Ex Parte Simeroth et al

Patent Trial and Appeal Board

Apr 7, 2017

14030786 (P.T.A.B. Apr. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/030,786 09/18/2013 Kristin Simeroth 45467 7485
131693 7590
Hovey Williams LLP
10801 Mastin Blvd
Suite 1000
Overland Park, KS 66210
EXAMINER
TREHAN, AKSHAY
ART UNIT PAPER NUMBER
2663
MAIL DATE DELIVERY MODE
04/07/2017 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 KRISTIN SIMEROTH, DARIN STEPHENS,
WEI CAO, and NICK WOLFE
Appeal 2016-007049
Application 14/030,7861
Technology Center 2600
Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—7, 9—14, and 20.3 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Bushnell,
Incorporated. Br. 5.
2 Our Decision makes reference to Appellants’ Appeal Brief (“Br.,” filed
October 23, 2015), and the Examiner’s Answer (“Ans.,” mailed May 4,
2016) and Final Office Action (“Final Act.,” mailed May 28, 2015).
3 Claim 8 has been cancelled and claims 15—19 have been withdrawn from
consideration.
Appeal 2016-007049
Application 14/030,786
INVENTION
The invention is directed to a trail camera system that captures a test
image after the camera has been set-up. Spec. 1-2, Abstract. The
independent claims on appeal are claims 1, 7, and 20. Claim 1 is illustrative
and is reproduced below.
1. A camera system comprising:
a camera operable for capturing images;
a communication device for transmitting the images to a
remote computer; and
a controller pre-programmed to prompt the camera to
automatically capture a test image a pre-determined number of
seconds after the camera is set-up, the controller subsequently
prompting the communication device to automatically send the
test image to the remote computer.
Sayers et al.
Steinberg et al.
Chang
Kelliher
Cohn
REFERENCES
US 2004/0008263 Al
US 6,750,902 B1
US 2008/0122920 Al
US 7,623,155 B2
US 2010/0280635 Al
Jan. 15,2004
June 15, 2004
May 29, 2008
Nov. 24, 2009
Nov. 4, 2010
REJECTIONS AT ISSUE
Claims 1—6 are rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Steinberg, Sayers, and Cohn. Final Act. 3—8.
Claims 7 and 9—144 are rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Steinberg, Sayers, Chang, and Cohn. Final Act. 8—
13.
4 Should there be further prosecution, we note that claims 10—12 depend
upon cancelled claim 8, which was cancelled in the Amendment entered on
March 31, 2015.
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Appeal 2016-007049
Application 14/030,786
Claim 20 is rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Steinberg, Sayers, Cohn, and Kelliher. Final Act. 13—14.
ISSUES
Did the Examiner err in finding that the combination of Steinberg,
Sayers, and Cohn teaches or suggests “a controller pre-programmed to
prompt the camera to automatically capture a test image a pre-determined
number of seconds after the camera is set-up, the controller subsequently
prompting the communication device to automatically send the test image to
the remote computer,” as recited in independent claim 1?
Did the Examiner err in finding it obvious to combine Steinberg,
Sayers, and Cohn?
ANALYSIS
Appellants argue that the combination of Steinberg, Sayers, and Cohn
fails to teach or suggest “a controller pre-programmed to prompt the camera
to automatically capture a test image a pre-determined number of seconds
after the camera is set-up,” as recited in independent claim 1. Br. 13.
Specifically, Appellants contend that although Steinberg teaches a trail
camera that a user can program to automatically take a picture at a particular
time, Steinberg does not contemplate the action taking place in relation to
the camera set-up process. Br. at 14. Additionally, Appellants argue that
Sayers does not teach the disputed limitation because Sayers merely teaches
programming a camera to start a timer when a presence is detected and
taking a picture after the time(s) expires, but not a number of seconds after
the camera is set-up. Br. 14.
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Application 14/030,786
We do not find Appellants arguments persuasive because Appellants
are responding to the Examiner’s rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”). Although we find that Steinberg, alone, teaches a system that
takes a picture a period of time after the camera is set-up as shown in
