Ex Parte TEMBY et alDownload PDFPatent Trial and Appeal BoardSep 26, 201812868859 (P.T.A.B. Sep. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/868,859 98471 7590 InTouch Health C/0 CPA Global FILING DATE 08/26/2010 09/28/2018 900 2nd A venue South, Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR KELTON TEMBY 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. P035X 6745 EXAMINER MOHAMMED, ASSAD ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 09/28/2018 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): clambrecht@intouchhealth.com docketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KELTON TEMBY, CHARLES S. JORDAN, DANIEL S. SANCHEZ, STEVEN E. BUTNER, DEREK J. WALTERS, FUJI LAI, KEVIN P. HANRAHAN, JOSHUA A. BOUGANIM and JAMES ROSENTHAL Appeal2018-003377 Application 12/868,859 1 Technology Center 2600 Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-11, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify InTouch Technologies, Inc. as the real party in interest. App. Br. 2. Appeal2018-003377 Application 12/868,859 THE INVENTION The disclosed and claimed invention is directed to "portable telepresence systems that include an apparatus remotely controlled through a remote station, where the system includes cameras, monitors, microphones, and speakers to allow for two-way audio-visual communication." Spec. ,r 2.2 Claim 1, reproduced below with the disputed limitations italicized, is illustrative of the claimed subject matter: 1. A portable telepresence apparatus coupled to a remote station that has a station monitor, a station camera, a station speaker and a station microphone, the portable telepresence apparatus comprising: a hand held housing; a first camera coupled to a first face of said housing; a monitor that is coupled to said first face of said housing and displays video captured by the station camera; a speaker that is coupled to said housing and generates a sound provided through the station microphone; a microphone coupled to said housing; a battery coupled to said housing; a wireless transceiver coupled to said housing; and a viewfinder screen coupled to a second face of said housing, wherein the monitor and the viewfinder face different directions and said viewfinder screen displays video captured by said first camera simultaneously with said monitor displaying video captured by the station camera. 2 We refer to the Specification filed Aug. 26, 2010 ("Spec."); Final Office Action mailed Sep. 7, 2016 ("Final Act."); Appeal Brief filed Oct. 9, 2017 ("App. Br."); Examiner's Answer mailed Dec. 8, 2017 ("Ans."); and the Reply Brief filed Feb. 8, 2018 ("Reply Br."). 2 Appeal2018-003377 Application 12/868,859 REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Lee et al. (hereinafter "Lee") US 2007/0057866 Al Mar. 15, 2007 Sandbeg et al. US 2007 /0064092 Al Mar. 22, 2007 (hereinafter "Sandbeg") Jobs et al. US 2008/0174570 Al July 24, 2008 (hereinafter "Jobs") Braunstein et al. US 2009/0185792 Al July 23, 2009 (hereinafter "Braunstein") Wang et al. US 7,761,185 B2 July 20, 2010 (hereinafter "Wang") REJECTIONS Claims 1 and 2 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Wang, Lee, and Braunstein. Claims 3-9 and 11 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Wang, Lee, Braunstein, and Jobs. Claim 10 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Wang, Lee, Braunstein, and Sandbeg. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. 3 Appeal2018-003377 Application 12/868,859 We are not persuaded by Appellants' arguments regarding the pending claims. Appellants argue the claim limitations "wherein the monitor and the viewfinder face different directions and said viewfinder screen displays video captured by said first camera simultaneously with said monitor displaying video captured by the station camera" are functions that "must be read together." Reply Br. 2. According to Appellants, the references fail to teach the limitations when read together. Id. Specifically, Appellants argue Lee does not teach a viewfinder and monitor facing in different directions, and Braunstein does not teach a monitor and viewfinder that simultaneously display video. App. Br. 9; Reply Br. 2. On the one hand, Appellants' argument against Braunstein separately from Lee does not persuasively rebut the combination made by the Examiner. One cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d413, 425 (CCPA 1981). On the other hand, we agree with the Examiner's finding that Lee teaches images being displayed on the two screens simultaneously, and Braunstein teaches the viewfinder and monitor facing different directions. Ans. 5-6 (citing Lee, Figs. 2A, 3, 4, ,r,r 30, 35); Ans. 7 (citing Braunstein, Fig. 3, ,r,r 56-57); see Ans. 15-17. For example, as cited by the Examiner (Ans. 5---6, 15-16), Lee discloses "an image received from the other party is displayed on the first display unit 340, and an image of a user captured by the first camera unit 320 or the second camera unit 330 is displayed on the second display unit 350." Lee ,r 35 (emphasis added). As further cited by the Examiner (Ans. 7, 17), Braunstein discloses "the user can choose to see 4 Appeal2018-003377 Application 12/868,859 (on the camcorder display) one of the following: what he/she is broadcasting on either the front display screen 350 or back display screen 352." Braunstein ,r 57 ( emphasis added). In other words, Lee teaches simultaneously displaying on two display units (i.e., displaying received images on first display unit and captured image on second display unit); and Braunstein teaches displays on the front and back of the device (i.e., front display screen and back display screen). And the combination of the teachings of the references teach the disputed limitation. Accordingly, we are not persuaded by Appellants' argument that the Examiner erred. Appellants further contend there is no reason to combine the references, and specifically there is no reason to modify the simultaneous displays in Lee such that one display is on the front of the device and the other display is on the back of the device, like in Braunstein. App. Br. 10. According to Appellants, combining Lee and Braunstein, as found by the Examiner, would make it impossible for the user to see the video on both displays at the same time. Id. Specifically, Appellants argue that the modification defeats the intended purpose of both Lee and Braunstein, which Appellants contend is to display images specifically "for the benefit of the person holding the device." Reply Br. 3. We are not persuaded that Appellants have established that the proposed change would result in a change in the principle of operation of the prior art as to make the claimed invention nonobvious. Lee's intended purpose is exemplified as providing that "an image received from the other party is displayed on the first display unit 340, and an image of a user captured by the first camera unit 320 or the second camera unit 330 is displayed on the second display unit 350." Lee ,r 35. 5 Appeal2018-003377 Application 12/868,859 If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). For example, our reviewing court held that an invention was not obvious where the prior art taught the device required rigidity for operation whereas the claimed invention required resiliency. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, as our reviewing court has explained, the proposition set forth in Ratti is inapplicable where the modified apparatus will operate "on the same principles as before." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969)). Appellants fail to provide persuasive evidence or reasoning to support Appellants' contention that the Examiner's combination would not possibly result in the claimed apparatus. See App. Br. 1 O; Reply Br. 3. Appellants do not rely on any testimonial evidence nor any clear statement in the prior art indicating that the changes proposed by the Examiner would not work. Simply asserting this would not work does not make it so. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). Moreover, to the extent this assertion assumes that one of ordinary skill in the art would slavishly apply the disclosures of the references we note, "[a] person of ordinary skill is also a person of ordinary creativity, not an automation." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Appellants have not offered any evidence that the modification proposed by the Examiner would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). 6 Appeal2018-003377 Application 12/868,859 Instead, we agree with and adopt the Examiner's finding that a person of ordinary skill in the art would have combined the teachings of Lee and Braunstein: it would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify Wang and Lee to incorporate a structure that has two displays that are on different sides of the housing. The modification would to be able to display different images on both displays as taught by Lee and a structure that has two display screens on different sides of the housing as taught by Braunstein. Therefore the combination of Lee and Wang to provide the streaming images as well as the viewing of images captured by the camera taught by Lee and housing structure which discloses two screens that are different sides of the housing as taught by Braunstein. Ans. 17. Accordingly, we sustain the Examiner's rejection of claim 1, along with the rejections of dependent claims 2-11, which are not argued separately. See App. Br. 11. DECISION For the above reasons, we affirm the Examiner's decisions rejecting claims 1-11. 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). See 37 C.F.R. § 4I.50(f). AFFIRMED 7 Copy with citationCopy as parenthetical citation