SONY CORPORATION

Patent Trials and Appeals Board

Mar 31, 2020

14794568 - (D) (P.T.A.B. Mar. 31, 2020)

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.
14/794,568 07/08/2015 Akihiro Nakamura 450100-06173.2 1072
20999 7590 03/31/2020
HAUG PARTNERS LLP
745 FIFTH AVENUE - 10th FLOOR
NEW YORK, NY 10151
EXAMINER
LIE, ANGELA M
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
docket@haugpartners.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AKIHIRO NAKAMURA and EIJI OBA
____________________

Appeal 2020-000568
Application 14/794,568
Reissue of US Patent 8,480,315 B2
Technology Center 3900
____________________

Before DANIEL S. SONG, MICHELLE R. OSINSKI, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s
decision to reject claims 1–4 and 7–13 as unpatentable.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Sony Corporation as the real party in interest.
Appeal Br. 2.
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Application 14/794,568
Reissue of US Patent 8,480,315 B2

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BACKGROUND
US Patent 8,480,315 (“the ’315 Patent”) issued from U.S. Application
12/787,872, filed May 26, 2010 (“the ’872 application”), claiming priority to a
Japanese patent application filed November 9, 2007. Appellant’s claimed
invention is directed to a camera structure. The ’315 Patent issued with claims 1–
4, which remain the same in this reissue examination. Claims 7–13 are added in
this reissue examination. Claims 1, 7 and 10 are independent. Claim 1,
reproduced below, illustrates the claimed invention.
1. A camera mounting structure for mounting an on-vehicle
camera on a vehicle, said on-vehicle camera including an image pick-
up module having a lens and an image pick-up device, a connector
receptacle formed in said image pick-up module, a connector plug
formed so as to be inserted into and extracted from said connector
receptacle and a cable connected to said connector plug to send a
signal obtained in the image pick-up module, said camera mounting
structure comprising:
a bracket portion, for mounting said on-vehicle camera, is
disposed in an external facing panel component forming an external
face of the vehicle, said bracket portion includes a module attaching
portion to which said image pick-up module is fixed via a first snap-fit
structure, and
a connector attaching portion to which said connector plug is
fixed via a second snap-fit structure, and
said connector receptacle is securely connected to said
connector plug when said image pick-up module is fixed to said
module attaching portion and said connector plug is fixed to said
connector attaching portion.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Okuno US 6,707,619 B1 March 16, 2004
Kano US 7,349,202 B2 March 25, 2008
Khanna US 2008/0231744 A1 September 25, 2008

REJECTIONS
I. Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Khanna and Okuno. Final Act. 3.
II. Claims 2–4 and 7–13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Khanna, Okuno, and Kano. Final Act. 5.

