Ex Parte Bandringa et al

Patent Trial and Appeal Board

Mar 8, 2017

13535928 (P.T.A.B. Mar. 8, 2017)

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.
13/535,928 06/28/2012 JOHN S. BANDRINGA H30218 1026
108134 7590 03/10/2017
HONFYWFT T /ADHTTON
EXAMINER
115 Tabor Road MANDEVILLE, JASON M
P.O. Box 377
MORRIS PLAINS, NJ 07950 ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
patentservices-us @ honey well, com
docket @ ahpapatent. com
Katharine.Lawther@Honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN S. BANDRINGA, DEAN JEFFREY BIDWELL,
WILLIAM A. MARTY, and STEVEN TZU-YEN PENG
Appeal 2016-008047
Application 13/535,928
Technology Center 2600
Before KRISTEN L. DROESCH, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2016-008047
Application 13/535,928
STATEMENT OF THE CASE
Introduction
According to the Specification, the disclosed invention relates to
displaying and selecting information using a single handheld device. See
generally Spec. 1. Claim 1 is exemplary:
1. A handheld device comprising:
at least one camera;
at least one stabilized component; and
at least one nonstabilized component,
wherein the handheld device is adapted to scan an object
via the at least one camera, project at least one image on a
surface to provide at least one projected image based on the
scanned object, at least a portion of the at least one projected
image being selectable by the handheld device based on a
position of the at least one stabilized component relative to a
position of the at least one nonstabilized component.
References and Rejections
Claims 1, 3—11, 13—15, and 17—19 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Buchmann
(US 2006/0146015 Al, July 6, 2006) and Fletcher (US 2013/0126596 Al,
May 23, 2013) .
Claims 2, 12, 16, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Buchmann, Fletcher, and Aronsson
(US 2011/0230238 Al, Sept. 22, 2011).
ANALYSIS
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
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appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
On this record, the Examiner did not err in rejecting claim 1.
I
Appellants contend:
Claim 1 is directed to a handheld device that includes,
among other things, “at least one camera .. . wherein the
handheld device is adapted to sc an an object via the at least one
camera, project at least one image on a surf ace to provide at
least one projected image based on the scanned object.”... As
such, it is clear that the current claims are directed to handheld
devices that scan an object with a camera and project a
selectable image based on the scanned object.... None of the
references are directed to an apparatus with the combination of
scanning and projecting a selectable image based on the
scanning.
... As the Examiner has admitted, nowhere in Buchmann
is there a teaching or suggestion of projecting the image based
on a scanned object.
Fletcher is directed toward a device for detecting indicia
and projecting images related to the detected indicia. Nowhere
in Fletcher is there a teaching or suggestion of selecting the
portion of the image indicated by the pointer, nor is there any
mechanism (i.e., trigger, camera, and processor) for carrying
out the selecting of the image.
App. Br. 11—12 (emphasis omitted); see also App. Br. 10. It appears
Appellants are arguing neither of the cited references alone teaches
“at least one camera ... wherein the handheld device is adapted to
scan an object via the at least one camera, project at least one image
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R.§ 41.41(b)(2).
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Application 13/535,928
on a surf ace to provide at least one projected image based on the
scanned object, at least a portion of the at least one projected image
being selectable,” as recited in claim 1 (emphases added). See App.
Br. 10-12.
Appellants have not persuaded us of error. Because the Examiner
relies on the combination of Buchmann and Fletcher to teach the disputed
claim limitations, Appellants cannot establish nonobviousness by attacking
the references individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
The Examiner finds—and Appellants do not dispute—Buchmann
teaches “at least one camera .. . wherein the handheld device is adapted to
.. ., project at least one image on a surf ace to provide at least one projected
image ... at least a portion of the at least one projected imagebeing
selectable,” as recited in claim 1 (emphases added). .See Final Act. 2—3.
The Examiner further finds—and Appellants do not dispute—Fletcher
teaches “scan an object via the at least one camera, project at least one
image... to provide at least one projected image based on the scanned
object,” as recited in claim 1 (emphases added). .See Final Act. 3^1.
Therefore, the Examiner correctly finds Buchmann and Fletcher
collectively teach “at least one camera . .. wherein the handheld device is
adapted to scan an object via the at least one camera, project at least one
image on a surf ace to provide at least one projected image based on the
scanned object, at least a portion of the at least one projected image being
selectable,” as recited in claim 1 (emphases added). We discuss the
Examiner’s reasoning for the proposed combination below.
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II
Appellants argue neither reference provides the reasoning for the
proposed combination. See App. Br. 13—14; Reply Br. 4—5. Appellants
contend the Examiner’s rationale for the proposed combination is
conclusory, and the combination is based on impermissible hindsight. See
App. Br. 12—14; Reply Br. 4—5.
Appellants have not shown Examiner error.
First, the U.S. Supreme Court has held “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSRInt’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). Contrary to Appellants’ argument, “[i]f the claim
extends to what is obvious, it is invalid under § 103” and “the 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.” Id. at 418—19.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
modify Buchmann’s device to incorporate Fletcher’s teachings. See Final
Act. 4; Ans. 22—26. Among other things, the Examiner determines one
skilled in the art would have combined the teachings ofBuchmann and
Fletcher to achieve the “benefit of improved portability, interfacing, and
usability.” Ans. 25. Appellants do not persuasively show why such
reasoning is incorrect, and fail to show that reasoning is merely conclusory.
Second, we disagree with Appellants’ argument that the proposed
combination is motivated by impermissible hindsight. Our reviewing courts
have not established a bright-line test for hindsight. The U.S. Supreme
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Court guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Court has also
qualified the issue of hindsight by stating “[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” KSR, 550 U.S. at 421.
In the present case, we see the hindsight question before us as a
balancing test: whether (1) the Examiner’s proffered combination of
references is merely ’’the predictable use of prior art elements according to
their established functions” (KSR, 550 U.S. at 417), consistent with common
sense; or (2) an artisan would not have reasonably combined the cited
references in the manner proffered by the Examiner but for having the
benefit of the claim to use as a guide (i.e., impermissible hindsight).
Appellants have not demonstrated the Examiner’s proffered
combination of references would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Further, after reviewing the respective teachings and
suggestions of the cited references, we agree with the Examiner that weight
of the evidence shows modifying Buchmann’s system to incorporate
Fletcher’s scanning technique would have predictably used prior art
elements according to their established functions—an obvious improvement.
See Final Act. 5; Ans. 22—26; KSRInt’l Co., 550 U.S. at 422. Therefore, on
this record, Appellants have not persuaded us the Examiner engaged in
impermissible hindsight.
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Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1, and independent
claim 8 for similar reasons.
Appellants advance the same arguments for independent claims 1
and 17. See App.Br. 11—14. However, Appellants fail to show claim 17
includes the disputed claim limitations discussed above with respect to
claim 1. In any event, as discussed above, Appellants’ arguments about
claim 1 are unpersuasive. Therefore, we also sustain the Examiner’s
rejection of independent claim 17.
We also sustain the Examiner’s rejection of corresponding dependent
claims 2—7, 9-16, and 18—20, as Appellants do not advance separate
substantive arguments addressing those claims.
DECISION
We affirm the Examiner’s decision rejecting claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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