Arbouzov, Ivan

Patent Trials and Appeals Board

Nov 12, 2020

2019004275 (P.T.A.B. Nov. 12, 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.
14/693,348 04/22/2015 Ivan Arbouzov 39443-0003001 1366
26231 7590 11/12/2020
FISH & RICHARDSON P.C. (DA)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
WU, SING-WAI
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IVAN ARBOUZOV
Appeal 2019-004275
Application 14/693,348
Technology Center 2600
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed April 22, 2015 (“Spec.”); Non-Final
Office Action, mailed January 8, 2018 (“Non-Final Act.”); Appeal Brief,
filed December 10, 2018 (“Appeal Br.”); Examiner’s Answer, mailed March
12, 2019 (“Ans.”); and Reply Brief, filed May 10, 2019 (“Reply Br.”).
2 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 the inventor, Ivan
Arbouzov. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims are directed to a thermal imaging accessory for a head-
mounted smart device. Spec., Title. Independent claim 1 illustrates the
subject matter of the appealed claims. We reproduce claim 1 with a disputed
limitation emphasized:
1. A computer-implemented method comprising:
linking, using a data connection, a thermal imaging accessory
(TIA) physically coupled to and in optical alignment with
a head-mounted smart device (HMSD);
activating a thermal imaging application on the HMSD to
receive thermal imaging data associated with a target from
the TIA and to process the thermal imaging data for
overlay on an HMSD data display;
receiving thermal imaging data of the target from the TIA;
processing, using the HMSD, the thermal imaging data
received from the TIA to generate processed thermal
imaging data; and
overlaying, on the HMSD data display, the processed thermal
imaging data over an unprocessed visual image of the
target transmitted through the HMSD data display as the
target is viewed through the HMSD data display.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Masarik US 8,488,969 B1 July 16, 2013
Morley US 9,069,172 B1 June 30, 2015
“Thermal Camera with Glass,” 9/20/2013; URL: https://www.youtube.com/
watch?v=EZyN48nFiRY (“Attoparsec”)
“Auto Distance”, 8/25/2014; URL: https://web.archive.org/web/
20130825025944/http://www.greenworkssoft.magix.net/public/
potatotreesoftmainpage/auto_distance.html

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REJECTIONS
Claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, and 19 stand rejected under
35 U.S.C. § 103 as rendered obvious by the combination of Attoparsec and
Morley. Non-Final Act. 2–15.
Claims 2, 3, 9, 10, 16, and 17 stand rejected under 35 U.S.C. § 103 as
rendered obvious by the combination of Attoparsec, Morley, and Masarik.
Non-Final Act. 15–19.
Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103 as rendered
obvious by the combination of Attoparsec, Morley, and Auto Distance.
Non-Final Act. 19–21.

STANDARD OF REVIEW
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).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken (Non-Final Act. 2–21) and (2) the Examiner’s
Answer in response to Appellant’s Appeal Brief (Ans. 7–17) and concur
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with the conclusions reached by the Examiner. We highlight the following
points for emphasis.