ANALYSIS
We review the appealed rejections for error based upon the issues identified
by Appellant and in light of the arguments and evidence produced thereon. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been
the Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”)). We have considered all of Appellant’s arguments set
forth in the Appeal Brief and the Reply Brief.
The Examiner finds that Khanna discloses, inter alia, a camera mounting
structure for mounting a camera 70 on a vehicle 10. Final Act. 3. According to the
Examiner, Khanna’s camera mounting structure comprises “a bracket portion
configured for mounting said on-vehicle camera,” the bracket portion including a
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module attaching portion 45, 73, 82, 42 to which the camera is fixed. Id. (citing
Khanna ¶ 23 (italics omitted) (“[h]orizontal trim piece 40 may be contoured for
mounting camera 70 via the shape of the outer surface 43 thereof”), ¶ 34
(“fast[e]ners”), Fig. 10). The Examiner finds that Khanna’s camera 70, and thus
the cable 75 connected thereto, is retained within pocket 42 via two fasteners 73,
and that Khanna discloses fasteners and snap-fitting being suitable known
alternatives for mounting. See id. at 3–4 (citing Khanna ¶¶ 26, 28, 34). Although
Khanna shows a cable 75 extending through a rear portion of its camera pocket 42
to connect to camera 70, Khanna does not disclose attachment between its cable 75
and camera 70 being via a connector plug and connector receptacle as claimed. Id.
at 4.
The Examiner finds, however, that Okuno discloses an assembly employing
a connector plug and connector receptacle to connect a cable to an electronic
device. See Final Act. 4. The Examiner concludes that it would have been
obvious to use a connector plug and connector receptacle like those shown in
Okuno to connect Khanna’s cable 75 to its camera 70 to facilitate easy connection/
disconnection of Khanna’s cable 75 and camera 70, and to “simplify replacement
of the camera if needed.” Id. at 5.
The Examiner further concludes that it would have been obvious to modify
Khanna’s camera mount by using “snap-fitting attachment means” instead of
fasteners 73 because Khanna itself teaches fasteners and snap-fits as suitable
alternative mounting structures, and that it would “provide [a] convenient method
of attaching [a] camera to the housing” with easy detachment if needed. Id. at 4.
Rejection I: Claim 1
Appellant argues that
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the combination of Khanna and Okuno fails to suggest to one of
ordinary skill . . .
(a) A first snap-fit structure for fixing [a camera] to a bracket
portion;
(b) A connector plug formed to be inserted into and extracted
from a connector receptacle formed in the . . . camera; and
(c) A second snap-fit structure for fixing the connector plug to a
connector attaching portion.
Appeal Br. 8 (emphasis omitted).
(a) Snap-Fit
Regarding point (a), Appellant argues that Khanna uses its fasteners 73 to
adjust its camera position, such that it would not be obvious to replace Khanna’s
fasteners 73 with a snap-fit structure because a snap-fit structure would not permit
adjustment of the [position] of Khanna’s camera 70. Id. at 9 (“It is not permissible
to reconstruct Khanna in a manner that renders Khanna unsatisfactory for its
intended purpose.”). Appellant continues that Khanna does not disclose that any of
its embodiments “automatically position the camera at an optimal orientation and
location upon installation” and use of a snap-fitting to mount trim piece 40 on
vehicle 10 does not suggest that a snap-fitting should be used to fix camera 70 to
pocket 42 of trim piece 40. Id. at 10. Appellant contends that recognizing
Khanna’s “need for precise mounting of the camera,” would cause a skilled artisan
to “not use snap-fitting in place of [fasteners 73].” Id. at 11 (citing Khanna ¶ 36
(“when camera 70 is mounted to trim piece 40, it will typically be positioned as
needed, without a need to further verify that camera 70 is properly located,
although as mentioned above relatively fine adjustments to its position might be
made after mounting camera 70 to trim piece 40.”). Id. at 11.
The Examiner responds that, while there are multiple embodiments
described by Khanna where fasteners attach the camera, only one embodiment
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describes using those fasteners to allow adjustment of camera angle/orientation,
and Khanna discloses that, in some embodiments, “camera 70 will automatically
be positioned at an optimal orientation and location upon installation to ensure
compliance with regulations relating to field of view and/or in keeping with design
preferences.” Ans. 14 (citing Khanna ¶ 35). The Examiner considers this
disclosure in Khanna to mean that camera connection is, in certain embodiments,
“preconfigured, such that the camera may be attached and is automatically set to be
at its optimal position” without needing further adjustments. Id. Thus, the
Examiner contends, “snap-fit connectors could be employed instead of screw type
fasteners” because, in embodiments where “a location of the camera is pre-set to
the optimal position, it would have been obvious to one of ordinary skill in the art
to use snap-fit connector instead of screws to mount camera in the trim/bracket
because no further adjustment would be required.” Id. at 14–15. The Examiner
also contends that, “[o]nce receiving means for a snap-fit connector” is placed at
an appropriate location on the trim, in the same way that “openings for the screw
type fasteners would need to be pre-drilled” at an appropriate location, “the camera
could be directly coupled to those means” and appropriately located. Id. at 15.
Appellant replies that Khanna only discloses snap fitting for attaching trim
piece 40 to the vehicle frame 14, and describes no similar coupling for the camera
70 in the pocket 42. Reply Br. 3. Appellant contends that the Examiner must,
therefore, provide “some suggestion or motivation in Khanna or Okuno to use a
snap-fitting rather than adhesives or the screw-type fasteners clearly preferred by
Khanna.” Id. Appellant maintains that, even if Khanna’s camera was snap fitted
into its pocket, screw-type fasteners would still be needed to adjust the camera
