KELTON TEMBY et al.

Patent Trials and Appeals Board

Feb 18, 2022

2021001103 (P.T.A.B. Feb. 18, 2022)

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. 12/868,859 08/26/2010 KELTON TEMBY P035X 6745 98471 7590 02/18/2022 Teladoc Health C/O Clarivate 3133 W Frye Road Suite 400 Chandler, AZ 85226 EXAMINER MOHAMMED, ASSAD ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 02/18/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): clambrecht@teladochealth.com docketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KELTON TEMBY, CHARLES S. JORDAN, DANIEL S. SANCHEZ, STEVEN E. BUTNER, DEREK J. WALTERS, FUJI LAI, KEVIN P. HANRAHAN, JOSHUA A. BOUGANIM, and JAMES ROSENTHAL ____________ Appeal 2021-001103 Application 12/868,859 Technology Center 2600 ____________ Before KARL D. EASTHOM, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as InTouch Technologies, Inc. Appeal Br. 2. Appeal 2021-001103 Application 12/868,859 2 THE INVENTION The disclosed and claimed invention relates generally to “the field of telepresence systems,” and more specifically to “portable telepresence systems that include an apparatus remotely controlled through a remote station, where the system includes cameras, monitors, microphones, and speakers to allow for two-way audio-visual communication.” Spec. ¶ 2.2 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A portable telepresence apparatus coupled to a remote station that has a station monitor, a station camera, a station speaker and a station microphone, the portable telepresence apparatus comprising: a hand held housing; a first camera coupled to a first face of said housing; a monitor that is coupled to said first face of said housing and simultaneously displays a first image captured by the first camera and a station image captured by the station camera; a speaker that is coupled to said housing and generates a sound provided through the station microphone; a microphone coupled to said housing; a battery coupled to said housing; a wireless transceiver coupled to said housing; and a viewfinder screen coupled to a second face of said housing, wherein the monitor and the viewfinder face different directions and said viewfinder screen displays the first image while said monitor displays the first image and the station image. 2 We refer to the Specification filed Aug. 26, 2010 (“Spec.”); Final Office Action mailed July 8, 2019 (“Final Act.”); Appeal Brief filed Aug. 10, 2020 (“Appeal Br.”); Examiner’s Answer mailed Oct. 2, 2020 (“Ans.”); and the Reply Brief filed Dec. 2, 2020 (“Reply Br.”). Appeal 2021-001103 Application 12/868,859 3 REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Lee et al. (“Lee”) US 2007/0057866 A1 Mar. 15, 2007 Sandbeg et al. (“Sandbeg”) US 2007/0064092 A1 Mar. 22, 2007 Jobs et al. (“Jobs”) US 2008/0174570 A1 July 24, 2008 Braunstein et al. (“Braunstein”) US 2009/0185792 A1 July 23, 2009 Wang et al. (“Wang”) US 7,761,185 B2 July 20, 2010 REJECTIONS Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as unpatentable over Wang, Lee, and Braunstein. Final Act. 9. Claims 3-9 and 11 stand rejected under 35 U.S.C. § 103 as unpatentable over Wang, Lee, Braunstein, and Jobs. Final Act. 16. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable over Wang, Lee, Braunstein, and Sandbeg. Final Act. 20. ANALYSIS Procedural History This is the second time the claimed invention is before us.3 In the first appeal, we affirmed the Examiner’s rejection of the then pending claims as 3 Appellant did not identify any related proceedings, including the earlier Appeal No. 2018-003377. Appellant and Appellant’s counsel are reminded of the obligation to comply with the requirements of 37 C.F.R. § 41.37(c)(1)(ii), which requires, inter alia, “[a] statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, ‘related cases’) which satisfy all of the following conditions: involve an application or patent owned by the appellant or Appeal 2021-001103 Application 12/868,859 4 unpatentable over a combination of the following references: Wang, Lee, Braunstein, Jobs, and Sandbeg. Ex parte Temby, Appeal No. 2018-003377 (PTAB Sept. 28, 2018). In Temby, then pending claim 1 stated as follows (emphases added): 1. A portable telepresence apparatus coupled to a remote station that has a station monitor, a station camera, a station speaker and a station microphone, the portable telepresence apparatus comprising: a hand held housing; a first camera coupled to a first face of said housing; a monitor that is coupled to said first face of said housing and displays video captured by the station camera; a speaker that is coupled to said housing and generates a sound provided through the station microphone; a microphone coupled to said housing; a battery coupled to said housing; a wireless transceiver coupled to said housing; and a viewfinder screen coupled to a second face of said housing, wherein the monitor and the viewfinder face different directions and said viewfinder screen displays video captured by said first camera simultaneously with said monitor displaying video captured by the station camera. Temby, at 2 (hereinafter “Temby claim 1”). During the original appeal, Appellant’s argument focused on whether the combination of Wang, Lee, and Braunstein taught “a viewfinder screen coupled to a second face of said housing, wherein the monitor and the assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.” (emphases added). Appeal 2021-001103 Application 12/868,859 5 viewfinder face different directions and said viewfinder screen displays video captured by said first