35 U.S.C. § 103
The Examiner finds Attoparsec teaches the limitations of claim 1
(Non-Final Act. 2–7) except that
Attoparsec does not explicitly teach:
1_1 ). a thermal imaging accessory (TIA) physically coupled
to and in optical alignment with a head-mounted smart
device (HMSO); [i.e., the disputed limitation, and]
1_2). processing using the HMSO the thermal imaging data
received from the TIA to generate processed thermal
imaging data.
Id. at 7. The Examiner finds Morley’s multi-mode sight that is attachable to
a firearm such as a rifle, in combination with Attoparsec, teaches the missing
elements. Non-Final Act. 7–11. In particular, the Examiner maps
limitations 1_1 to Morley in combination with Attoparsec, as follows:
1_1). a thermal imaging accessory (TIA) physically coupled to
(e.g., the interface of the thermal imager 80 with the multi-mode
sight 10; Morley: Fig. 1; the thermal imager 80 is clip-on to the
multi-mode sight; Morley: Figs. 8-9. The 1x IR Blue thermal
camera is modified to have an interface as the thermal imager
80) and in optical alignment with (e.g., the thermal image 80
and the optical sight 20 are aligned in parallel in the looking at
the same scene; Morley: Fig. 1. The image of visual image and
the converted thermal image are images of the same scene;
Attoparsec: 0:46–1:16/1:23 second, the thermal image is part of
the visual image. The 1x IR Blue thermal camera and the Glass
as facing the same scene; Attoparsec: 0:24/1:23 second, in the
same alignment as the thermal imager 80 and optical sight 20 as
established by the multimode sight 10 as shown in Morley:
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Fig. 1) a head-mounted smart device (HMSO) (e.g., the Google
Glass; Attoparsec: 0:09/1:23 second).
Non-Final Act. 10–11.
According to the Examiner,
It would have been obvious to a person of ordinary skill in the
art at the time of filing the application to combine the teaching
of Morley into the teaching of Attoparsec so that the thermal
camera can . . . conveniently clip-on to the [Google] Glass
[HMSO] to simplify the operation and to make a better
connection by replacing the Bluetooth wireless connection with
direct connection to connect the thermal camera (thermal imager
80 of Morley) with the [Google] Glass [HMSO] (display 50 of
Morley) through the interface of the multi-mode sight 10.
Id. at 11–12.
Appellant contends the combination of Attoparsec and Morley is
improper. Appeal Br. 16. Appellant argues,
1. Morley’s multi-mode sight technology is not applicable to or
combinable with Attoparsec’s head-mounted usage (“nothing has
been shown to demonstrate how the cited combination of elements
in Morley [that is] applicable to a ‘combat optic for small arms’
would be used in, on, or with [Attoparsec’s] ‘head-mounted smart
device (HMSD)’” (id. at 17)).
2. “[N]o explanation [has been] provided by the Office of the
feasibility of the supposedly obvious workable/reasonable
combination of Attoparsec and Morley or how the proposed
combination would be configured or used.” Id. at 18.
Appellant summarizes the asserted contentions of Examiner error, as
follows:
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Appellant’s argument is really rather simple - it would not be
obvious to one of ordinary skill in the art to combine a disclosed
thermal camera in the form of a mobile computing device that is
shown strapped to a user’s head with a band to work with a
GOOGLE GLASS device with a “multi-mode” combat
optic/sight for small arms with no disclosed head-mounted
implementations in order to arrive at least at Appellant’s
claim 1. The Office appears to be simply cherry-picking
elements of Appellant’s claims and keyword matching them with
references in a general technology area in an attempt to read on
Appellant’s claims.
Id.
The Examiner responds, “[a]ccording to legal precedence of making
integral, it [would have been] obvious that the thermal camera and [Google]
Glass [HMSD] [could have been] integrated as one head-mounted device.”
Ans. 5 (citing MPEP § 2144.04(V)(B)).
Addressing Morley, the Examiner finds the reference teaches
overlaying a thermal infrared image over a visible light image. Id. at 9.
Furthermore, the Examiner finds, “Morley further teaches that the multi-
mode sight can be implemented in a form of a wireless headset holder
(Morley: c. [7 L.] 36-37), or a goggle (Morley: c. 1 L. 66). Therefore,
[Morley’s] multi-mode sight can be implemented in the form of the Google
Glass as shown in the video of Attoparsec.” Id.
Addressing Appellant’s argument that Morley is directed to a combat
optic for small arms, the Examiner finds, “[t]he cited Abstract of Morley is
referred to as an introduction to the principle of combining (overlaying)
thermal image onto direct view image” and, in the case of a multi-mode
sight implemented in a form of a wireless headset holder, connecting a
thermal image to and for display by the sight. Id. at 10. In such a
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configuration, the Examiner finds that the thermal imaging accessory (TIA)
would be physically coupled to a head-mounted smart device. Id. The
Examiner explains,
[T]he examiner refers to the teaching of Morley to teach a
thermal imager that can be miniaturized to be installed as part of
a multi-mode sight or as a separate component of a multi-mode
sight. The reference of Morley is thus applied to teach that the
1xIR Blue thermal camera can be modified . . . so that thermal
imager can be installed as part of the multi-mode sight or a
separate component of the multi-mode sight.
Id. at 11.
The Examiner further disagrees with Appellant’s argument that the
prior art fails to describe how the proposed combination would be made,
configured or used. Ans. 12–13 (citing Appeal Br. 18). The Examiner
finds, inter alia,
[T]he thermal imager can be to be integrated as part of a multi-
mode sight or a separate component to the multi-mode sight. As
in the first implementation, the thermal imager can be installed
or removed from the multi-mode sight and it was discussed in
col. 9 lines 60-67 and Fig. 8 [of Morley] that a clip-on
mechanism can be made so that the thermal imager can be made
attached to the multi-mode sight, the mechanism can be made to
the thermal imager to attach to multi-mode sight that is made in
the form of a headset holder like a Google Glass. Thus, when the
thermal imager is installed on the multi-mode sight, the thermal
imager is a thermal camera which provides video output to the
display 50.
Id. at 12.
Appellant replies, contending error in the Examiner’s finding that the
independent claims are rendered obvious by Attoparsec in view of MPEP
§ 2144.04(V)(B) (“Making Integral”) (“the use of a one piece construction
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instead of the structure disclosed in [the prior art] would be merely a matter
of obvious engineering choice”).3 Reply Br. 1. Appellant argues the finding
is (i) an improper new ground of rejection, (ii) not supported by “any
articulated reasoning with some rational underpinning as to why one skilled
in the art would modify Attoparsec in the manner alleged or how the cited
portion of the M.P.E.P compels such a conclusion,” and (iii) substantively
deficient “because Attoparsec does not disclose the headband-mounted 1xIR
Blue thermal camera as being rigidly secured to the Google Glass eyeglasses
[or] being physically connected to the Google Glass eyeglasses at all.” Id.
at 1–2.
In addition to expanding on these contentions (see Reply Br. at 2–4),
Appellant repeats the argument that, even relying on the combination of
Attoparsec with Morley, the rejection is improper for the reasons set forth in
the Appeal Brief including because “neither Attoparsec nor Marley
discloses, teaches, or suggests ‘linking, using a data connection, a thermal
imaging accessory (TIA) physically coupled to and in optical alignment
with a head-mounted smart device (HMSD),’ as recited in Claim 1” (id.
at 4).
Appellant further argues Morley’s reference to a headset is so vague
and indefinite that one skilled in the art would not have appreciated what
was being described. Id. at 5. Appellant also argues “Morley makes explicit
that the scope of the disclosure is limited to those instances involving multi-
mode sights for small arms, such as a rifle” such that the reference teaches
away for its use with head-mounted devices. Id. at 6–7.

