Ex Parte 7929013 et al

Patent Trial and Appeal Board

Apr 15, 2016

90013048 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,048 10/31/2013
106716 7590 04/18/2016
Michael J. Colitz, III
GrayRobinson, P.A.
401 E. Jackson Street, Suite 2700
Tampa, FL 33601
FIRST NAMED INVENTOR
7929013
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
55106734.00184 7632
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
04/18/2016 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 FREEDOM SCIENTIFIC, INC.
Patent Owner and Appellant
Appeal2016-002358
Reexamination Control 90/013,048
United States Patent 7,929,013 B2
Technology Center 3900
Before JOHN A. JEFFERY, STEPHEN C. SIU, and
ANDREW J. DILLON, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 306 the Examiner's
decision to reject claims 1-7. We have jurisdiction under 35 U.S.C. §§ 134
and 306, and we heard the appeal on April 13, 2016. We affirm.
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on October 31, 2013 of United States Patent 7,929,013 ("the '013 patent"),
issued to Goldenberg et al. on April 19, 2011.
The '013 patent describes a desktop electronic magnifier with a
monitor and control panel mounted such that access to it cannot be blocked
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by the monitor. In one aspect, a camera is not mounted for movement, but a
telescopic link above the camera enables the monitor to be moved toward or
away from the user. See generally '013 patent, col. 3, 1. 4- col. 4, 1. 3; Figs.
1-2. Claim 1 illustrates the invention and is reproduced below:
1. A desktop electronic magnifier, comprising:
a table adapted to support an object;
a camera mounted above said table, said camera adapted
to view said object and said camera adapted to generate an
enlarged image of said object;
a monitor in electrical communication with said camera,
said monitor adapted to display said enlarged image of said
object to facilitate viewing of said object by a person having low
VlSIOn;
a support arm secured to a rearward side of said table;
said support arm having a first upstanding part and a
second part extending forwardly relative to said rearward side of
said table;
said camera being rigidly mounted to said support arm and
thus having a fixed position relative to said table;
a telescopic link interconnecting said monitor and said
support arm, said telescopic link positioned above said camera;
said telescopic link having a rearward end pivotally
secured to said support arm;
said telescopic link having a forward end pivotally secured
to said monitor; and
a control panel for controlling operation of said camera;
a mounting bracket removably mounting said control
panel to said monitor so that movement of said monitor effects
simultaneous and corresponding movement of said control panel;
whereby access to said control panel cannot be blocked by
said monitor and whereby said monitor can be adjusted while the
camera remains in a fixed position.
2
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RELATED PROCEEDINGS
This appeal is said to be related to various pending proceedings. First,
an appeal was filed in connection with another ex parte reexamination
proceeding involving the '013 patent, namely Control No. 90/011,981, 1
where another panel of this Board reversed the Examiner's decision to reject
claims 1-8 and 10. See Ex parte Freedom Scientific, Inc., No. 2013-006431
(PTAB July 22, 2013) ("Bd. Dec."). A reexamination certificate later issued
for the '013 patent. See US 7,929,013 Cl.
Notably, the dispositive issue in the related appeal, namely whether
the cited Optelec User Manual was a printed publication within the meaning
of 35 U.S.C. § 102, is also at issue in this appeal. In the related appeal, the
Board held that the Examiner erred by finding that the cited Optelec manual
was distributed with the product-a finding based solely on a declaration
from Barron Javaheri2 that was found to have "too many gaps to support the
Examiner's conclusion." Bd. Dec. 4--5. Due to these shortcomings of the
Javaheri declaration, the Board held that there was insufficient evidence
linking the Optelec manual with the product sold or made available in 2004;
therefore, the manual was held not to be a printed publication under§ 102.
Id. 5.
1 Although Appellant cites another ex parte reexamination as related, the
cited control number (90/013,048) matches that of the present proceeding.
See App. Br. 2.
2 Mr. Javaheri is President of Enhanced Vision, Inc.-a manufacturer of
desktop video magnification systems and the Requester. See Reexamination
Control No. 90/011,981, Declaration of Barron Javaheri, dated Oct. 19,
2011.
