29 and 33 stand rejected under 35 U.S.C. § 103
as being unpatentable Lemelson '563 in view of Camras and
Kimura and Munsey.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief , Reply Brief and the3 4
Appeal No. 2000-2232
Application 08/483,928
The Examiner's Answer was mailed January 18, 2000.5
Brief, page 14.6
5
Examiner's Answer for the respective details thereof. 5
OPINION
A. Rejection of claims 21-37 under the judicially created
doctrine of obviousness-type double patenting over claims 1-22
of Lemelson '101 in view of Lemelson '563
We will not sustain the rejection of claims 21-37 under
the judicially created doctrine of obviousness-type double
patenting over claims 1-22 of Lemelson '101 in view of
Lemelson '563.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found
in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983).
Appellant argues that both the '101 and '563 patents to6
Appellant lack the claimed feature of supporting a printer in
Appeal No. 2000-2232
Application 08/483,928
Reply Brief, page 5.7
Answer, page 22.8
Reply brief, page 5.9
Answer, pages 6 and 9.10
6
a common housing. In addition, Appellant cites the7
Examiner's statement "The proposed obviousness-type double8
patenting rejection over the claims of the parent '101 patent
in view of Lemelson '563 does not teach or suggest the claimed
features of supporting the printer in a common housing."
Appellant then asserts that the sole motivation asserted9
by the Examiner is that one of ordinary skill in the art at10
the time of the invention would have thought to add the
printer "so that hard/copies can be given to friends and
relatives for memory." Appellant states that this motivation
has two problems: First, that the proposed motivation would
not motivate one to include the printer in the same housing,
as a printer coupled remotely would have sufficed. Second,
that the Examiner merely identifies a benefit of the claimed
invention, which militates in favor of patentability, rather
than a motivation that the Examiner has proven was known to
Appeal No. 2000-2232
Application 08/483,928
Answer, page 5.11
Answer, page 6.12
7
ordinary skilled artisans without hindsight and would have
caused such a person naturally to combine known references.
The Examiner admits that claims 1-22 of the '101 patent11
do not disclose, inter alia, a printer electrically coupled to
the video recorder and reproducing device, or a manually
operated printing trigger that causes the printer to output a
hard copy of the image displayed on the screen as recited in
claims 21, 28 and 32. The Examiner then points to Lemelson12
'563 for its teaching of a system for recording and
reproducing video information having a printer (111)
electrically coupled to the video recorder and reproduction
device, and a manually operated printing trigger that causes
the printer to output a hard copy of the image displayed on
the screen. The Examiner then finds that it would have been
obvious to one of ordinary skill in the art at the time of the
invention to provide claims 1-22 of the '101 patent with the
printer to output a hard copy of the image displayed on the
screen so that the hard copy "can be given to friends and
Appeal No. 2000-2232
Application 08/483,928
Answer, page 22.13
Claim 21, subsection (a); claim 28, subparagraph (a);14
claim 32, subparagraph (a).
Claim 21, section (a), subparagraph (iv); claim 28,15
subparagraph (h); claim 32, subparagraph (a).
8
relatives for memory".
In addition, the Examiner admits that this rejection13
over the claims of the parent '101 patent in view of Lemelson
'563 does not teach or suggest the claimed feature of
supporting a printer in a common housing. However, the
Examiner asserts that whether or not the printer and printing
trigger of '563 are included in the housing of '101, is merely
a well known design option obvious to one of ordinary skill in
the art, because
maintaining parts fixed together as a single unit provides no
significant functional or patentable differences.
Turning first to Appellant's claims 21, 28 and 32, we
find that these claims expressly recite limitations directed
to a hand-held, box-like housing" which supports a camera,14
video recorder/reproduction device, and a printer . We agree15
with Examiner's finding that the proposed obviousness-type
Appeal No. 2000-2232
Application 08/483,928
Column 1, lines 59-63.16
9
double patenting rejection over the claims of the parent '101
patent in view of Lemelson '563 does not teach or suggest the
claimed features of supporting a printer in a common housing.
We find that the Lemelson '563 patent is directed to a16
method for recording a large quantity of information of image
frame phenomena, such as document recording in a form which is
easily recorded though not visually monitorable as recorded.
Its controls are operated from a console (45) and there is no
teaching that the system is portable or mounted in a unitary
housing. This apparatus and its use thus differs
substantially from Appellant's claimed invention which is
directed to a hand held portable video unit which supports a
camera, video recorder/reproduction device, and a printer.
We find that the Examiner's statement of the motivation
to combine the disclosed claims 1-22 of the '101 patent with
the '563 printer being that a hard copy can be given to
friends and relatives for memory is without basis from express
teachings or suggestions found in the prior art, or by
Appeal No. 2000-2232
Application 08/483,928
10
implications contained in such teachings or suggestions. There
is absolutely no suggestion in the prior art of the
desirability of the Examiner's proposed modification.