3 MPEP § 2144.04(V)(B) (citing In re Larson, 340 F.2d 965, 968 (CCPA
1965)).
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Appellant’s contentions are unpersuasive of reversible Examiner
error. We address Appellant’s arguments below in the order presented in the
Appeal and Reply Briefs.
Appellant provides insufficient evidence in support of the argument
that the unified configuration of Morley’s multi-mode sight combining
optical and thermal images, i.e., multi-mode sight 10/12 including thermal
imager 80/81 attached to optical sight 20/21, is only applicable to sights
attached to firearms (Appeal Br. 17). As found by the Examiner (Ans. 9),
rather than dissuading combining optical and thermal imaging sensors,
Morley specifically mentions use of a multi-mode sight (i.e., optical and
thermal) with a device worn on the head. See Morley col. 2, ll. 13–15
(“FIG. 1 is a conceptual drawing of a multi-mode sight implementation used
with a night-vision scope or goggle for operation at night.”) (emphasis
added); col. 7, ll. 36–41 (“[C]omponents defining any wireless headset
holder implementation may be formed of any of many different types of
materials or combinations thereof that can readily be formed into shaped
objects provided that the components selected are consistent with the
intended operation of a multi-mode sight implementation.”).
We also are unpersuaded the Examiner has failed to provide sufficient
reasoning to support the combination or has engaged in improper “cherry-
picking elements of Appellant’s claims and keyword matching them with
references in a general technology area in an attempt to read on Appellant’s
claims.” Appeal Br. 18. We note,
Any judgment on obviousness is . . . necessarily a reconstruction
based upon hindsight reasoning, but 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
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include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness
inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . must
[include] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”), cited with approval in KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Nat’l Steel Car, Ltd. v.
Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (“It has
long been the law that the motivation to combine need not be found in prior
art references, but equally can be found ‘in the knowledge generally
available to one of ordinary skill in the art.’” (quoting In re Jones, 958 F.2d
347, 351 (Fed. Cir. 1992))). The Court further instructs,
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

KSR, 550 U.S. at 421.
In the present case, Attoparsec describes a thermal camera strapped to
a user’s forehead (i.e., a thermal imaging accessory (TIA)), the thermal
camera connected to and positioned directly above user-worn Google Glass
eyeglasses/goggles (i.e., a head-mounted smart device (HMSD)).
Attoparsec 0:13/1:23; p.3 upper screen. Morley describes a multi-mode
sight including a thermal imager attached to an optical sight that provides an
integrated sight image comprising a thermal image superimposed on an
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optical image. Morley, Abstract. Thus, Morley teaches the TIA is
physically coupled to and in optical alignment with the HMSD.4
The Examiner reasons one skilled in the art would have integrated
Attoparsec’s separate optical and thermal systems, as taught by Morley, to
provide a better connection between the two. Non-Final Act. 11–12. Based
on this reasoning, the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness, so we
are unpersuaded by Appellant’s argument that the Examiner’s combination
of references is inadequate or improper.
We also are unpersuaded that, in the alternative, the rejection is
improper over Attoparsec in view of an obvious engineering choice to
integrate the TIA and HMSD. See Reply Br. 1. As an initial matter,
Appellant’s contention that the Examiner’s reasoning constitutes an
improper new ground of rejection is not reviewable on appeal. Allegations
that an Examiner’s answer contains undesignated new grounds of rejection
must be resolved by filing a petition to reopen prosecution under 37 C.F.R.
§ 1.181, the absence of which constitutes waiver of such arguments.
37 C.F.R. § 41.40(a) (“Failure of appellant to timely file such a petition will
constitute a waiver of any arguments that a rejection must be designated as a
new ground of rejection.”); accord MPEP § 1207.03. Appellant did not file