3
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Despite this appeal raising a similar question, namely whether the
Optelec manual is a printed publication under§ 102, the Javaheri declaration
is not at issue in the present appeal. Rather, this issue turns on facts
associated with a declaration from Michiel Van Schaik, Optelec' s Chief
Executive Officer (CEO}-a declaration that was not at issue in the related
appeal.
We are also informed of pending stayed litigation in Florida involving
the '013 patent. App. Br. 2.
THE REJECTIONS
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over ClearView Flex User Manual, Tieman/Optelec, V.1.0
(June 2004) ("Optelec") in view of Binkley (US 2003/0060270 Al; Mar. 27,
2003), and Song (US 5,852,654; Dec. 22, 1998) or Youngers (US 6,247,085
B 1; June 12, 2001 ). Final Act. 4---6. 3
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Optelec in view of Trulaske (US 2006/0203093 Al; Sept.
14, 2006), Binkley, and Song or Youngers. Final Act. 6-7.
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Trulaske in view of Optelec, Binkley, and Song or
Youngers. Final Act. 7-9.
3 Throughout this opinion, we refer to ( 1) the Appeal Brief filed November
12, 2014 ("App. Br."); (2) the Examiner's Answer mailed April 3, 2015
("Ans."); and (3) the Reply Brief filed June 3, 2015 ("Reply Br.").
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The Examiner rejected claims 3-5 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Optelec in view of Song or Youngers. Final Act. 9-11.
The Examiner rejected claims 3-5 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Optelec in view of Trulaske, and Song or Youngers. Final
Act. 11-12.
The Examiner rejected claims 3-5 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Trulaske in view of Optelec, and Song or Youngers. Final
Act. 12-15.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Optelec in view of Binkley, and Song or Youngers. Final
Act. 15.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Optelec in view of Trulaske, Binkley, and Song or4
Youngers. Final Act. 16.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Trulaske in view of Optelec, Binkley, and Song or
Youngers. Final Act. 16-17.
The Examiner rejected claims 5 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Optelec in view of Song or Youngers, and further in view
of Mizukami (US 7,701,481 B2; Apr. 20, 2010). Final Act. 17-18.
4 Although the Examiner's statement of the rejection cites Song and
Youngers, the Examiner nonetheless refers to Song or Youngers in the
corresponding discussion-as does Appellant. See Final Act. 16. Accord
App. Br. 29 (referring to Song or Youngers in connection with this
rejection). Accordingly, we presume that the Examiner intended to cite
Song or Youngers in this rejection, and deem the Examiner's error harmless.
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The Examiner rejected claims 5 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Optelec in view of Trulaske, Song or Youngers, and
further in view of Mizukami. Final Act. 18-19.
The Examiner rejected claims 5 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Trulaske in view of Optelec, Song or Youngers, and
further in view of Mizukami. Final Act. 19-20.
THE REJECTION OVER OPTELEC, BINKLEY, AND SONG OR
YOUNGERS
The Examiner finds that Optelec discloses every recited element of
claim 1 except for (1) a telescopic link, and (2) removably mounting the
control panel to the monitor, but cites Binkley for teaching difference (1 ),
and either Song or Youngers for teaching difference (2). Final Act. 4--5
(citing Request 9-12; Claim Chart #la). Based on these collective
teachings, the Examiner concludes that claim 1 would have been obvious.
Final Act. 5-6.
Appellant argues that the Examiner improperly considered Optelec as
a prior art publication because there is insufficient evidence to show that
Optelec was distributed or otherwise made available to the public. App. Br.
6-12; Reply Br. 3---6. According to Appellant, not only does the Optelec
manual itself demonstrate that it was never distributed, but there is no other
evidence proving its distribution apart from Van Schaik's uncorroborated
statements in his declaration-a declarant alleged by Appellant to lack first-
hand know ledge of Optelec' s dissemination. Id.
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Appellant adds that even if Optelec qualifies as prior art, Optelec
cannot be combined with Binkley to teach the recited telescopic link
limitation as the Examiner proposes, nor does the cited prior art teach a
bracket for removably mounting a control panel to a monitor as claimed.
