Tim Goldburt et al.

Patent Trials and Appeals Board

Jan 20, 2022

2021005055 (P.T.A.B. Jan. 20, 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. 16/726,236 12/23/2019 Tim Goldburt 9056 169490 7590 01/20/2022 Matt Sandy PO Box 519 Elmsford, NY 10523 EXAMINER TEJANO, DWIGHT ALEX C ART UNIT PAPER NUMBER 2698 MAIL DATE DELIVERY MODE 01/20/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte TIM GOLDBURT and MATT SANDY _______________ Appeal 2021-005055 Application 16/726,236 Technology Center 2600 _______________ Before CAROLYN D. THOMAS, HUNG H. BUI, and ADAM J. PYONIN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner’s non-final rejection of claims 1-3, 5, 6, and 8-26, all the pending claims. Appeal Br. 25-36 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.2 1 Appellant refers to “applicant(s)” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Tim Goldburt and Matt Sandy. Appeal Br. 3. 2 Our Decision refers to Appellant’s Appeal Brief filed September 21, 2020 (“Appeal Br.”); Examiner’s Answer mailed November 18, 2020 (“Ans.”); Non-Final Office Action mailed September 2, 2020 (“Non-Final Act.”); and original Specification filed December 23, 2019 (“Spec.”). Appeal 2021-005055 Application 16/726,236 2 STATEMENT OF THE CASE Known support devices (e.g., a multi-functional accessory), shown in Figure 1, for supporting a portable device such as a smartphone having a camera are designed to ensure stability and smooth photography at multiple angles. Spec. 2:11-15. According to Appellant, these known devices “do not [] have capabilities for receiving audio signals from audio sources and reproducing them in the vicinity of the device and therefore in the vicinity of a supported smartphone with a camera or a supported camera before, during or after recording by a supported camera.” Spec. 1:17-21. Known Device Appellant’s Device Appeal 2021-005055 Application 16/726,236 3 Appellant’s invention is directed to a support device, shown in Figure 1A, where an upper area 14 of handle 2 is provided to accommodate additional built-in components, such as flexible PCB 22, AM receiver 23, FM receiver 24, AM transmitter 25, FM transmitter 26, and speaker 27, shown in Figure 1B, or collectively, what Appellant broadly describes as means 15 so as to receive audio and video signals from a signal source via the receivers 23 and 24, transmit the received audio and/or video signals in the vicinity of handle 2 of the supporting device 1 via the transmitters 25 and 26, and reproduce the audio signals via the speaker 27. Spec. 12:2-7, 12:16-19, 12:26-13:4. As shown in Appellant’s Figure 1A, the support device 1a provided with (1) ON/OFF power button 9 for turning the operation of the device 1a on or off, (2) joystick button 10 for controlling the movement of the smartphone camera, (3) orientable button 11 for orienting the smartphone with the camera, (4) mode button 12 for operating corresponding modes, (5) recording button for video and photo recording, (6) screen display 16 for showing wavelengths of the radio and/or video signals, (2) adjusting buttons 17 and 18 for adjusting a volume of received radio signals up and down correspondingly, (3) knob 19 for switching between AM radio waves and FM radio waves, (4) knob 20 for dialing a corresponding wavelength within an AM and FM ranges, (5) knob 21 for adjusting a volume of a speaker which generates corresponding audio signals. Spec. 7:13-25, 12:8-14. This way, “audio signals from audio sources” can be reproduced “in the vicinity of the handle [2, Figure 1A] and also in the vicinity of a supported smartphone with a camera or of supported cameras before, during or after recording by the camera.” Spec. 3:16-24. Appeal 2021-005055 Application 16/726,236 4 Claims 1, 21, 23, and 25 are independent. Claim 1 is representative, as reproduced below with disputed limitations emphasized and part underlined: 1. A device for supporting a smartphone having a camera or supporting an action camera, comprising: a holder supporting the smartphone having the camera that provides for shooting and recording video or supporting the action camera that provides for shooting and recording video; a handle configured to be held by a user and connected with said holder; and means provided in the handle for receiving audio signals from an audio signal source and reproducing the received audio signals in the vicinity of the handle during recording by the camera, so that the video recording and the receiving of the audio signals are actuated at the same time, and therefore the video recorded by the camera includes the received audio signals. Appeal Br. 25 (Claims App.). REJECTIONS AND REFERENCES (1) Claims 1-3, 5, 6, 8-20, 22, and 24 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Non-Final Act. 3-5. (2) Claim 9 stands rejected under 35 U.S.C. § 112(b) as being indefinite. Non-Final Act. 5. (3) Claims 1, 20, 22, and 25 stand rejected under 35 U.S.C. § 103 as obvious over Fernandez (US 9,851,625 B1; issued Dec. 26, 2017). Non- Final Act. 5-8. (4) Claims 2, 3, 13-16, 18, 19, and 24 stand rejected under 35 U.S.C. § 103 as obvious over Fernandez and Casarez et al. (US Appeal 2021-005055 Application 16/726,236 5 2017/0192341 A1; published July 6, 2017; “Casarez”). Non-Final Act. 8- 14. (5) Claims 6 and 10 stand rejected under 35 U.S.C. § 103 as obvious over Fernandez and Li (US 2008/0118089 A1; published May 22, 2008). Non-Final Act. 14-16. (6) Claim 5 stands rejected under 35 U.S.C. § 103 as obvious over Fernandez, Li, and Paradice, III (US 2005/028600 A1; issued Dec. 22, 2005). Non-Final Act. 16-17. (7) Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as obvious over Fernandez, Li, and Casarez. Non-Final Act. 17-18. (8) Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as obvious over Fernandez and Liang (US 2018/0212211 Al; published July 26, 2018). Non-Final Act. 18. (9) Claims 17 and 21 stand rejected under 35 U.S.C. § 103 as obvious over Fernandez and Tyner (US 2009/0003822 Al; published Jan. 1, 2009). Non-Final Act. 19-20. (10) Claim 23 stands rejected under 35 U.S.C. § 103 as obvious over Fernandez, Casarez, Tyner, and Liang. Non-Final Act. 20-21. (11) Claim 26 stands rejected under 35 U.S.C. § 103 as obvious over Fernandez and Paradice, III. Non-Final Act. 22. Appeal 2021-005055 Application 16/726,236 6 ANALYSIS 35 U.S.C. § 112(b): Indefiniteness At the outset, we note Appellant does not address the rejection of claim 9 under 35 U.S.C. § 112(b) as being indefinite and does not provide any argument regarding claim 9 as lacking antecedent basis for “claim 7.” Non-Final Act. 5. As such, the non-final rejection of claim 9 is summarily affirmed. 