Ex Parte Stough et al

Patent Trial and Appeal BoardJun 26, 2018

13304289 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/304,289 11/23/2011 146446 7590 06/28/2018 Dinsmore & Shohl LLP 801 Pennsylvania Avenue, N.W. Suite 610 Washington, DC 20004 FIRST NAMED INVENTOR Karl A. STOUGH 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. 114033-391/PRAG810348PA 8953 EXAMINER JOISIL, BERTEAU ART UNIT PAPER NUMBER 2487 NOTIFICATION DATE DELIVERY MODE 06/28/2018 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): dcipdocket@dinsmore.com denise.suter@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARL A. STOUGH, GEORGE P. WILKIN, and DEAN W. CRAIG Appeal 2017-011741 Application 13/304,289 1 Technology Center 2400 Before CAROLYN D. THOMAS, IRVINE. BRANCH, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants' Brief ("Br.") identifies ALCATEL LUCENT as the real party in interest. App. Br. 1. Appeal 2017-011741 Application 13/304,289 CLAIMED SUBJECT MATTER The claims are directed to efficiently aligning cameras such as surveillance or closed circuit television (CCV) cameras. Spec. i-f 1. A camera is connected to an alignment device which includes a display. A reference point corresponding to a target within the surveillance area is used to verify the alignment of the camera based on the position on the reference point on the display. Spec. i-f 20. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for determining a position where a reference point is to be located on a display of an alignment device, said reference point corresponding to a target located within a region to be monitored by a camera being aligned with said alignment device, said method comprising the steps of: determining a minimum Field of View (Fo V) such that the camera will view a substantial entirety of the region; determining a first bearing for the camera, said first bearing substantially bisecting the Fo V; determining a second bearing to the target; determining a difference between the first and second bearings; determining a scaling factor; and determining a position where the reference point corresponding to the target is to be located on the display of the alignment device based on the scaling factor and the difference between the first and second bearings. App. Br. 16 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Berkey US 2008/0136910 Al Jun. 12, 2008 2 Appeal 2017-011741 Application 13/304,289 Niem Graesser US 2008/0211910 Al Sep. 4, 2008 US 2012/0013736 Al Jan. 19, 2012 REJECTION Claims 1-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Niem, Berkey, and Graesser. Final Act. 6-17. ISSUE Has the Examiner erred is finding a person of ordinary skill in the art would have combined the teachings ofNiem, Berkey, and Graesser to arrive at the invention as claimed? ANALYSIS We agree with Appellants that the Examiner has erred. In rejecting the claims, the Examiner summarizes Appellants' invention by finding the claims "essentially relate[] to panning and tilting of a camera involved in the alignment process." Ans. 14. The Examiner further finds the claimed "steps do not amount to subject matter that would add significant inventive weight to the claimed Application." Ans. 15. Despite the lack of explicit teachings of the recited limitations in the cited references, the Examiner concludes the claims are obvious because: Notions such as bearing, bisecting Fo V of a camera, minimum Po V, difference between bearings might not be taught in the same specific terms as described in the Application, but can be derived from the disclosed references, since they amount to routine angle measurements as related to different fields of view of a camera taking images of a particular target. Ans. 15. 3 Appeal 2017-011741 Application 13/304,289 This approach is insufficient to establish unpatentability under 3 5 U.S.C. Â§ 103. Although an obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim [and] a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ," KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), our reviewing court still requires that "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). Here, the Examiner does not identify any specific instance in the references in which the claimed process steps are actually performed. Rather, the Examiner finds that the cameras disclosed in those references could be operated in the manner claimed, and it would have been obvious to do so. Put differently, the Examiner essentially finds that because the claimed process could have been implemented using cameras known in the prior art, the claimed process was obvious. Where the Examiner's analysis falls particularly short, however, is the lack of any reasoning or explanation of why a person of ordinary skill in the art would have sought to operate those prior art cameras in the manner provided in Appellants' claims. Instead, the Examiner merely finds "it would have been obvious ... to combine the teachings of [the prior art references] in order to implement the method of aligning cameras as disclosed in the present claim limitations." Ans. 5. This is precisely the type of "conclusory statement" prohibited by the Federal Circuit in In re Kahn. The Examiner adds that "[t]he steps disclosed in Berkey's application could be integrated into the calibration 4 Appeal 2017-011741 Application 13/304,289 method presented by Niem to complement the steps for implementing the method for determining the camera alignment in relation to monitoring a specific region." Ans. 5 (emphasis added). However, the mere fact that two techniques could be integrated is not enough to show obviousness. The Federal Circuit recently addressed a similar situation in Persona/Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017). There, the Federal Circuit vacated an obviousness determination finding the Board was "deficient in its finding that a relevant skilled artisan would have had a motivation to combine" because it found only "that a skilled artisan, once presented with the two references, would have understood that they could be combined." Persona/Web, 848 F.3d at 993. The Federal Circuit explained, "And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention." Id. at 993- 94. In sum, obviousness under 35 U.S.C. Â§ 103 "concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention." Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, the Examiner's conclusion of obviousness is based only on findings that the recited steps could have been performed and that the combination could have been made-findings insufficient to support the legal conclusion of obviousness in this case. Accordingly, and constrained by the record before us, we do not sustain the rejections made under 35 U.S.C. Â§ 103. 5 Appeal 2017-011741 Application 13/304,289 DECISION We reverse the Examiner's rejection of claims 1-20. REVERSED 6