Victor M. Contreras et al.Download PDFPatent Trials and Appeals BoardAug 2, 201914173497 - (D) (P.T.A.B. Aug. 2, 2019) Copy Citation 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. 14/173,497 02/05/2014 Victor M. Contreras JR. 1520.0045 1032 145261 7590 08/02/2019 Crawford Intellectual Property Law LLC 1250 South Grove Avenue, Suite 308 Barrington, IL 60010 EXAMINER FULLER, RODNEY EVAN ART UNIT PAPER NUMBER 2852 MAIL DATE DELIVERY MODE 08/02/2019 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 VICTOR M. CONTREAS, JR. and JORGE A. CONTRERAS ____________ Appeal 2018-006661 Application 14/173,4971 Technology Center 2800 ____________ Before JEFFREY B. ROBERTSON, MERRELL C. CASHION, JR., and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants seek our review of the Examiner’s rejections of claims 19–23 under 35 U.S.C. § 103(a). Br. 13. We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 Appellants identify Victor M. Contreras, Jr. and Jorge A. Contreras as the real parties in interest. Br. 4. Appeal 2018-006661 Application 14/173,497 2 BACKGROUND The subject matter on appeal is directed to a collapsible photo studio for photographing objects such as automobiles. Spec. ¶¶ 5–6. Sole independent claim 19 is illustrative of the appealed subject matter, and is copied below from the Claims Appendix to the Appeal Brief: 19. An apparatus for photographing a vehicular subject comprising: a suspension means for suspending a track system in a first position relative to said vehicular subject; a track system means for guiding at least one curtain means from a first open position to a second and subsequent open positions relative to said vehicular subject; a roller means adapted to be moveable along said track system means; wherein said at least one curtain means is engaged with said roller means to move said at least one curtain means from said first open position to said second and subsequent open positions in a continuous loop along said track system means; at least four light cabinets positioned over the edges of said track system; and said at least four light cabinets positioned to face a diffuser. App. Br. 44–45. Appeal 2018-006661 Application 14/173,497 3 STATEMENT OF THE CASE Under 35 U.S.C. § 103(a), the Examiner rejects claims 19–21 over the combined disclosures of Amcraft,2 Baliozian,3 and Noe,4 and claims 22 and 23 over these references in combination with Perrott.5 The Examiner’s specific findings with respect to each of these references appear at pages 4–8 of the Final Office Action dated August 2, 2017. For example, the Examiner finds that “Amcraft discloses the structure of the curtain track system” (Final Act. 5), “Baliozian discloses a typical ‘light box’ that includes a diffuser, a cabinet, a fluorescent light bulb and a reflector” (id. at 6), and “Noe discloses multiple lighting set ups for photographing cars (i.e., vehicles) with overhead lighting, diffusers, and curtains” (id.). Based on these disclosures, the Examiner concludes it would have been obvious to the skilled artisan “to utilize light boxes in conjunction with a track/curtain system of Amcraft in order to take photography objects contained within the curtain area . . . and a diffuser covering the interior of said track system.” Id. The Examiner reasons that the skilled artisan would have been motivated to modify Amcraft’s curtain track system “by combining the light boxes of Baliozian and the diffuser of Noe in order to 2 Internet Archive Wayback Machine, http://web.archive.org/web/20111223090857/http://www.amcraftindustrialc urtainwall.com, last accessed April 29, 2015. 3 Baliozian, US 5,199,786, Apr. 6, 1993. 4 Car Studio Photography Set-ups by Rain Noe, http://www.core77.com/posts/21672/car-studio-photography-set-ups-21672, last accessed October 15, 2015. 5 Damon Perrott, Which Fabric for PVC DIY Giant Area Softbox, May 31, 2009, http://photo.net/photography-lighting-equipment-techniques- forum/00TW54. Appeal 2018-006661 Application 14/173,497 4 provide an inexpensive and portable ‘large soft box’ to photograph[] large objects such as cars with proper lighting to improve image quality (as noted by Noe).” Id. at 6–7. OPINION We have considered each of Appellants’ arguments (Br. 18–41) and are unpersuaded that Appellants have identified reversible error in the Examiner’s rejections of claims 19–23. In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011). Therefore, we sustain the obviousness rejections before us based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Final Action and in the Answer. We add the following only for emphasis, addressing the claims separately to the extent they are so argued by Appellants. Claim 19 Regarding Appellants’ sole independent claim on appeal, we agree with Appellants’ statement that a claim is not rendered obvious by the mere identification of the different claimed elements in the prior art. Br. 19. We disagree, however, with Appellants’ position (id. at 20) that there must be an express teaching in the prior art to combine the cited references to establish a prima facie case of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining how the obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also id. at 419 (stating that the “obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by Appeal 2018-006661 Application 14/173,497 5 overemphasis on the importance of published articles and the explicit content of issued patents.”). Appellants appear to argue that the claims would not have been obvious because the references themselves do not teach the recited combination of prior art elements. Br. 19–20. Such is a misstatement of the law governing obviousness under 35 U.S.C. § 103, and is, therefore, unpersuasive. Here, the Examiner has set forth a suitable rationale of why and how one skilled in the art