Furthermore, we agree with Appellant that the proposed
motivation would not motivate one to include the printer in
the same housing, as a printer coupled remotely would have
sufficed.
We similarly find the Examiner's conclusory statement
that including a printer in the housing of '101 is merely a
well known design option obvious to one of ordinary skill in
the art because maintaining parts fixed together as a single
unit provides no significant functional or patentable
differences, to be without basis from express teachings or
suggestions found in the prior art, or by implications
contained in such teachings or
suggestions. Again, there is absolutely no suggestion in the
prior art of the desirability of the Examiner's proposed
modification.
The Federal Circuit states that "[t]he mere fact that the
Appeal No. 2000-2232
Application 08/483,928
11
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n. 14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). However,
"[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention." Para-
Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc. 721 F.2d at 1553, 220 USPQ at 312-13.
In addition, the Federal Circuit has recently stated
"This factual question of motivation is material to
patentability, and could not be resolved on subjective belief
and unknown authority.” It is improper, in determining
whether a person of ordinary skill would have been led to this
combination of references, simply to "[use] that which the
inventor taught against its teacher." W.L. Gore v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983)." In re Lee, ___
Appeal No. 2000-2232
Application 08/483,928
12
F.2d ____, _______, _____ USPQ _____ , _____ (Fed. Cir.
2002)(Appeal no. 00-1158).
We therefore agree with Appellant that the Examiner has
failed to set forth a prima facie case. The Examiner must
establish why one having ordinary skill in the art would have
been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by implications
contained in such teachings or suggestions. The references of
record fail to provide express teachings or suggestions to
make the combinations suggested by the Examiner.
Therefore, we will not sustain the rejection of claims
21-37 under the judicially created doctrine of obviousness-
type double patenting over claims 1-22 of Lemelson '101 in
view of Lemelson '563.
B. Rejection of claims 21, 23-28, 30 and 32-37 under the
judicially created doctrine of obviousness-type double
patenting over claims 1-19 of Lemelson 4,604,668 in view of
Lemelson 3,943,563
Claims 21, 23-28, 30 and 32-37 stand rejected under the
judicially created doctrine of obviousness-type double
Appeal No. 2000-2232
Application 08/483,928
Brief, pages 25-26.17
Answer, pages 25-26.18
13
patenting over claims 1-19 of Lemelson '668 in view of
Lemelson '563.
Appellant's arguments in regard to this rejection are17
substantially the same as those presented by Appellant for the
rejection of claims 21-37 under the judicially created
doctrine of obviousness-type double patenting over claims 1-22
of Lemelson '101 in view of Lemelson '563. These arguments
have been discussed in section "A" above.
Similarly, the Examiner's arguments in regard to this18
rejection are substantially the same as those presented by the
Examiner for the rejection of claims 21-37 under the
judicially created doctrine of obviousness-type double
patenting over claims 1-22 of Lemelson '101 in view of
Lemelson '563. These arguments have been discussed in section
"A" above.
As claims 1-19 of the '668 patent do not teach the hand-
held box-like housing which supports the printer as set forth
in all of the independent claims, our reasoning and findings
Appeal No. 2000-2232
Application 08/483,928
Brief, pages 4-5.19
14
set forth in section "A" apply equally to this rejection.
Therefore, we will not sustain the rejection of claims
21, 23-28, 30 and 32-37 under the judicially created doctrine
of
obviousness-type double patenting over claims 1-19 of Lemelson
'668 in view of Lemelson '563.
C. Rejection of claims 21-23, 25-28, 30-32 and 34-37 under
35 U.S.C. § 103 as being unpatentable over Lemelson '563 in
view of Camras and Kimura
Claims 21-23, 25-28, 30-32 and 34-37 stand rejected under
35 U.S.C. § 103 as being unpatentable Lemelson '563 in view of
Camras and Kimura.
Appellant argues that the cited references do not meet19
the express limitations of each of the independent claims that
a single hand-held, box-like housing supports a camera, a
video recorder/reproducer and a printer. Appellant asserts
that the '563 patent shows no housing at all and cites the
Appeal No. 2000-2232
Application 08/483,928
Final rejection, page 11, lines 7-8.20
Final rejection, page 14, lines 9-10.21
Figure 1, item 260.22
Column 1, lines 19-48.23
15
Examiner's admission that the '563 patent does not20
specifically disclose that all elements are built on a
portable video unit.
Appellant then argues that contrary to the Examiner's
finding that one "skilled in the art would have no difficulty21
to build the camera . . . and printer of Lemelson in the
portable housing in a manner as taught in Camras . . . ",
Camras teaches just the opposite. Specifically, Appellant
points to Camras' hand-held recording unit which is in22
communication via a transmitter (250) to a separately housed
video monitor (252) and tape recording unit (270). Appellant
points out that Camras has no printer, and expressly excludes23
the video recorder from being in the housing holding the
camera, so that the camera may be readily carried without
difficulty and that the camera station can be small, extremely
light weight, and with a structure no larger than comparable
Appeal No. 2000-2232
Application 08/483,928
Brief, page 5.24
Answer, page 11.25
Answer, page 14.26
16
movie cameras.
