OPKIX, INC.

Patent Trials and Appeals Board

Aug 30, 2021

2020004501 (P.T.A.B. Aug. 30, 2021)

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