Ex Parte Schlaff

Patent Trial and Appeal BoardDec 31, 2012

10185395 (P.T.A.B. Dec. 31, 2012)

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. 10/185,395 06/28/2002 Steven Schlaff 4064/0160-US0 6312 76808 7590 12/31/2012 Leason Ellis LLP One Barker Avenue Fifth Floor White Plains, NY 10601-1526 EXAMINER VO, TUNG T ART UNIT PAPER NUMBER 2486 MAIL DATE DELIVERY MODE 12/31/2012 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 STEVEN SCHLAFF Appeal 2010-010121 Application 10/185,395 Technology Center 2400 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010121 Application 10/185,395 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-3, 6, 8-18, 21, 22, and 26-36, which are all the claims remaining in the application. Claims 4, 5, 7, 19, 20, and 23-25 have been canceled. (Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s Invention The invention at issue on appeal concerns a two-way communication system and device including a video camera with the video camera lens mounted in a cavity of an external part of the system/device. (Spec. 1:12-15; 11:6 to 15: 21; Abstract.)1 Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 17. A bi-directional communication system for providing communication between two points on opposite sides of a partition, the system comprising: a unit adapted for mounting on the partition and including: a first part for placement on an exterior side of the partition, the first part having a first bore extending therethrough; and a second part for placement on an interior side of the partition and securely attached to the first part; 1 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”) filed March 2, 2010. We also refer to the Examiner’s Answer (“Ans.”) mailed November 2, 2006. Appeal 2010-010121 Application 10/185,395 3 audio communication components disposed at least partially within at least one of the first and second parts to permit bi-directional audio communication between the two points on opposite sides of the partition; and a micro video camera including a lens module having at least one lens disposed therein and a control module in com- munication with the lens module, the lens module and the control module being disposed within the first part on the exterior side of the partition, the first part having an inner face and an opposing outer face that faces away from the second part, the inner face having a contoured first recessed cavity formed therein and defined by a solid floor that defines a bottom of the cavity for receiving and containing the micro video camera so as to position the micro video camera on the exterior side of the partition, the micro video camera seated within the first recessed cavity such that it is disposed in intimate contact with and against the solid floor of the first recessed cavity so as to contain and hold the micro video camera in a desired location, wherein within the first cavity, the first bore is formed completely through the first part and the lens module is at least partially disposed in the first bore. Rejections on Appeal 1. The Examiner rejects claims 1-3, 6, 8, 9, 15-18, and 26-36 under 35 U.S.C. § 103(a) as being unpatentable over US 4,843,461, issued Jun 27, 1989 (“Tatsumi”) and US 4,049,911, issued Sept. 20, 1977 (“Schlaff”). 2. The Examiner rejects claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Tatsumi, Schlaff, and US 6,559,769 B2, issued May 6, 2003 (“Anthony”). 3. The Examiner rejects claims 12-14, 21, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Tatsumi, Schlaff, and US 6,429,893 B1, issued Aug 6, 2002 (“Xin”). Appeal 2010-010121 Application 10/185,395 4 ISSUE Based upon our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in finding that the combination of Tatsumi and Schlaff collectively would have taught or suggested: a micro video camera including a lens module having at least one lens disposed therein . . . , the lens module and the control module being disposed within the first part on the exterior side of the partition, the first part having an inner face . . . , the inner face having a contoured first recessed cavity formed therein and defined by a solid floor that defines a bottom of the cavity for receiving and containing the micro video camera . . . , the micro video camera seated within the first recessed cavity such that it is disposed in intimate contact with and against the solid floor of the first recessed cavity (claim 1), within the meaning of Appellant’s claim 1 and commensurate limitations of claim 16? ANALYSIS We agree with Appellant that the portions of Tatsumi identified by the Examiner do not teach or suggest the disputed features of claim 1, in particular, an exterior (first) part having a cavity and a video camera disposed in the cavity and in intimate contact with the floor thereof. (Br. 8- 9.) Specifically, we agree with Appellant that Tatsumi’s disclosure of circuit boards (Figs. 5, 7; elements 15, 18) (see Ans. 3-5, 10-11) fails to teach or suggest a solid floor of a cavity, much less a video camera in intimate contact therewith. Rather, Tatsumi’s video camera (Fig. 6, element 14 is mounted to the circuit board (Figs, 5-7, element 15) inside a casing (Fig. 7, element 102) and the circuit board is attached to bosses (Fig. 5, element 19) Appeal 2010-010121 Application 10/185,395 5 on the interior of the cover (Fig. 5, element 61). We find no disclosure in Tatsumi of the video camera being in contact with a floor or any other part of the interior “cavity” of the cover. Schlaff does not disclose a video camera and, therefore, doesn’t cure the deficiencies of Tatsumi. Consequently, we are constrained by the record before us to conclude that the combination of Tatsumi and Schlaff would not have taught or suggested the recited features of Appellant’s claim 1, and the rejection of claim 1 fails to establish a prima facie case of obviousness. Appellant’s independent claims 16 includes limitations of commensurate scope, and dependent claims 2, 3, 6, 8-9, 15, 17, 18, and 26-36 depend on and stand with their respective base claims. Accordingly, we reverse the Examiner’s obviousness rejection of claims 1-3, 6, 8, 9, 15-18, and 26-36. Appellant’s claims 10 and 11, rejected under 35 U.S.C. § 103 over Tatsumi, Schlaff, and Anthony depend on and stand or fall with claim 1. The Examiner has not alleged, let alone shown, that Anthony cures the deficiencies of Tatsumi (and Schlaff). Accordingly, we also reverse the Examiner’s obviousness rejection of claims 10 and 11. Appellant’s claims 12-14, 21, and 22, rejected under 35 U.S.C. § 103 over Tatsumi, Schlaff , and Xin, depend on and stand or fall with representative independent claim 1 and independent claim 16, respectively. We do not find, nor has the Examiner established, that Xin cures the deficiencies of Tatsumi (and Schlaff) discussed supra. Accordingly, we reverse the Examiner’s rejection of claims 12-14, 21, and 22 for the same reasons discussed with respect to claim 1 (supra). Appeal 2010-010121 Application 10/185,395 6 CONCLUSIONS OF LAW Appellant has shown that the Examiner erred in rejecting claims 1-3, 6, 8-18, 21, 22, and 26-36 under 35 U.S.C. 103(a). DECISION We reverse the Examiner’s rejections of claims 1-3, 6, 8-18, 21, 22, and 26-36 under 35 U.S.C. 103(a). REVERSED Vsh