position. Id. (citing Khanna ¶ 35). According to Appellant, even if Khanna’s
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camera is positioned “‘at an optimal orientation and location,’” camera adjustment
is still required by fasteners 73 “‘to obtain a desired view angle.’” Id. Appellant
contends that replacing Khanna’s fasteners 73 with snap fitting would eliminate the
adjustment benefit of the fasteners, such that there is no reason to replace Khanna’s
fasteners 73 with snap fitting. Id.
We are not persuaded by Appellant's argument in that it appears to insist on
an explicit teaching, suggestion, or motivation in the cited references for the
modification proposed by the Examiner, whereas such an insistence has been
foreclosed by the Supreme Court. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
415, 419 (2007) (stating that a rigid insistence on teaching, suggestion, or
motivation is incompatible with its precedent concerning obviousness). Rather, the
Court requires that we look to whether the Examiner has provided “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited
with approval in KSR, 550 U.S. at 418). The Examiner articulates adequate
reasoning based on the substitution of one type of attachment means for another.
A rationale based on simple substitution requires that “the substituted components
and their functions were known in the art” and that “the results of the substitution
[of one known element for another] would have been predictable.” MPEP §
2143(I)(B); see also KSR, 550 U.S. at 416 (recognizing “that when a patent claims
a structure already known in the prior art that is altered by the mere substitution of
one element for another known in the field, the combination must do more than
yield a predictable result”). Here, Appellant has not persuaded us that the function
of snap fit members as taught by Khanna itself were unknown in the art or that the
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Examiner’s proposed substitution would yield more than predictable results to the
ordinary artisan.
(b) Connector Plug
Regarding point (b), Appellant more specifically argues that Okuno’s
“connector couples cable 145 to a monitor 143; which is contrary to the use of”
Appellant’s plug for a “connector receptacle in the image pick-up module.”
Appeal Br. 12. Appellant also argues that Okuno does not describe its illustrated
connector as a “plug” and Okuno’s Fig. 26 “does not ‘clearly show’ a plug that can
be inserted into and extracted from the connector receptacle in a camera” as
claimed. Id. Appellant notes that “Khanna’s hard-wired connection of cable 75 to
camera 70 does not permit insertion and extraction,” such that there would be “no
reason to reconstruct Khanna’s hard-wired connection with a plug connection.” Id.
The Examiner responds, inter alia, that “drawings are part of [a] patent’s
disclosure” and consideration of Okuno’s disclosure (including Figure 26) would
leave a skilled artisan with no “doubt that the plug is intended to be inserted into
the receptacle . . . especially when there is an arrow showing which parts should be
connected.” See Ans. 17. The Examiner contends that having a disconnectable,
rather than hardwired connection facilitates easier removal, for example for
replacement. Id. The Examiner further responds that “it is not required that the
secondary art also needs to teach a camera.” Id. at 18.
Appellant replies, inter alia, that “Khanna makes no mention of camera
replacement, the difficulty of replacing his camera or the desirability of camera
replacement. Indeed, there may be reasons why Khanna would discourage
replacing the camera.” Reply Br. 4. Appellant contends that, absent a disclosure
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in Khanna suggesting desirability of replacing Khanna’s camera, the Examiner’s
reasoning lacks a rational basis or is based on impermissible hindsight. See id.
The Examiner contends that any judgment on obviousness is, in a sense,
necessarily a reconstruction based upon hindsight reasoning. Ans. 22. However,
“so long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made, and does not include
knowledge gleaned only from the applicant’s disclosure, such a reconstruction is
proper.” Id. (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)).
The Examiner’s reasoning contains no error. Regarding modifying Khanna
to include Okuno’s connector plug and receptacle, a skilled artisan can find the
motivation in Okuno. Okuno discloses the desirability of allowing a device to be
releasably connected, and employs a releasable plug therefor. Okuno, 14:58–15:18
(describing verifying installed camera view and focus with a portable monitor).
According to Okuno, once a surveillance device 2 is installed, a portable monitor
143 is releasably attached to the device 2 via a cable 142 that is releasably
connected to the device 2 via an output terminal 9 therein. Id. at 14:58–15:27. It
can be seen from Figures 25 and 26 of Okuno that releasable connection of the
cable 142 to both the device 2 and the portable monitor 143 is accomplished using
plugs (144 at one end, unnumbered at the other end) at both ends of the cable 142.
Id. The releasable nature of the cable 142, and thus the monitor 143 would have
been understood by a skilled artisan to be facilitated by at least cable plugs 144,
informing a skilled artisan that a benefit of employing connector plugs and
receptacles instead of hard wiring includes facilitating selective attachment and
removal of an electronic device. We therefore are not persuaded that the
Examiner’s conclusion –– that having a disconnectable, rather than hardwired
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connection, facilitates easier removal of a device –– lacks a rational basis or comes
from Appellant’s own disclosure. The combined disclosure of Khanna and Okuno
support the Examiner’s combination thereof where a connector plug and receptacle
are employed instead of hardwiring the cable to the camera.
(c) Second Snap-Fit
Regarding point (c), Appellant more specifically argues that Okuno does not
disclose snap fitting its connectors. See Appeal Br. 13–15. This argument is made
in response to a finding by the Examiner during prosecution that Okuno discloses