In addition, Appellant argues that Camras does not24
provide any motivation to combine a camera, display unit, and
recording/reproduction device in a common housing.
In the rejection, the Examiner states "It would have25
been obvious to one of ordinary skill in the art at the time
of the invention to build all of the elements of Lemelson in a
portable video recording unit in a manner as taught in Camras
because Camras teaches an advantage of readily carrying about
without difficulty with the portable video camera and such
advantage being desirable to achieve efficient system
operation in Lemelson."
In response to Appellant's arguments the Examiner
asserts that Camras teaches that "a portable camera can26
supporting [sic] a variety [sic] separate elements such as
camera, receiver, indicating means, and a control circuit.
From the teaching of Camras, one of ordinary skill in the art
Appeal No. 2000-2232
Application 08/483,928
Answer, page 14.27
17
would have no difficulty to build the camera . . . and the
printer of Lemelson in the portable housing in a manner as
taught in Camras in order to readily carry the apparatus of
Lemelson without difficulty."
In addition, the Examiner finds that "The artisan would27
have recognized the obviousness of carrying the apparatus of
Lemelson without any difficulty by supporting the camera, the
video recorder, the video-signal display unit and the printer
in a common portable housing."
Finally, the Examiner argues that even if, arguendo, the
proposed combination of the references does not teach the
inclusion a printer in the camera housing, such inclusion is
merely considered to be a well known design option obvious to
one of ordinary skill in the art because maintaining parts
fixed as a single unit provides no significant functional or
patentable differences.
Turning to independent claims 21, 28 and 32, we agree
with Appellant that the cited references do not meet the
express limitation of each of these claims that a single hand-
Appeal No. 2000-2232
Application 08/483,928
Column 3, lines 9-38.28
Column 1, lines 19-27.29
Column 1, lines 32-41.30
Column 1, lines 41-61.31
18
held, box-like housing support a camera, a video
recorder/reproducer and a printer. In addition, we agree with
Appellant that Camras teaches away from the Examiner's
proposed combination.
One important indicium of non-obviousness is "teaching
away" from the claimed invention by the prior art. In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed.
Cir. 1988), In re Bell, 991 F.2d 781, 784, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993). Camras specifically divides his video
recording system into a separate camera station (260) and a
separate remote recorder/monitor station (270, 252) which use
wireless communications . Camras states that such separate28
camera station may readily be carried about without
difficulty , and that as a result of the arrangement the29
camera station may be small and extremely light weight . In30
addition, Camras teaches that the camera station takes the31
Appeal No. 2000-2232
Application 08/483,928
19
form of a single hand held structure no larger than a
comparable movie camera, and that it is unnecessary to design
the recording station as a continuously manually carried
portable structure, but to design it for optimum performance.
Thus, we find that not only does Camras not provide any
motivation to combine a camera, display unit, and
recording/reproduction device in a common housing, but
actually teaches one skilled in this art to the contrary.
We therefore agree with Appellant that the Examiner has
failed to set forth a prima facie case. The Examiner must
establish why one having ordinary skill in the art would have
been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by implications
contained in such teachings or suggestions. The references of
record fail to provide express teachings or suggestions to
make the combinations suggested by the Examiner.
Therefore, we will not sustain the rejection of claims
21-23, 25-28, 30-32 and 34-37 under 35 U.S.C. § 103 as being
Appeal No. 2000-2232
Application 08/483,928
Answer, page 13.32
20
unpatentable Lemelson '563 in view of Camras and Kimura.
D. Rejection of claims 24, 29 and 33 under 35 U.S.C. § 103 as
being unpatentable over Lemelson '563 in view of Camras and
Kimura and Munsey
Claims 24, 29 and 33 stand rejected under 35 U.S.C. § 103
as being unpatentable over Lemelson '563 in view of Camras and
Kimura and Munsey.
First, we note that the Examiner has only cited Munsey
for its disclosure of a digital memory . Its application by32
the Examiner is irrelevant to the issues discussed above in
regard to Camras, and it makes no disclosure as mounting of a
video camera, recorder and printer.
Furthermore, these claims depend upon independent claims
21, 28 and 32 respectively, and contain limitations not
relevant to our reasons for the reversal of the Examiner’s
rejection of the parent claims over Lemelson '563 in view of
Camras and Kimura.
Therefore, we will not sustain the rejection of claims
24, 29 and 33 under 35 U.S.C. § 103 as being unpatentable over
Appeal No. 2000-2232
Application 08/483,928
21
Lemelson '563 in view of Camras and Kimura and Munsey.
CONCLUSION
We have not sustained any of the rejections of claims 21-
37. Accordingly, the Examiner's decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2000-2232
Application 08/483,928
22
Louis J. Hoffman
14614 N. Kierland Blv.
Suite 300
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