Figures 16 and 17 (which the Examiner cited in the Examiner’s Answer on
pages 4—5), we also sustain the Examiner’s rejection, which is based on a
combination of Steinberg, Sayers, and Cohn. Ans. 3-8.
The Examiner finds, and we agree, that both Steinberg and Sayers
teach systems that take a picture after a camera set-up. Ans. 3-5.
Steinberg’s system takes a picture at a certain time or at certain intervals
after set-up, and Sayers’ system takes a picture after a pre-determined
number of seconds once a control button is pushed. Ans. 3-5. Although we
agree with the Examiner’s interpretation (Ans. 5-6) that the first image
taken after a camera has been set up is broadly, and reasonably, interpreted
as a “test image” (and found in both Steinberg and Sayers), the Examiner
finds further, explicit, support in Cohn that proves a “test image” was known
in the art at the time of the invention. Ans. 6-8. Thus, the Examiner finds
that it is the combination of Steinberg’s teaching of taking a picture after a
camera set-up within Sayers’ pre-determined time period after set-up
wherein the picture taken is a “test image,” as taught by Cohn, that teaches
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Application 14/030,786
the disputed limitation.5 Ans. 9. Appellants do not apprise us of error in the
Examiner’s determination that the combined teachings of the references
would result in the disputed limitation.
Combination of Steinberg, Sayers, and Cohn
Appellants contend that the Examiner erred in combining Steinberg,
Sayers, and Cohn because the Examiner’s reasoning for the combination are
‘“mere conclusory statements’ without ‘some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.’”
Br. 15. Additionally, Appellants contend that the Examiner relied on
impermissible hindsight to make the combination. Br. 16.
We are not persuaded by Appellants’ arguments. The Examiner
provides sufficient “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (citation omitted). The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to combine
Steinberg and Sayers to enhance a temporal setting for a predetermined
image capture. Final Act. 4. Additionally, the Examiner concludes that it
would have been obvious to combine Steinberg and Sayers with Cohn in
order to verily that the camera was set-up correctly. Final Act. 6. As such,
the Examiner provides sufficient motivation, and Appellants have not
explained sufficiently why the Examiner’s analysis is incorrect.
Furthermore, the Examiner uses knowledge which is within that of a person
with ordinary skill in the art and does not rely solely on knowledge gleaned
5 We note that Appellants do not make any arguments with respect to the
Cohn reference in their Brief.
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Application 14/030,786
from Appellants’ application. Thus, we are not persuaded by Appellants that
the Examiner relies upon impermissible hindsight to improperly combine
Steinberg, Sayers, and Cohn.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a) as obvious over the combination of Steinberg, Sayers, and
Cohn. We also sustain the Examiner’s rejection of claim 7 under 35 U.S.C.
§ 103(a) as obvious over the combination of Steinberg, Sayers, Chang, and
Cohn; and the rejection of claim 20 under 35 U.S.C. § 103(a) as obvious
over the combination of Steinberg, Sayers, Cohn, and Kelliher, as
Appellants make the same arguments with respect to these claims as with
claim 1.
Claims 2—6 and 9—14
Appellants do not present separate arguments for claims 2—6 and 9—
14. Accordingly, we sustain the Examiner’s rejections of these claims for
the reasons indicated above with respect to claims 1 and 7.
CONCLUSION
The Examiner did not err in finding that the combination of Steinberg,
Sayers, and Cohn teaches or suggests “a controller pre-programmed to
prompt the camera to automatically capture a test image a pre-determined
number of seconds after the camera is set-up,” as recited in independent
claim 1.
The Examiner did not err in finding it obvious to combine Steinberg,
Sayers, and Cohn.
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DECISION
We affirm the Examiner’s 35 U.S.C. § 103(a) rejections of claims 1—
7, 9-14, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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