App. Br. 13-18; Reply Br. 6-8.
Lastly, Appellant contends that the Examiner did not properly
consider copying as a secondary consideration of non-obviousness in light of
a competitor's design change noted in paragraph 11 in a declaration from a
co-inventor of the present invention, Bradley S. Davis, dated Mar. 9, 2012
("Davis Deel."). App. Br. 31-32.
ISSUES
(1) Under§ 103, has the Examiner erred in rejecting claim 1 by
finding that Optelec, Binkley, and Song or Youngers collectively would
have taught or suggested the recited telescopic link and mounting bracket
limitations? This issue turns on whether Optelec is a prior art printed
publication and, if so, whether (a) Optelec can be combined with Binkley to
teach the recited telescopic link, and (b) either Song or Youngers teach the
recited mounting bracket.
(2) Did the Examiner properly consider the proffered evidence
of secondary considerations of non-obviousness in concluding that the
claimed invention would have been obvious?
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ANALYSIS
Optelec is a Prior Art Printed Publication
We begin by addressing this appeal's key threshold question, namely
whether Optelec qualifies as prior art as a printed publication under § 102.
To so qualify, "a reference must have been sufficiently accessible to the
public interested in the art." In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
2009) (internal quotation marks omitted). A publicly-accessible reference,
then, must have been "disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in the subject matter or
art exercising reasonable diligence, can locate it." Id.
Here, we see no error in the Examiner's finding that Optelec meets
that public-accessibility criteria to qualify as a printed publication under
§ 102. Ans. 4---6. In this regard, the Examiner relies principally on facts
associated with the declaration of Michiel Van Schaik, Optelec' s CEO,
dated October 22, 2013 ("Van Schaik Deel."). Attached to this declaration
is a PDF copy of an Optelec ClearView5 Flex User Manual vl.O dated June
2004 which was included with the Optelec ClearView Flex products sold in
the United States in 2004. Van Schaik Deel. i-f 5. According to Mr. Van
Schaik, the Optelec manual was included with at least 27 Optelec ClearView
Flex units shipped to customers in the United States in 2004. Id. i-f 7.
5 Although Mr. Van Schaik refers to the "Clearview Flex" product in his
declaration, we nonetheless refer to Optelec' s nomenclature in the
declaration's accompanying exhibits, namely "ClearView Flex," for clarity
and consistency.
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Although the particular PDF copy of the Optelec manual attached to
the Van Schaik declaration lacks specific model and serial numbers and
dealer identification as indicated by the omitted information in the boxes on
page 17, that omission does not mean that the manual was not distributed as
Appellant contends. App. Br. 3.
Even assuming, without deciding, that it was standard procedure for
Optelec to provide this information in the manual before sending it to
customers (a practice that is unsupported by evidence on this record), the
omission of that information in the attached PDF copy is not dispositive on
the question of whether the manual was provided to the at least 27 customers
noted in the Van Schaik declaration. Rather, this omission could plausibly
mean that although this particular copy was not shipped with the ClearView
Flex products to those customers, the content of that particular copy
nevertheless at least substantially matches the content of the manuals sent to
the at least 27 customers, particularly since all documents are manuals
pertaining to the same product-the Optelec Clear View Flex.
We reach this conclusion despite the fact that individual copies of the
Optelec manual provided to those customers may contain additional
customer-specific identifications, such as unique serial numbers and dealer
information, and that the attached PDF copy lacks Federal Communication
Commission (FCC) notices that are said to be required. See App. Br. 7
(citing Davis Deel. i-f 7). Even assuming, without deciding, that such
customer-specific identifications were added to at least some manuals sent to
the at least 27 customers, the record tends to suggest that the overall content
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of the shipped manuals would nevertheless substantially match that of the
attached PDF copy.