snap fitting. Id. However, the Examiner is not relying on Okuno for disclosing
snap fitting. For this reason, although the Examiner’s finding that Okuno discloses
snap fitting may be speculative, such a determination is not dispositive because the
finding is not relied on in establishing prima facie obviousness.
Appellant next argues that the “neither Khanna nor Okuno describes the two
snap-fit structures,” which are recited in claim 1 as: “(1) fixing the image pickup
module to the bracket portion; and (2) fixing the connector plug to the connector
attaching portion of the image pick-up module.” Appeal Br. 15.
We are not persuaded by Appellant’s argument, because neither Khanna nor
Okuno individually is relied on by the Examiner for disclosing, specifically, two
snap-fit structures. As explained above, Khanna discloses snap fitting as a suitable
mounting structure. The combination of Khanna and Okuno discloses a camera
mounted in a vehicle camera cavity, the camera being connected to its cable via a
connector plug and receptacle. The Examiner uses Khanna’s own disclosure to
replace its illustrated fasteners with a snap-fit structure, such that Khanna’s camera
can be mounted to its module attaching portion via a snap fit structure. Further, it
is within the capability of a skilled artisan to employ a snap fit structure to retain
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the connector plug with a connector attaching portion such that the cable remains
releasably engaged with the camera. A skilled artisan would understand that, in
replacing Khanna’s hard wired camera-cable with a releasable connector plug and
receptacle, the cable plug/receptacle could be securely mounted to the connector
attaching portion to ensure that the cable does not inadvertently disconnect from
the cable while also maintaining the removability function. As explained above,
Khanna itself discloses that a snap-fit structure is a known mounting structure.
Khanna ¶¶ 28, 34.
For the reasons explained above, we sustain the rejection of independent
claim 1.
Rejection II: Claims 2 – 4 and 7 – 13
Claim 2
Claim 2 recites, inter alia, the connector plug being fixed to the connector
attaching portion by “engagement between the claw portion and the receiving
portion” as the snap-fit mechanism. The Examiner finds the claw structure
disclosed in Kano to teach such a snap-fit mechanism. Final Act. 6 (citing Kano
Fig. 5; 12:33–40). Appellant refers back to the arguments set forth for claim 1, and
further argues that the Examiner “fails to explain which portion or portions of
Khanna would be modified to incorporate the claw structure of Kano,” and it is
unclear “how Khanna should be reconstructed to provide camera 70 or pocket 42
with a claw structure” or “provide line 75 or camera 70 with a claw.” Appeal Br.
18. According to Appellant, if “Khanna’s fastener 73 is replaced by a claw
structure, Khanna no longer would have the ability to adjust the position of his
camera 70,” and “Khanna fails to suggest a connector plug - thereby making it
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unnecessary to use a claw structure in a plug to connect Khanna’s line 75 to his
camera 70.” Id.
We are not persuaded by Appellant’s argument. As explained above, we do
not agree that Khanna requires camera position adjustment in addition to
mounting. Further, “a person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. “[I]n many cases a
person of ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 420. Appellant does not allege that it would be
above the level of skill in the art to employ Kano’s claw structure as the snap-fit
structure utilized in the Examiner’s proposed combination of Khanno and Okuno.
We, therefore sustain the rejection of claim 2.
Claim 3
Claim 3 depends from claim 2 and recites that “a direction that said image
pick-up module is attached to said module attaching portion and a direction that
said connector plug is attached to said connector attaching portion are opposite to
each other.” The Examiner finds attachment in opposite directions to be disclosed
in Khanna. Final Act. 6 (citing Khanna (“see 73 and 82 opposite of 50 and 77 in
Fig. 10”). Appellant refers back to the arguments set forth for claim 1, and further
argues that Khanna does not teach or suggest a connector plug. Appeal Br. 19.
As explained above, the combined disclosure of Khanna and Okuno support
the Examiner’s combination thereof, where a connector plug and receptacle are
employed. We therefore discern no error in the Examiner’s findings regarding
claim 3.
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Claim 4
Claim 4 depends from claim 2 and recites that the “bracket portion, and the
claw portion or the receiving portion of said module attaching portion and said
connector attaching portion of said bracket portion have a shape capable of being
formed by molding in one process.” The Examiner finds that single-process
molding is disclosed in Khanna. Final Act. 6–7 (citing Khanna Figs. 5–6, ¶ 31).
Appellant argues that Khanna does not disclose “a single molding step for a claw
structure (which is not described) and a connector attaching portion.” Appeal Br.
19.
As explained above, “[a] person of ordinary skill [in the art] is also a person
of ordinary creativity, not an automaton,” and “will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21.
Appellant has not alleged, nor explained to us why, given Khanna’s disclosure of
single-process molding its trim piece 40 and cavity 42, a skilled artisan would not
understand how the single process molding would also be used to form the
structures recited in claim 4. For this reason, we sustain the rejection of claim 4.
Claims 7–13
For claims 7–13, Appellant refers back to the arguments set forth for claims
1–4, discussed above. Appeal Br. 20–23. For the same reasons that Appellant’s
arguments do not apprise us of error in the rejection of claims 1–4, Appellant also
does not apprise us of error in the rejection of claims 7–13. Accordingly, we
likewise sustain the rejection of claims 7–13.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103(a) Khanna, Okuno 1
2–4, 7–13 103(a) Khanna, Okuno, Kano 2–4, 7–13
Overall
Outcome:
1–4, 7–13
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED