Ex Parte Bandringa et alDownload PDFPatent Trial and Appeal BoardMar 8, 201713535928 (P.T.A.B. Mar. 8, 2017) 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. 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 2 Appeal 2016-008047 Application 13/535,928 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). 3 Appeal 2016-008047 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. 4 Appeal 2016-008047 Application 13/535,928 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 5 Appeal 2016-008047 Application 13/535,928 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. 6 Appeal 2016-008047 Application 13/535,928 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 7 Copy with citationCopy as parenthetical citation