We reach the same conclusion despite FCC approval not being
indicated explicitly in the attached copy of the Optelec manual. Leaving
aside the manual's express statements on page 16 indicating the device's
compliance with various safety and electrical requirements and related
approvals, Appellant has still not proven that FCC notices were required to
be included in that manual in 2004. Rather, Appellant merely asserts that
the ClearView Flex is a "Class B digital device" that cannot be advertised or
sold without first being tested by the FCC. App. Br. 8 n.26. That such
devices must be tested before they are advertised or sold does not
necessarily mean that an associated notice must be indicated explicitly in a
user manual, let alone in 2004. Nevertheless, even assuming, without
deciding, that such notices were required to be sent with their associated
products in the United States in 2004, we see no reason why such a
requirement could not be satisfied with an accompanying notice separate
from the Optelec manual itself. Therefore, to the extent that Appellant
argues that because the Optelec manual does not itself indicate FCC
approval means that it was not distributed (see App. Br. 8; Reply Br. 3;
Davis Deel. i-f 7), we find such a contention unavailing.
That Mr. Davis, a co-inventor of the '013 patent and a management
official with the Patent Owner, Freedom Scientific, cannot recall seeing the
product depicted in the Optelec manual being offered for sale, as noted in
paragraph 6 of his declaration, is hardly dispositive on the question of
whether the ClearView Flex product was sold, let alone whether the
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associated manual was distributed. The probative value of Mr. Davis'
testimony in this regard is diminished not only because he is an interested
party, 6 but also because his assertions that, due to his position, he "would
have come into contact with the ClearView Flex product," and "would have
been aware" of the Optelec manual (Davis Deel. i-f 6), are speculative at best.
Rather, the evidence on this record tends to show that the ClearView
Flex product was sold in the United States in 2004, and that the Optelec
manual was included with at least 27 of those products that were shipped to
customers as noted in Mr. Van Schaik's declaration. This conclusion is
buttressed by (1) the company's newsletters in Exhibit 2 accompanying that
declaration indicating that the product, then known as "ClearView
Flexscreen," was scheduled for production in March 2004, and (2) Mr. Van
Schaik declaring that this product was ultimately sold as the Optelec
ClearView Flex in the United States in 2004. Van Schaik Deel.
,-r,-r 6-7.
Despite Appellant's contention that Mr. Van Schaik allegedly has no
first-hand knowledge of the Optelec manual's dissemination (App. Br. 10),
Mr. Van Schaik declares that he not only examined company records,
including a U.S. November 2004 Sales Report, but also visited Optelec's
U.S. office and verified testing of the Clear View Flex before any units were
shipped to U.S. customers in 2004. Van Schaik Deel. i-f 7. Although Mr.
Van Schaik does not say whether he witnessed placing the manuals in
6 See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776, F.2d 281
(Fed. Cir. 1985) (noting that an expert's interest in the outcome of the case is
a factor in assessing the probative value of an expert opinion).
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containers with Clear View Flex products before shipment, one can
nonetheless reasonably infer from the facts and circumstances associated
with Mr. Van Schaik's declaration that the manuals were so included.
Accord Optelec 7 (noting that one box of the Clear View Flex system
shipment contains a user manual). Therefore, we see no error in the
Examiner's position that there is sufficient evidence linking the Optelec
manual with the product sold and made available in 2004. Ans. 5---6.
To be sure, the lack of factual corroboration may reduce the probative
value of opinions expressed in declarations; nevertheless, we have broad
discretion regarding the weight we give to them in arriving at our decision.
See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004).
Here, we credit Mr. Van Schaik's testimony and give it substantial weight-
as did the Examiner. See Ans. 5---6. As Optelec's CEO, Mr. Van Schaik was
perhaps in the best position to know of his company's products and sales
activities, including what his company was shipping to customers who
bought his company's products. Notably, Mr. Van Schaik's declaration does
not merely express opinions, but rather states concrete facts-facts known to
an individual who was at the highest level of the company, and ultimately
responsible for its activities and performance.
Although Appellant argues that Mr. Van Schaik testifies to "only 27
instances where the ClearView Flex was shipped to a customer" (App. Br.
1 O; emphasis added), Mr. Van Schaik actually declares that the manual was
included with at least 27 ClearView Flex units shipped to customers in the
U.S. in 2004. Van Schaik Deel. i-f 7. Our emphasis underscores that the
manuals were not limited to 27 such shipments as Appellant seems to
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suggest, but rather were in a minimum of 27 shipments. That is, there could
be more such shipments in 2004, albeit unspecified.