4 We note in passing and without reliance in arriving at our decision, under a
broad but reasonable interpretation, physical coupling of the TIA and HMSD
includes attachment of both to a common structure such as, in the case of
Attoparsec, a user’s head. We do not decide whether, under such a claim
construction, the claims may be rejected over Attoparsec standing alone as
anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. § 103.
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a petition and, therefore, waived any argument that the Examiner’s Answer
includes new grounds of rejection.
We are also unpersuaded the Examiner has failed to provide reasoning
for integrating the TIA and HMSD. In this case, we find the Examiner’s
reasoning for applying Morley’s specific teaching of integrating the TIA and
HMSD fairly applies the general principle that integrating parts into a one
piece construction is merely a matter of obvious engineering choice as
explained in the cited section of the MPEP. See Non-Final Act. 11–12.
In addition, we are unpersuaded by Appellant’s argument, “Attoparsec
does not disclose the headband-mounted 1xIR Blue thermal camera as being
rigidly secured to the Google Glass eyeglasses.” Reply Br. 2 (emphasis
added). We note the claims do not require a thermal camera to be rigidly
secured, only physically coupled. Thus, Appellant’s argument is not
commensurate in scope with the claim.
Furthermore, Morley’s configuration having “thermal imager 81
removably mounted to sight 21 via rail 25” (Morley col 6, ll. 19–21) not
only teaches or suggests the claimed physical coupling but, in any case,
teaches the argued rigid attachment of thermal and optical imaging devices.
We further note, consistent with the cited section of the MPEP, integrating
the TIA and HMSD (i.e., making one) is reasonably interpreted as physically
coupling the two devices, as claimed.
We are unpersuaded by Appellant’s argument that Morley teaches
away from its use in head-mounted devices. Reply Br. 6–7. As an initial
matter, Appellant fails to show good cause for this new argument, and as
such, Appellant’s belated argument is deemed waived as untimely.
37 C.F.R. § 41.41(b)(2) (2016). See In re Hyatt,
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Cir. 2000) (noting that an argument not first raised in the brief to the Board
is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837
(BPAI 2010) (explaining that arguments and evidence not timely presented
in the principal Brief, will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”).
Furthermore, we are unpersuaded Morley’s mention of a night vision
(NV) device integrated into a combat optic, instead of as part of a separate
goggle-based system, teaches away from integrating the NV capabilities
(i.e., thermal imaging) into whatever optical device is present and/or being
used. That is, where the existing optical system is mounted to a firearm for
visual sighting, as per Morley’s firearm example, integrating the NV system
into those sights is taught by Morley. And, similarly, where an HMSD is
being worn by a user, Morley likewise suggests integrating the NV system
into or with the existing HMSD.
Even had Morley disclosed advantages of a firearm mounted device
versus a goggle-based system, merely “express[ing] a preference” falls short
of discouraging one of ordinary skill in the art from following a particular
path. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). To teach away,
the prior art must “criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Teaching an
alternative method does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433, 438 (CCPA 1965); see also Ex parte Shuping,
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No. 2008-0394, 2008 WL 336222, at *2 (BPAI 2008) (unpublished)
(“[T]eaching a way is not teaching away.”) (citation omitted).
For the reasons discussed above, Appellant fails to persuade us of
reversible Examiner error in rejecting claim 1. Appellant does not argue
independent claims 8 and 15, or dependent claims 2–7, 9–14, and 16–20,
separately with particularity. See Appeal Br. 18. Accordingly, we sustain
the rejections of claims 1–20 under 35 U.S.C. § 103.

CONCLUSION
We affirm the Examiner’s rejection of claims 1, 4, 5, 7, 8, 11, 12, 14,
15, 18, and 19 under 35 U.S.C. § 103 as obvious over Attoparsec and
Morley.
We affirm the Examiner’s rejection of claims 2, 3, 9, 10, 16, and 17
under 35 U.S.C. § 103 as obvious over Attoparsec, Morley, and Masarik.
We affirm the Examiner’s rejection of claims 6, 13, and 20 under
35 U.S.C. § 103 as obvious over Attoparsec, Morley, and Auto Distance.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7, 8,
11, 12, 14,
15, 18, 19
103 Attoparsec, Morley 1, 4, 5, 7, 8,
11, 12, 14,
15, 18, 19

2, 3, 9, 10,
16, 17
103 Attoparsec,
Morley, Masarik
2, 3, 9, 10,
16, 17

6, 13, 20 103 Attoparsec,
Morley, Auto
Distance
6, 13, 20
Overall
Outcome
1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED