Ex Parte TEMBY et al

Patent Trial and Appeal Board

Sep 26, 2018

12868859 (P.T.A.B. Sep. 26, 2018)

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.
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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.").
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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.
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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
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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.
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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).
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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
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