OPKIX, INC.Download PDFPatent Trials and Appeals BoardAug 30, 20212020004501 (P.T.A.B. Aug. 30, 2021) Copy Citation 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. 15/455,196 03/10/2017 Ryan Mikah Fuller OPKIX.020A 9982 20995 7590 08/30/2021 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER HANNETT, JAMES M ART UNIT PAPER NUMBER 2698 NOTIFICATION DATE DELIVERY MODE 08/30/2021 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): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RYAN MIKAH FULLER, TAMIO LUCIEN STEHRENBERGER, SHAHIN AMIRPOUR, JOHN MCGUINNESS, and C. LAWRENCE GREAVES Appeal 2020-004501 Application 15/455,196 Technology Center 2600 ____________ Before JOHN A. EVANS, NORMAN H. BEAMER, and MICHAEL T. CYGAN, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 4–8, 10–13, and 16–20. Claims 2, 3, 9, 14, and 15 are objected to but deemed allowable. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as OPKIX, Inc. (Appeal Br. 3.) Appeal 2020-004501 Application 15/455,196 2 THE INVENTION Appellant’s disclosed and claimed invention is directed to an operationally dependent external camera system for use with a portable computer device. (Abstr.) Independent claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. An operationally dependent external camera system including a portable computer device comprising: a portable computer device including at least one of a smartphone, tablet or tablet phone having a total volume smaller than twenty cubic inches; a camera having an outer dimension smaller than three cubic inches, wherein the camera further includes a plurality of functional parameters that correspond to all variable functions of the camera including but not limited to resolution and recording status; an operation cord coupled between the camera and the portable computer device configured to continuously transmit both data and electrical power directly between the portable computer device and the camera; and wherein the data transmitted directly between the camera and portable computer device correspond to the camera functional parameters causing the camera to be operationally dependent on the portable computer device for directly adjusting all variable functions of the camera. (Appeal Br. 21 (Claims App.).) REJECTIONS2 The Examiner rejected claims 1, 5–8, 10–13, and 17–19 under 35 U.S.C. § 103 as being unpatentable over “6 LED 7mm Lens IP67 1M USB 2 The Examiner objected to Claims 2, 3, 9, 14, and 15 “as being dependent upon a rejected base claim, but would be allowable if rewritten in Appeal 2020-004501 Application 15/455,196 3 Endoscope for Android Smart phone and PC, Tinydeal DV+” (https://www.youtube.com/watch?v=XAWAgtMgU50 (last visited Aug. 24, 2021)) (“Tinydeal”) and Alexander et al. (US 2013/0096382 A1, pub. Apr. 18, 2010 (“Alexander”)). (Final Act. 5–11.) The Examiner rejected claims 4, 16, and 20 under 35 U.S.C. § 103 as being unpatentable over Tinydeal, Alexander, and Official Notice. (Final Act. 11–12.) ISSUES ON APPEAL Appellant’s arguments present the following dispositive issues:3 Issue One: Whether the Examiner erred in finding that the combination of Tinydeal and Alexander taught or suggested the requirement of the independent claims of direct transmission of data and operational dependence between the portable computer device and the camera, including whether the combination of Tinydeal and Alexander would have required undue experimentation by one skilled in the art to successfully practice the invention. (Appeal Br. 12–15, 18–19.) Issue Two: Whether the Examiner erred in finding that the combination of Tinydeal and Alexander taught or suggested the requirement of claim 6 that “the camera includes a releasable coupling member.” (Appeal Br. 15–16.) independent form including all of the limitations of the base claim and any intervening claims.” (Final Act. 12.) 3 Rather than reiterate the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed Jan. 18, 2020); the Final Office Action (mailed Sep. 10, 2019); and the Examiner’s Answer (mailed Mar. 18, 2020) for the respective details. Appeal 2020-004501 Application 15/455,196 4 Issue Three: Whether the Examiner erred in finding that the combination of Tinydeal and Alexander taught or suggested the requirement of claim 7 that “the camera includes a . . . microphone. . . .” (Appeal Br. 16.) Issue Four: Whether the Examiner erred in finding that claims 4, 16, and 20 are unpatentable over the combination of Tinydeal, Alexander, and Official Notice. (Appeal Br. 17.) ANALYSIS Issue One For the independent claim 1 requirement: wherein the data transmitted directly between the camera and portable computer device correspond to the camera functional parameters causing the camera to be operationally dependent on the portable computer device for directly adjusting all variable functions of the camera, and the commensurate requirements of independent claims 12 and 13, the Examiner relies on the fact that the Tinydeal camera receives data and functional parameters directly from the portable computer device via an operational cord, but recognizes that not all of the functional parameters come from the portable computer device — at least the controls for the camera lights come from a separate controller positioned on the cord between the camera and the controller. (Final Act. 7, 10.) The Examiner additionally relies on the disclosure in Alexander of an endoscope connected via a USB port to a computing device, in which the computing device is configured to: turn the endoscopic peripheral 1800 on and off, adjust the light intensity, resolution, video/image characteristics (e.g., compression, format, brightness, contrast, frames, aspect ratio, Appeal 2020-004501 Application 15/455,196 5 etc.), physically angle the camera or lights, adjust or turn on and off different sets of lights, automatically stream content, store content on the endoscopic peripheral 1800, wireless device 1814, or other component. (Final Act. 7–8; Alexander Fig. 18, ¶ 152 (emphasis added).) The Examiner concludes that it would have been obvious: to modify the camera system with mobile phone of Tinydeal DV+ to include the control software of Alexander et al that allows the borescope camera to be controlled via the phone including the functions of turning the endoscopic peripheral 1800 on and off, adjust the light intensity, resolution, video/image characteristics (e.g., compression, format, brightness, contrast, frames, aspect ratio, etc.), physically angle the camera or lights, adjust or turn on and off different sets of lights, automatically stream content, store content on the endoscopic peripheral 1800, wireless device 1814, or other component in order to enable the mobile device to control all the functions of the camera including the lights . . . Therefore, improving the ease of use of the endoscope camera. (Final Act. 8.) Appellant argues that the computer in Tinydeal does not directly provide all of the functional parameters to the camera because the controls for the camera lights come from a separate controller positioned on the cord between the camera and the controller. (Appeal Br. 13–15.) Appellant further argues that the Examiner’s reliance on Alexander is in error, because any modification of Tinydeal in light of Alexander would have required undue experimentation. (Appeal Br. 18.) We are not persuaded by Appellant’s arguments. As the Examiner points out, the argument directed at Tinydeal alone fails to account for the fact that the obviousness rejection is based on the combination of Tinydeal in view of Alexander. (Ans. 10–11.) One cannot show nonobviousness by Appeal 2020-004501 Application 15/455,196 6 attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Furthermore, to the extent that Appellant addresses the Examiner’s reliance on the combination of Tinydeal and Alexander, Appellant provides only conclusory, unpersuasive attorney argument asserting that the combination would have required undue experimentation. (Ans. 13–14.) Accordingly, we sustain the Examiner’s rejection of independent claims 1, 12, and 13 over the combination of Tinydeal and Alexander. We also sustain the Examiner’s rejection of claims 5, 8, 10–11, and 17–19 over the combination of Tinydeal and Alexander, which claims are not argued separately with particularity. (Appeal Br. 16.) Issues Two and Three For the requirement of claim 6, “wherein the camera includes a releasable coupling member configured to selectively retain the camera on an external user location during operation,” the Examiner relies on a detachable hook connection that allows the Tinydeal camera to be selectively retained at a desired location of the user. (Final Act. 8.) For the requirement of claim 7, “wherein the camera includes a . . . microphone. . . .,” the Examiner relies on a microphone included on the Tinydeal controller. (Final Act. 9.) Appellant argues these rejections are in error because neither the detachable hook nor the microphone are part of the camera. (Appeal Br. 15– 16.) The Examiner responds that the detachable hook and microphone can reasonably be considered as part of the camera. (Ans. 11–12.) We agree that the detachable hook, which appears to be an accessory that is attached to Appeal 2020-004501 Application 15/455,196 7 the camera, can be considered part of the camera. However, the microphone is part of the controller, which, as discussed above, the Examiner conceded, in connection with the claim 1 analysis, is not part of the camera. (Final Act. 7; Ans. 10.) Accordingly, we sustain the Examiner’s rejection of claim 6 over the combination of Tinydeal and Alexander, but do not sustain the Examiner’s rejection of claim 7 over the combination of Tinydeal and Alexander. Issue Four The Examiner rejected claims 4, 16, and 20 as obvious over the combination of Tinydeal, Alexander, and Official Notice. (Final Act. 11– 12.) Appellant argues that the Examiner’s use of Official Notice is improper for failing to meet the requirements under MPEP 2144.03, because the Examiner did not sufficiently demonstrate the existence of “a similar camera system which includes audio ON/OFF, three dimensional position, volume, brightness, image capture, and wireless capabilities.” (Appeal Br. 17.) However, we agree with the Examiner that the citation of Alexander provides the required documentary evidence as required by MPEP 2144.03. (Ans. 12–13.) Accordingly, we sustain the Examiner’s rejection of claims 4, 16, and 20 over the combination of Tinydeal, Alexander, and Official Notice. Appeal 2020-004501 Application 15/455,196 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5–8, 10– 13, 17–19 103 Tinydeal, Alexander 1, 5,6,8, 10–13, 17–19 7 4, 16, 20 103 Tinydeal, Alexander, Official Notice 4, 16, 20 Overall Outcome 1, 4–6, 8, 10–13, 16–20 7 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation