GoPro, Inc.

Patent Trials and Appeals Board

Mar 16, 2022

2021001283 (P.T.A.B. Mar. 16, 2022)

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. 16/371,539 04/01/2019 Sean Flanigan GPRO2-202-C 4683 142879 7590 03/16/2022 GoPro, Inc. at Young Basile c/o Young Basile Hanlon & MacFarlane, P.C. 3001 West Big Beaver Road Suite 624 Troy, MI 48084-3107 EXAMINER KIM, MATTHEW DAVID ART UNIT PAPER NUMBER 2483 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): audit@youngbasile.com docketing@youngbasile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEAN FLANIGAN Appeal 2021-001283 Application 16/371,539 Technology Center 2400 Before JOSEPH L. DIXON, JOHN A. EVANS, and JOYCE CRAIG, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a)(2019). Appellant identifies the real party in interest as GoPro, Inc. Appeal Br. 3. Appeal 2021-001283 Application 16/371,539 2 CLAIMED SUBJECT MATTER The claims are directed to modular image capture systems. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system comprising: an image sensor configured to capture images; a mechanical stabilization system, including gimbals and motors, that is integrated with the image sensor and configured to control an orientation of the image sensor; and a processing apparatus configured to: detect an occurrence of a triggering event; and responsive to the occurrence of the triggering event, send commands to motor controllers of the mechanical stabilization system to electronically control the gimbals and motors to assume a fold-flat position, maintain the fold-flat position for a time period, and, after the time period expires, power off the gimbals and motors. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Salter et al. US 9,863,171 B1 Jan. 9, 2018 Tobia et al. US 2012/0180789 A1 July 19, 2012 Kim US 2017/0064176 A1 Mar. 2, 2017 Tesar et al. US 2017/0143442 A1 May 25, 2017 Stafford et al. US 2017/0358141 A1 Dec. 14, 2017 Basham US 2019/0008256 A1 Jan. 10, 2019 Appeal 2021-001283 Application 16/371,539 3 REJECTIONS Claims 1-3, 5, 9, 12-14, and 18-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kim in view of Tesar, further in view of Salter. Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable over Kim, Tesar, and Salter, and further in view of Tobia. Claims 6-8 and 15-17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kim, Tesar, and Salter, and further in view of Basham. Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kim, Tesar, and Salter, and further in view of Stafford. OPINION 35 U.S.C. § 103 Independent Claim 1 We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis only. Appeal 2021-001283 Application 16/371,539 4 The Examiner has the initial burden to set forth the basis for any rejection so as to put the patent Applicant on notice of the reasons why the Applicant is not entitled to a patent on the claim scope that he seeks - the so-called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). An Appellant may attempt to overcome an Examiner’s rejection on appeal to the Board by submitting arguments and/or evidence to show that the Examiner made an error in either (1) an underlying finding of fact upon which the final conclusion was based, or (2) the reasoning used to reach the legal conclusion. See Frye, 94 USPQ2d at 1075. The panel then reviews the rejection for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. See Oetiker, 977 F.2d at 1445; see also Frye, 94 USPQ2d at 1075. Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis only. With respect to illustrative independent claim 1, Appellant contends that the combination of prior art references does not teach or suggest the claimed step of responsive to the occurrence of the triggering event, send commands to motor controllers of the mechanical stabilization system to electronically control the gimbals and motors to assume a fold-flat position, maintain the fold-flat position for a time period, and, after the time period expires, power off the gimbals and motors. In the Reply Brief, Appellant argues that the Kim and Tesar references do not, singly or in combination, make any mention of the word Appeal 2021-001283 Application 16/371,539 5 “fold” or the word “flat” in reference to a mechanical stabilization system comprising gimbals and motors and therefore cannot teach or suggest “send commands to motor controllers of the mechanical stabilization system to electronically control the gimbals and motors to assume a fold-flat position” as recited by claim 1. Reply Br. 3. Appellant further argues that the Salter reference does not make any mention of a fold-flat position for a period of time. Reply Br. 3-4; see generally Appeal Br. 6-7. Appellant contends that the “cocked actuated position of an open compartment” of Salter is not analogous to the “fold-flat position” [citing Ans. 7] recited by claim 1 of the recited claimed invention because the cocked actuated position of an open compartment does not include a foldable or flat position; therefore, Appellant respectfully submits that Saltar [sic] the “cocked actuated position of an open compartment” actually teaches away from the “fold-flat position” of the recited claimed invention (Emphasis added; Kim; recited claimed invention, claim 1). Reply Br. 5 (emphasis omitted). Therefore, Appellant respectfully submits that the Saltar reference does not teach or suggest this recited element of responsive to the occurrence of the triggering event, send commands to motor controllers of the mechanical stabilization system to electronically control the gimbals and motors to assume a fold-flat position, maintain the fold-flat position for a time period, and, after the time period expires, power off the gimbals and motors. Reply Br. 5. Appellant argues that the Salter reference describes maintaining an open position of a compartment lid for a predetermined amount of time that starts when a vehicle engine is placed in an OFF condition, and, after the predetermined amount of time, using an electrical motor and/or other means Appeal 2021-001283 Application 16/371,539 6 (e.g., the actuator module 66) to reclose the lid of the compartment. Appeal Br. 6-7 (emphasis omitted). Appellant argues that Salter uses energy at the end of the predetermined amount of time to change a position of the lid of the compartment, and Salter is not understood to teach or suggest maintaining a position for a time period, and, after the time period expires, powering off gimbals and motors. Appeal Br. 6-7. Appellant further argues that the rejection relies on an erroneous interpretation of Salter. Salter does not teach or suggest to “maintain the position for a time period, and, after the time period expires, power off.” Appeal Br. 7. Appellant also argues the Salter reference describes maintaining an open position for a compartment in a car interior for predetermined amount of time before closing the compartment where the discussion of the “OFF condition” in Salter refers to the shutting off a vehicle engine - not a gimbal with a motor - and the “OFF condition” is actually a trigger for maintaining the open position for fixed amount of time - not an action taken after the time period expires. Appeal Br. 7. The Examiner maintains that Appellant is arguing the references individually. Final Act. 2. We disagree with the Examiner and find that Appellant is addressing the specific reference as forth in the rejection for the specific teachings relied upon in the combination. The Examiner generally finds that the Tesar reference discloses detecting an occurrence of a triggering event (see Tesar paragraph 1261 regarding selection of procedure or case causing trigger actuation); and responsive to the occurrence of the triggering event, sending commands to Appeal 2021-001283 Application 16/371,539 7 motor controllers of the mechanical stabilization system to electronically control the gimbals and motors to assume a position (see Tesar paragraph 1261 regarding selection of procedure or case causing trigger actuation of gimbals and motors to assume a preset stored position, including a storage position). Final Act. 6. The Examiner finds that one skilled in the art would be motivated to combine these teachings in order to provide an automated position suitable for a particular case. Final Act. 7. The Examiner finds that the combination of Kim and Tesar does not explicitly teach maintaining the position for a time as needed for the limitations of claim 1, but the Salter reference teaches responsive to the occurrence of the triggering event maintain the position for a time period, and, after the time period expires, power off (see Salter column 12 lines 32-37 regarding maintaining a held position for a predetermined time then returning to a neutral position, upon power off command of master system). Final Act. 7. In the Examiner’s Answer, the Examiner addresses the breath of the “fold-flat position” and that the term is not defined in the Specification. Ans. 6. The Examiner further interprets the claim language and finds that, in response to the Appellant’s emphasis that Salter is erroneously applied because it uses power in its process of reclosing a compartment, it is noted that the limitations as claimed do not require a particular immediate order or time sequence to the powering off of the gimbals and motors, only that they are powered off, broadly, after the time period expires. Ans. 6. We disagree with the Examiner and find that the claim language is specific as to the sequence of events in the limitation Appeal 2021-001283 Application 16/371,539 8 responsive to the occurrence of the triggering event, send commands to motor controllers of the mechanical stabilization system to electronically control the gimbals and motors to assume a fold-flat position, maintain the fold-flat position for a time period, and, after the time period expires, power off the gimbals and motors. The Examiner rationalizes the Salter reference in the combination and states that: Salter is therefore used to teach a process of maintaining a position for a time period, and after the time period expires, regardless of what may happen immediately after the time period, the motor system eventually no longer receives actuation power- it is, broadly, powered off. This teaching is combined with Kim and Tesar to apply to the fold flat storage position of the particular gimbals and motors of Kim, so that during the power off process of gimbals and motors that is taught by Kim, the fold flat position (analogous to a cocked actuated position of an open compartment of Salter) is maintained for a time period. Then, at an eventual, but expected point after the time period expires, the gimbals and motors are fully powered off, as taught by Kim, in its direct teaching of power off, and Salter, in its teaching of eventual power off of the rotational motor. Ans. 7. We disagree with the Examiner and find that the language of independent claim 1 sets forth a specific “fold-flat position” and the Examiner has not shown that any of the three prior art references teaches or fairly suggests the “fold-flat position.” Additionally, we agree with Appellant that the Salter reference in combination with the Kim and Tesar references does not teach or suggest the specific claimed responsive to the occurrence of the triggering event, send commands to motor controllers of the mechanical stabilization system to electronically control the gimbals and motors to Appeal 2021-001283 Application 16/371,539 9 assume a fold-flat position, maintain the fold-flat position for a time period, and, after the time period expires, power off the gimbals and motors. As a result, on the record before us, we do not sustain the Examiner’s obviousness rejection of illustrative independent claim 1. Independent Claims 12 and 18 Appellant contends that these independent claims contain similar claim language and are not patentable for the same reasons as independent claim 1. Appeal Br. 7-8. We agree with Appellant and do not sustain the Examiner’s obviousness rejection of independent claims 12 and 18 for the reasons discussed above. Dependent Claims Appellant contends that the additional references to Tobia, Basham, and Stafford do not remedy the noted deficiencies in the base combination of the Kim, Tesar, and Salter references. Appeal Br. 8-9. We agree with Appellant and do not sustain the Examiner’s obviousness rejection of dependent claims 2, 3, 5, 9, 13, 14, 19, and 20 for the reasons discussed above. With respect to dependent claims 4, 6-8, 10, 11, and 15-17, Appellant relies upon the arguments advanced with respect to illustrative independent claim 1. Appeal Br. 8-9. The Examiner has not identified how the additional prior art references remedy the noted deficiency above. Therefore, we agree with Appellant and do not sustain the Examiner’s obviousness rejection of dependent claims 4, 6-8, 10, 11, and 15-17 for the reasons discussed above. Appeal 2021-001283 Application 16/371,539 10 CONCLUSION We reverse the Examiner’s obviousness rejections of claims 1-20. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5, 9, 12-14, 18- 20 103 Kim, Tesar, Salter 1-3, 5, 9, 12-14, 18- 20 4 103 Kim, Tesar, Salter, Tobia 4 6-8, 15-17 103 Kim, Tesar, Salter, Basham 6-8, 15-17 10, 11 103 Kim, Tesar, Salter, Stafford 10, 11 Overall Outcome 1-20 REVERSED