But even assuming, without deciding, that there were only 27
shipments, we are unpersuaded by Appellant's contention that this
distribution is insufficient for the manual included in these shipments to
qualify as a printed publication. App. Br. 7, 10-11; Reply Br. 5---6. Notably,
the cases cited by Appellant for the proposition that operating or user's
manuals are not presumed to be printed publications (App. Br. 7, 10) are
district court opinions that are not binding on this Board, but rather
persuasive authority.
Nevertheless, the facts in this case are distinguished from those in the
cited district court opinions. In Goss, the court held that the evidence was
insufficient to show that a manual was a printed publication despite ( 1) a
general practice to send such a manual with every "N ewsliner" shipped to a
customer, and (2) at most 15 customers receiving one or more copies of the
manual. Goss Int 'l Americas Inc. v. Graphic Mgmt. Assoc., Inc., 739
F.Supp. 1089, 1119 (N.D. Ill. 2010). Notably, the court reasoned that
because the Defendants ( 1) only distributed the manual to the small group of
people with whom it had contacted, and (2) took steps to ensure that the
manuals were not widely distributed, the manuals were not publicly
accessible and, therefore, did not qualify as printed publications. Id. at 1120.
Our emphasis underscores key differences between Goss and the facts
of the present appeal. First, the number of recipient customers in Goss was
at most 15: but here, there were at least 27. Although the specific number of
copies of a document is not dispositive in determining whether it is a printed
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publication, the number of copies is nonetheless a factor that may be
considered. See In re Wyer, 655 F .2d 221, 227 (CCP A 1981 ). And here, the
fact that there are nearly twice as many customer recipients than in Goss
weighs in favor of public accessibility.
Second, there is no evidence on this record that protective measures
were taken with respect to the Optelec manual to ensure that it was not
distributed widely as was done in Goss. This is a significant difference, for
such protective measures have been considered key factors by our reviewing
court in determining whether a document is publicly accessible. See, e.g.,
Northern Telecom v. Datapoint Corp., 908 F.2d 931, 936 (Fed. Cir. 1990)
(holding that reports with a restrictive legend prohibiting reproduction or
further dissemination that were distributed to approximately fifty people or
organizations involved in a project were not printed publications). Cf In re
Klopfenstein, 380 F.3d 1345, 1351 (Fed. Cir. 2004) (noting that protective
measures, such as a disclaimer prohibiting copying displayed information,
create a reasonable expectation that the information will not be copied and,
therefore, is not publicly accessible); Kyocera Wireless Corp. v. Int 'l Trade
Comm 'n, 545 F.3d 1340, 1350-51 (Fed. Cir. 2008) (holding that mobile
communications standards were publicly accessible because, among other
things, they were "not secluded under a similar veil of secrecy" as the
document in Northern Telecom).
Appellant's reliance on the district court case, CNET Networks, Inc. v.
Etilize Inc., 584 F.Supp.2d 1260 (N.D. Cal. 2008), is likewise unavailing.
There, the court held that public accessibility "demands some sort of public
disclosure and it is not satisfied by knowledge or distribution to a few
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persons." Id. at 1273 (emphasis added). Leaving aside the fact that this
case, like Goss, is not binding on this Board, the court did not specify what
constitutes "a few" persons. Nor has Appellant shown that at least 27
recipients of the Optelec manual in the present case falls within this
unspecified quantity. And although Appellant contends that Mr. Van
Schaik's allegedly-uncorroborated testimony offers a "basis for speculation"
as to why the proffered information may not be accurate or reliable (App.
Br. 10) as was argued in CNET to preclude summary judgment, 584
F.Supp.2d at 1274, we credit Mr. Van Schaik's testimony and give it
substantial weight in this ex parte proceeding as noted previously.
Although Appellant makes much of the fact that Mr. Van Schaik's
declaration is uncorroborated, and cites CNET for the notion that such
corroboration is required to invalidate a patent (App. Br. 9-10), this reliance
is misplaced. First, Appellant cites no binding precedent that such
corroboration is necessary in this ex parte proceeding for the Examiner or
the Board to rely on facts associated with Mr. Van Schaik's declaration.