camera simultaneously with said monitor displaying video captured by the station camera” as then recited in claim 1. Temby, at 2-3. We rejected those arguments, and found that “Lee teaches simultaneously displaying on two display units” and that “Braunstein teaches displays on the front and back of the device.” Id. at 5. In a Request for Continued Examination following Temby, Appellant amended the “viewfinder screen” in independent claim 1 such that “the monitor and the viewfinder face different directions and said viewfinder screen displays the first image while said monitor displays the first image and the station image.” Claims 1-11 Claim 1 recites (emphasis added) “a viewfinder screen coupled to a second face of said housing, wherein the monitor and the viewfinder face different directions and said viewfinder screen displays the first image while said monitor displays the first image and the station image.” The Examiner finds that Lee’s two displays, one coupled on each face of the device, which show different images on the different displays, teach the disputed limitation. Final Act. 11 (citing Lee ¶¶ 30, 35, Figs. 2A, 3-6). Specifically, the Examiner relies on Lee’s teaching that an image “received through the transmission (i.e. remote station) would display on one of the screens (i.e. first display) and a second image captured by the camera would be displayed on the second display of the device.” Ans. 18. The Examiner further finds that Lee’s “images received from the camera and images received through the transceiver are displayed on the dual screens Appeal 2021-001103 Application 12/868,859 6 simultaneously.” Id. According to the Examiner, Lee teaches “that the device is capable of displaying images captured by the camera and received images from the remote site on the displays,” and that the “local image captured can be displayed on both screens,” and that this teaches “a monitor and a viewfinder that display the same image at the same time.” Id. at 19-20 (citing Lee, Fig. 6). Appellant argues that Lee does not teach that “the same image [is] displayed on both displays at the same time, as required by claim 1.” Appeal Br. 9. Specifically, Appellant argues that Lee teaches that the images that are displayed on the two display units “in various arrangements,” or as “portions of the divided image,” are “different images” and do not teach “‘the image’ captured by a first camera, as required by claim 1.” Id. Appellant further argues that “Lee describes a device with multiple screens that can display different images at the same time on the different screens.” Reply Br. 2 (emphasis added). We are persuaded by Appellant’s argument as the Examiner has not identified sufficient evidence or provided sufficient explanation as to how Lee teaches the viewfinder screen displaying the first image while the monitor also displays the same first image as claimed. Lee explains that “the image captured by the first camera unit 320 or the second camera unit 330 is displayed on the first display unit 340, and the image received through the transceiver 310 is displayed on the second display unit 350.” Lee ¶ 30. In an example, Lee discloses that “the image received from the a third party is displayed on the first display unit 340 and the image captured by the first camera unit 320 and the image captured by the second camera unit 330 are displayed together on the second display unit Appeal 2021-001103 Application 12/868,859 7 350 by dividing the screen.” Id. ¶ 36. In another example, Lee discloses that “the image received from another party and images captured through the first or second camera units 320 and 330 are displayed together on the first display unit 340 by splitting the screen, and another image inputted through the first or second camera units 320 and 330 is displayed on the second display unit 350.” Id. ¶ 37 (emphasis added). In yet another example, Lee discloses that “the image received or the image captured by the first camera unit 320 or the second camera unit 330 can be divided to be partly displayed on the first 340 and second 350 display units, respectively.” Id. ¶ 40. In other words, the sections of Lee cited by the Examiner and on the record before us do not teach the same image (i.e., “the first image”) being simultaneously displayed (i.e., displayed “while”) on both the viewfinder screen and the monitor. Although Lee describes displaying images on the two display screens simultaneously (i.e., displayed on the viewfinder screen while displayed on the monitor), Lee’s simultaneously displayed images are not the same image (i.e., “the first image”). Therefore, we agree with Appellant that the Examiner’s finding that Lee teaches the disputed limitations is in error because it is not supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (The Examiner’s burden of proving non-patentability is by a preponderance of the evidence.); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”). Appeal 2021-001103 Application 12/868,859 8 Because we agree with at least one of the arguments advanced by Appellant regarding claim 1, we need not reach the merits of Appellant’s other arguments. Accordingly, we are constrained on the record before us to reverse the Examiner’s § 103 rejection of independent claim 1, and dependent claims 2- 11. DECISION We reverse the Examiner’s § 103 rejections of claims 1-11. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 103 Wang, Lee, Braunstein 1, 2 3-9, 11 103 Wang, Lee, Braunstein, Jobs 3-9, 11 10 103 Wang, Lee, Braunstein, Sandbeg 10 Overall Outcome 1-11 REVERSED