Ex Parte Mijailovic

Board of Patent Appeals and Interferences

Dec 3, 2009

10626110 (B.P.A.I. Dec. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte VLADAN MIJAILOVIC
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Appeal 2009-004509
Application 10/626,110
Technology Center 3600
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Decided: December 3, 2009
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Vladan Mijailovic (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-8. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to a camera mount for
holding a hand-held video recorder steady (Spec. 1:4-7).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A system for holding a hand-held video
camera steady during its movement while
recording, said system comprising
a) a support platform to which the video
camera is secured;
b) a support shaft connected to a bottom
surface of said platform;
c) a sphere affixed to an upper portion of said
support shaft;
d) a socket plate member which pivotally
captures said sphere in a socket formed therein,
said socket plate freely pivoting about said sphere
at all times;
e) a balance plate connected to a bottom
portion of said support shaft to help
counterbalance a weight of the camera;
f) means attachable to said socket plate
member by which said support platform and the
video camera are suspended;
whereby when the platform support with the
camera supported thereon is transported during
video recording using the means attachable to said
socket plate member, the camera is maintained in a
steady position by a gravitational force.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Donohue US 4,953,852 Sep. 4, 1990
Reese US 6,119,995 Sep. 19, 2000
Wu US 6,729,778 May 4, 2004

The following rejections by the Examiner are before us for review:
1. Claims 1-8 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
2. Claims 1-8 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
3. Claims 1-4 and 6-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reese in view of Wu.
4. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Reese in view of Wu, and further in view of Donohue.

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that claims 1-8 contain subject matter which was not described in
the Specification in such a way as to enable a person having ordinary skill in
the art to make and/or use the invention (App. Br. 2), (2) whether the
Examiner erred in concluding that claims 1-8 are indefinite (App. Br. 3), and
(3) whether the Examiner erred in finding that the combined teaching of
Reese and Wu describe a balance plate as called for in claim 1 (App. Br. 4).

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ANALYSIS

Rejection of claims 1-8 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The PTO bears the initial burden when rejecting claims for lack of
enablement, that is, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application. In re Wright, 999
F.2d 1557, 1561-62 (Fed. Cir. 1993).
Claim 1, section d calls for “a socket plate member which pivotally
captures said sphere in a socket formed therein, said socket plate freely
pivoting about said sphere at all times” (emphasis added).
Appellant admits that the claimed limitation “at all times” does not
appear in the Specification (App. Br. 2). Appellant contends, however, that
the Specification’s support for claim limitations does not have to be
provided in the exact same words called for in the claims (App. Br. 2).
Appellant still further contends that since Appellant’s invention “lacks any
means to lock the support platform [sic, socket plate member 42] relative to
the sphere [sic, spherical ball 40], it is clear it [sic, the socket plate member
42] is free to pivot relative thereto ‘at all times.’” (App. Br. 3).
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The Examiner concluded that “[t]he specification does not specifically
address as to what is meant by ‘at all times’ in such a way that one of
ordinary skill may make or use the invention.” (Ans. 3). The Examiner
found that the claim language “free pivoting at all times” [sic, “freely
pivoting . . . at all times”] alludes to the “timing” of an event that has not
been described in the Specification in such a way as to enable one of
ordinary skill in the art to make or use the device (Ans. 6).
We agree with Appellant that the Specification’s support for claim
limitations does not have to be provided in the exact same words called for
in the claims. However, Appellant’s disclosure (Specification, claims and/or
drawings) must provide sufficient description to enable one skilled in the art
to make and use “said socket plate freely pivoting about said sphere at all
times” as called for in claim 1, section d.
Appellant’s Specification describes that the “[s]pherical ball 40 is
preferably made of self-lubricating material . . . Spherical ball 40 call [sic,
can] freely rotate in socket plate 42 about the ‘z’ (or yaw) axis freely turning
about the z-axis through 360°.” (Spec. 5:5-13).
Accordingly, in view of the Appellant’s disclosure of a self-
lubricating spherical ball 40 freely rotating in socket plate 42, a person
having ordinary skill in the art would understand that the claim limitation “at
all times” (claim 1, section d) means that the spherical ball is freely rotatable
in the socket plate and is incapable of being locked relative to the socket
plate.
In light of our claim interpretation, we find that the Examiner has not
met his burden of setting forth a reasonable explanation as to why he
believes that the scope of protection provided by that claim is not adequately
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enabled by the description of the invention provided in the specification of
the application.
Therefore, we conclude that Appellant has demonstrated that the
Examiner erred in rejecting claim 1 as failing to comply with the enablement
requirement of 35 U.S.C. § 112. Appellant has likewise demonstrated error
in the Examiner’s rejection of claims 2-8, which depend from claim 1.