Although such corroboration may increase a declaration's probative value,
absence of such corroborating evidence does not mean that we cannot credit
a declarant's testimony in light of the facts and circumstances in a particular
case, and give the declaration appropriate weight. See Am. Acad., 367 F.3d
at 1368. Such assessments are well within our discretion. See id.
Second, Appellant's corroboration argument ignores the significant
legal and procedural differences between a court proceeding and a
reexamination proceeding before the USPTO. See, e.g., In re Swanson, 540
F.3d 1368, 1377-78 (Fed. Cir. 2008) (explaining that, relative to district
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court litigation, reexamination is conducted under different standards
including standard of proof, absence of a presumption of validity, and claim
construction). In USPTO examinations and reexaminations, the standard of
proof, i.e., preponderance of the evidence, is substantially lower than in a
civil case. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). Therefore,
Appellant's reliance on CNET is misplaced and, as such, we are unpersuaded
of error in the Examiner's reliance on Mr. Van Schaik's declaration merely
for lacking independent corroboration. That is, we find that the Examiner
relied reasonably on the facts associated with that declaration based on the
preponderance of evidence in this record.
On this record, then, we find that the Optelec manual was sufficiently
accessible to the public interested in the art, and was disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence can locate
it. See Lister, 583 F.3d at 1311. Those interested in the subject matter of the
Optelec device could obtain the manual by, among other things, simply
buying the product, as the manual was included in the product's shipment to
customers. See Van Schaik Deel. i-fi-15, 7. Accord Optelec 7 (noting that one
box of the Clear View Flex system shipment contains a user manual).
Appellant's attempt to restrict the class of persons interested in this
subject matter to (1) those with visual disabilities, and (2) companies making
products for those individuals (App. Br. 11) is overly limiting. Rather, on
this record, we see no reason why anyone interested in enlarging object
images-a class of persons much larger than those with visual disabilities-
could not buy such a product from Optelec in 2004. Simply put, if someone
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wanted it, they could buy it-and get the manual as well. This capability is
all that is required for public accessibility. See Constant v. Adv. Micro-
Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) ("Accessibility goes to
the issue of whether interested members of the relevant public could obtain
the information if they wanted to.") (emphasis added). Nor is there a need to
show that the Optelec manual was actually received as Appellant suggests
(App. Br. 10) where, as here, accessibility is proven. Constant, 848 F .2d at
1569. Accord Lister, 583 F.3d at 1314.
Therefore, we see no error in the Examiner's finding that the Optelec
manual qualifies as a printed publication under § 102. Ans. 4---6.
The Merits of the Rejection Over Optelec, Binkley, and Song or Youngers
Because Optelec qualifies as prior art, we next address whether the
Examiner erred in rejecting claim 1 as obvious over that reference in view of
Binkley, and Song or Youngers. Final Act. 4---6 (citing Request 9-12 and
Claim Chart #la).
As noted above, this issue centers principally on two limitations of
claim 1 reciting, in pertinent part, (1) a telescopic link interconnecting the
monitor and support arm, where the telescopic link is positioned above the
camera, and (2) a mounting bracket removably mounting the control panel to
the monitor.
Regarding the telescopic link limitation, Claim Chart # 1 a indicates
that Optelec' s figures on pages 7 and 13 disclose a link positioned above the
camera, but acknowledges that this link is not telescopic. Request 35 (citing
Van Schaik Deel. i-f 9). Mr. Van Schaik, in paragraph 11 of his declaration,
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further notes that the support arm is above the stationary camera in the figure
on Optelec' s page 7.
Moreover, Binkley in Figure 4 shows telescoping support member 21'
facilitating horizontal movement of monitor 16. Binkley i-f 3 3. In light of
these teachings, we agree with the Examiner that modifying Optelec to
position a telescopic link above the camera to allow horizontal monitor
adjustment would have been obvious. Ans. 6-7; CC # 1 a. Such an
enhancement uses prior art elements predictably according to their
established functions-an obvious improvement. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
We find unavailing Appellant's contention that the proposed
modification would be too heavy for the claimed cantilevered arrangement
and, therefore, Optelec purportedly cannot be combined with Binkley. App.