would have combined the teachings of Amcraft, Baliozian, and Noe––“to provide an inexpensive and portable ‘large soft box’ to photograph[] large objects such as cars with proper lighting to improve image quality (as noted by Noe)”––to arrive at the claimed subject matter. Final Act. 6–7. Because Appellants’ arguments fail to meaningfully address the Examiner’s obviousness rationale, Appellants have not identified reversible error in the Examiner’s determination of obviousness. We furthermore observe that Appellants’ arguments do not squarely address the Examiner’s factual findings underpinning the rejection of claim 19. Final Act. 4–7. Namely, Appellants argue aspects of Noe’s curtain structure. Br. 20–22; see also id. at 24–26, 28–31, 33–36, and 38–40 (repeating these arguments). The Examiner’s obviousness rejection, however, does not rely on Noe to teach the claimed curtain track system structure. Rather, the rejection relies on Amcraft for that claim element. See Final Act. 5 (“Thus, Amcraft discloses the structure of the curtain track system.”); see also id. at 6 (explaining how the skilled artisan “would have been motivated to modify Amcraft by combining the light boxes of Baliozian and the diffuser of Noe in order to provide an inexpensive and portable ‘large soft box’” for photography (emphasis added)). Appeal 2018-006661 Application 14/173,497 6 Claims 20 and 21 In addition to repeating unpersuasive arguments we have already addressed supra, Appellants present a separate, new argument that is germane to each of these claims. Br. 22–31. Specifically, Appellants assert that the cited references fail to disclose the “novel positioning of the diffuser and the light cabinets” as set forth in these claims, e.g., the angling of the “at least four light cabinets,” and the positioning of the light cabinets relative to certain points on the track system. Id. 23, 28. This argument is unpersuasive of reversible error because, again, it is focused on what the references expressly disclose, and does not meaningfully address the Examiner’s rationale set forth in the rejection. Final Act. 7. Here, the Examiner determines that the positioning features recited in claims 20 and 21 would have been obvious because such aspects “involve[] only routine skill in the art” and would have been result-effective variables for the skilled artisan to manipulate within its ordinary skill. Id. As we indicate above, such arguments are unpersuasive because they do not address the rationale underpinning the Examiner’s conclusion of obviousness. Claims 22 and 23 For these claims, Appellants repeat several unpersuasive arguments, and further argue that the limitations requiring the curtain means to be “made of a reflective material or a green screen material,” and to be “collapsible for storage” is not taught in the prior art. Br. 31–41. These arguments are unpersuasive, however, because they again rely on the alleged absence in the prior art of an express teaching regarding reflectivity and collapsibility. See Br. 32, 37 (stating in each instance that “[t]here is no Appeal 2018-006661 Application 14/173,497 7 mention whatsoever in the prior art of the curtain being made of a ‘reflective or green screen material’” and “there is no mention of Appellants’ curtain means being collapsible for storage in the prior art”). The arguments do not meaningfully address the Examiner’s findings regarding the reflectivity and collapsibility of the curtain. See Final Act. 5 (explaining how Amcraft’s curtain “material is inherently reflective to some degree, and the claim does not specify the level of reflectivity of the material,” and is also “inherently collapsible since the curtains are disclosed [by Amcraft] to be ‘vinyl curtains’ that hang from the track” and “are not ridge nonflexible plates”). Appellants’ focus on the express teachings of the prior art does not address, much less reveal error in, the Examiner’s findings that the recited reflectivity and collapsibility features are inherently present in Amcraft’s curtain means. Furthermore, we emphasize that Appellants’ Specification discusses reflectivity of a curtain material in the same paragraph that also discloses that the curtain “may be made from 5 foot wide pieces of rip-stop vinyl.” Spec. ¶ 33. Amcraft likewise discloses the use of vinyl curtains in several locations. Amcraft, generally. Secondary considerations We furthermore note that Appellants do not discuss in any level of detail the three Declarations appended to the Appeal Brief. Br. 48–54. Nevertheless, consistent with the principles set forth by the predecessor to our reviewing court in In re Rinehart (531 F.2d 1048 (CCPA 1976)), we have reviewed this evidence as part of the appeal record, and agree with the Examiner’s assessment thereof. Final Act. 2–3. Particularly noteworthy is how each Declaration generically refers to use of “the invention of the ʼ497 application” without further detail as to what components of the system(s) Appeal 2018-006661 Application 14/173,497 8 were used by these individuals. Br. 48, 50, 52. Without this information, we are unable to assess––as we must do––whether the Declaration testimony demonstrates unexpected superiority of a system that is reasonably commensurate in scope with that claimed. In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) (“[O]bjective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.”). In sum, Appellants have failed to identify reversible error in the Examiner’s rejections of claims 19–23 for the reasons we provide and for those the Examiner provides. We, therefore, sustain the Examiner’s rejections of these claims. DECISION The Examiner’s final decision to reject claims 19–23 is affirmed. 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 Copy with citationCopy as parenthetical citation