Rejection of claims 1-8 under 35 U.S.C. § 112, second paragraph, as being
indefinite
Appellant contends that the claim limitation “at all times” (claim 1,
section d) is clear and definite (App. Br. 3).
The Examiner concluded (1) that it is unclear what is meant by the
word “times” in the claim limitation “at all times,” and (2) it is unclear how
“timing” pertains to the structure of the device (Ans. 3, 7).
As we previously stated in regard to the rejection under 35 U.S.C. §
112, first paragraph, a person having ordinary skill in the art would
understand that the claim limitation “at all times” (claim 1, section d) means
that the spherical ball is freely rotatable in the socket plate and is incapable
of being locked relative to the socket plate.
Thus, we find that claim 1 is not indefinite under § 112, second
paragraph.
Therefore, we conclude that Appellant has demonstrated that the
Examiner erred in rejecting claim 1 as being indefinite under 35 U.S.C.
§ 112, second paragraph. Appellant has likewise demonstrated error in the
Examiner’s rejection of claims 2-8, which depend from claim 1.

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Prior Art Rejection
Appellant contends that the combined teaching of Reese and Wu do
not describe a balance plate as called for in claim 1 (App. Br. 4).
The Examiner found (1) that “Reese does [sic, does not] teach a
counterbalanced socket plate member connected to a bottom of the support
shaft . . . ” (Ans. 5), and (2) that Wu describes, inter alia, a
counterbalancing socket plate member 12 connected to a bottom of the
support shaft 20 (Ans. 5). The Examiner concluded that “it would have been
obvious to one having ordinary skill in the art . . . from the teachings of Wu .
. . to have added these things to the device of Reese . . . ”
Claim 1, section e calls for “a balance plate connected to a bottom
portion of said support shaft to help counterbalance a weight of the camera.”
Reese describes a system 10 for mounting a display unit D including a
threaded mounting shaft 18 (col. 3, ll. 12-31), but does not describe a
balance plate or that the threaded mounting shaft 18 is connected to a
balance plate to counterbalance the weight of a camera.
Wu describes a fixture for fixing a camera including a coupling device
10 (col. 1, l. 66-col. 2, l. 2). Wu’s coupling device 10 includes a first
coupling member 11 and a second coupling member 12 (col. 2, ll. 3-8).
Wu’s first and second coupling members 11, 12 are employed to engage
with a handle bar 71 of a bike 70 (col. 2, ll. 55-59 and col. 3, ll. 9-12, and
fig. 3). In their engagement with a handle bar 71 of a bike 70, Wu’s first and
second coupling members 11, 12 are fixed to the handle bar 71 (col. 3, ll. 9-
12) and, therefore, do not provide a counterbalance to the weight of the
camera.
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We find that Wu does not describe “a balance plate connected to a
bottom portion of said support shaft to help counterbalance a weight of the
camera” as called for in claim 1, section e.
Further, we find that the combined teachings of Reese and Wu do not
describe “a balance plate connected to a bottom portion of said support shaft
to help counterbalance a weight of the camera” as called for in claim 1,
section e.
Therefore, we conclude that Appellant has demonstrated that the
Examiner erred in rejecting claim 1 over Reese in view of Wu. Appellant
has likewise demonstrated error in the Examiner’s rejection of claims 2-4
and 6-8, which depend from claim 1.
The Examiner has not relied on Donohue for any teaching that would
remedy the deficiency in the combination of Reese and Wu (Ans. 5-6). We
thus conclude that the Examiner also erred in rejecting claim 5 over Reese in
view of Wu, and further in view of Donohue.

CONCLUSIONS
Appellant has established that the Examiner erred in concluding that
claims 1-8 contain subject matter which was not described in the
Specification in such a way as to enable a person having ordinary skill in the
art to make and/or use the invention.
Appellant has established that the Examiner erred in concluding that
claims 1-8 are indefinite.
Appellant has established that the Examiner erred in finding that the
combined teaching of Reese and Wu describe a balance plate as called for in
claim 1.
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DECISION
The decision of the Examiner to reject claims 1-8 is reversed.

REVERSED

Klh

RICHARD K. THOMSON, ATTORNEY
7691 FAIRLANE DRIVE
FAIRVIEW, PA 16415