Br. 13-14; Reply Br. 6-7. Not only is this argument not commensurate with
the scope of the claim as the Examiner indicates (Ans. 6-7), but it is well
settled that "a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations
omitted). Nor is the test for obviousness whether a secondary reference's
features can be bodily incorporated into the structure of the primary
reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. And here, the Examiner's proposed
combination predictably uses prior art elements according to their
established functions to yield a predictable result, namely allowing
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horizontal monitor adjustment via a telescoping link, and skilled artisans
would have reasonably expected success from the proposed combination.
See KSR, 550 U.S. at 417; see also Amgen, Inc. v. F. Hoffman-La Roche
Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009).
To the extent that Appellant's arguments made in connection with
another rejection of claim 1 alleging that Optelec does not position a link
above the camera (App. Br. 23-24, 27; Reply Br. 8) apply to this rejection,
we find such arguments unavailing. As noted previously, Claim Chart #la
notes that Optelec' s figures on pages 7 and 13 show a link positioned above
the camera. Request 35 (citing Van Schaik Deel. i-f 9). Paragraph 11 of the
Van Schaik declaration further notes that the support arm is above the
camera in Optelec' s Figure 7.
Notably, the Examiner finds that Optelec's link can be positioned and
fixed above the camera, despite its ability to also be positioned below the
camera. Ans. 12. Accord Ans. 15 (finding that Optelec shows a link above
the camera "regardless of other positions that the link may take relative to
the camera"). We see no error in these findings, for nothing in the claim
precludes Optelec' s link being above the camera (or even at least partially
above the camera), despite its ability to also be positioned below the camera.
To the extent that Appellant contends that the claimed invention requires
fixing the telescopic link such that it is always above the camera or
completely above the camera, the claim recites no such requirements.
Nor do we find error in the Examiner's reliance on either Song or
Youngers for at least suggesting a mounting bracket removably mounting a
control panel to a monitor as claimed, and that providing such a feature in
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the Optelec/Binkley system would have been obvious. Final Act. 5---6; Ans.
7-10; Claim Chart #la. First, the term "mounting bracket" is not defined in
the 'O 13 patent, which notes, among other things, that the control panel 30 is
preferably secured to monitor mounting bracket 32 in Figure 2.7 See '013
patent, col. 3, 11. 49---65. Notably, the '013 patent indicates there are
numerous ways to make this connection, all of which are within the scope of
the invention. Id. col. 3, 11. 61---64.
In light of this broad and non-limiting description, we construe the
term "bracket" with its plain meaning, namely "[a] projecting support."
McGRAW-HILL DICTIONARY OF SCIENTIFIC & TECHNICAL TERMS 262 (5th
ed. 1994 Sybil P. Parker ed.). Based on this construction, we see no error in
the Examiner's reliance on either Song or Youngers for at least suggesting
such a projecting support in their respective mounting arrangements, and
that providing such a feature in the Optelec/Binkley system would have been
obvious. Final Act. 5-6; Ans. 7-10; Claim Chart #la. Such an
enhancement uses prior art elements predictably according to their
established functions-an obvious improvement. See KSR, 550 U.S. at 417.
That Optelec has a removable "feature pack" controller on pages 14 and 15
7 The '013 patent's reference in column 3, lines 61---62 to "monitor mounting
bracket 32" in Figure 2 is puzzling, for not only does that figure lack
numeral 32, the numeral corresponds to the front edge of table top 12a in
Figure 1. See '013 patent, col. 3, 11. 53-54. Nevertheless, Figure 2 shows
the control panel 30 attached to an unlabeled structure extending below
monitor 26 which presumably corresponds to the referenced "monitor
mounting bracket." Accord id. col. 3, 11. 49-51 (noting that control panel 30
is removably mounted to a bottom edge of monitor 26 and, particularly, to a
bracket holding the monitor).
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as the Examiner indicates (Final Act. 5---6; Ans. 8) only bolsters the
Examiner's position in this regard, as does the '013 patent indicating, quite
broadly, that there are numerous ways to removably mount a control panel to
a monitor in column 3, lines 61 to 64 as noted previously.
Appellants' arguments regarding Song's and Youngers' individual
shortcomings in this regard (App. Br. 14--18; Reply Br. 7-8) do not show
nonobviousness where, as here, the rejection is based on the cited
references' collective teachings. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). And as noted above and by the Examiner, the
test is not whether secondary references' features can be bodily incorporated
into Optelec, but rather what collective teachings of the cited references
would have suggested to ordinarily skilled artisans. Ans. 8-9; Keller, 642
F.2d at 425.
That Mr. Davis declares that Optelec's ClearView Flex support arm
structure may present "an unacceptable safety issue," and that the Patent
Owner Freedom Scientific would not have introduced such a product (Davis
Deel. ,-r 8), is of no consequence here, for the evidence on this record
nevertheless shows that the claimed invention would have been obvious
based on the cited references' collective teachings as noted previously.
Secondary Considerations
Despite Appellant's contention that the Examiner did not properly
consider copying as a secondary consideration of non-obviousness (App. Br.
31-32), the record reflects that the Examiner considered the proffered
evidence of alleged copying in paragraph 11 of Mr. Davis' declaration, but
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did not find this evidence, considered as a whole, sufficient to overcome the
countervailing evidence of obviousness. See Ans. 19-20. Nor are we
persuaded of error in that determination.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 over Optelec, Binkley, and Song or Youngers, and claim 2 not
argued separately with particularity.
THE REJECTION OVER OPTELEC AND SONG OR YOUNGERS
We also sustain the Examiner's obviousness rejection of claims 3-5
and 7 over Optelec and Song or Youngers. Final Act. 9-11; Ans. 16.
Unlike claim 1, independent claim 3 does not require the interconnecting
link above the camera to be telescopic, but rather that the link is rigid.
Appellant reiterates similar arguments made previously in connection with
the recited removably-mounted bracket (App. Br. 27) which we find
unpersuasive for the reasons previously discussed.
THE REJECTION OF CLAIM 6 OVER OPTELEC, BINKLEY, AND
SONG OR YOUNGERS
We also sustain the Examiner's obviousness rejection of claim 6 over
Optelec, Binkley, and Song or Youngers. Final Act. 15; Ans. 16. Claim 6
depends from claim 3 and recites that the rigid link is telescopically
adjustable. Appellant reiterates similar arguments made previously in
connection with the recited telescopically-adjustable link (App. Br. 28-29)
which we find unpersuasive for the reasons previously discussed.
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THE REMAINING REJECTIONS
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner's decision to also reject (1) claims 1 and 2
over Optelec, Trulaske, Binkley, and Song or Youngers; (2) claims 1 and 2
over Trulaske, Optelec, Binkley, and Song or Youngers; (3) claims 3-5 and
7 over Optelec, Trulaske, and Song or Youngers; ( 4) claims 3-5 and 7 over
Trulaske, Optelec, and Song or Youngers; ( 5) claim 6 over Optelec,
Trulaske, Binkley, and Song or Youngers; (6) claim 6 over Trulaske,
Optelec, Binkley, and Song or Youngers; (7) claims 5 and 7 over Optelec,
Song or Youngers, and Mizukami; (8) claims 5 and 7 over Optelec,
Trulaske, Song or Youngers, and Mizukami; and (9) claims 5 and 7 over
Trulaske, Optelec, Song or Youngers, and Mizukami. Final Act. 6-9, 11-
19. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(approving ITC's determination based on a single dispositive issue, and not
reaching other issues not decided by the lower tribunal).
CONCLUSION
Under§ 103, the Examiner did not err in rejecting (1) claims 1and2
over Optelec, Binkley, and Song or Youngers; (2) claims 3-5 and 7 over
Optelec and Song or Youngers; and (3) claim 6 over Optelec, Binkley, and
Song or Youngers.
We do not reach the other rejections of these claims.
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DECISION
The Examiner's decision rejecting claims 1-7 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(±).
AFFIRMED
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