35 U.S.C. § 112(a): Written Description Claim 1 recites, inter alia: means provided in the handle for receiving audio signals from an audio signal source and reproducing the received audio signals in the vicinity of the handle during recording by the camera, so that the video recording and the receiving of the audio signals are actuated at the same time, and therefore the video recorded by the camera includes the received audio signals. Appeal Br. 25 (Claims App.) (emphasis added). In support of the lack of “written description” rejection of claims 1-3, 5, 6, 8-20, 22, and 24, the Examiner finds “the specification does not disclose operating the system such that the video recording and audio reception is activated at the same time upon a single actuation.” Non-Final Act. 4 (emphasis added). Appellant contends (1) “Claim 1 currently on file definitely defines all the structural features of the device in the ‘structural language’ as intended” and (2) the limitation in question “so that the video recording and the receiving of the audio signals are actuated at the same time” constitutes “a functional (not structural) language or an advantageous result of the Appeal 2021-005055 Application 16/726,236 7 structural features.” Appeal Br. 8. According to Appellant, “this language in the appellant’s opinion does not necessarily have to be present in the original specification” because “it simply specifies an advantage of the operation of the device of the invention, not its structural elements.” Id. at 9. We do not agree with Appellant. The “written description” requirement under 35 U.S.C. § 112(a) is a question of fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985). To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. However, “the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). In some cases, “drawings alone may provide a ‘written description’ of an invention as required by § 112.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). However, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. Id. at 1563-1564. Here, Appellant’s Figure 1A shows support device 1a provided with (1) screen display 16 for showing wavelengths of the radio and/or video signals, (2) adjusting buttons 17 and 18 for adjusting a volume of received radio signals up and down correspondingly, (3) knob 19 for switching between AM radio waves and FM radio waves, (4) knob 20 for dialing a Appeal 2021-005055 Application 16/726,236 8 corresponding wavelength within an AM and FM ranges, (5) knob 21 for adjusting a volume of a speaker which generates corresponding audio signals. Spec. 12:8-14. Appellant does not show or describe any mechanism or component within the support device 1a, shown in Figures 1A-16, that operates the support device 1a such that (1) the video recording and (2) the audio reception are activated at the same time upon a single actuation in the manner recited in Appellant’s claims 1-3, 5, 6, 8-20, 22, and 24. Because Appellant has not reasonably conveyed to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date, we sustain the Examiner’s rejection of claims 1-3, 5, 6, 8-20, 22, and 24 under 35 U.S.C. § 112(a) for failure to comply with the “written description” requirement.3 § 103(a) Obviousness Rejection of Claims 1, 20, 22, and 25 based on Fernandez In support of the obviousness rejection of independent claim 1, the Examiner finds Fernandez teaches a support device (i.e., a multi-functional accessory for a smartphone), shown in Figures 1, 2, 6, 9, equipped with the 3 In the event of further prosecution, the Examiner is invited to consider rejecting claims 1-3, 5, 6, 8-20, 22, and 24 under 35 U.S.C. § 112(a) for failure to comply with the “enablement” requirement because Appellant’s Specification also does not adequately teach how to make and how to use a claimed invention throughout its scope, without undue experimentation. Plant Genetic Sys. N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003). The specification must teach those of skill in the art “how to make and how to use the invention as broadly as it is claimed.” In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991). Appeal 2021-005055 Application 16/726,236 9 claimed components, including (1) holder 12 supporting the smartphone having the camera that provides for shooting and recording video; (2) handle (telescopic support pole) 14 configured to be held by a user and connected with the holder 12; and (3) means provided in the handle for receiving audio signals from an audio signal and reproducing the received audio signals in the vicinity of the handle during recording by the camera in the context of Appellant’s speaker 42 located on telescopic support pole 14. Non-Final Act. 5-6 (citing Fernandez 6:60-65, 8:27-35, 9:41-43, Figures 1, 6, 9). Fernandez’s Figures 1 and 2 are reproduced below: Fernandez’s Figures 1 and 2 show support device 10 (i.e., a multi-functional accessory for a smartphone), equipped with (1) holder 12 supporting a smartphone; (2) handle (telescopic support pole) 14 configured to be held by Appeal 2021-005055 Application 16/726,236 10 a user and connected with the holder 12; and (3) speaker 42 built-in handle 14 to playback audio signals. Fernandez 6:60-65, 8:27-35, 9:41-43. The Examiner also finds Fernandez teaches the use of a Bluetooth connection “to playback the audio signals[,] via the speakers 42 [shown in Figure 9].” Id. at 6 (citing Fernandez 8:38-43). Based on Fernandez’s teachings, the Examiner concludes “[i]t is obvious to one of ordinary skill . . . to turn on the Bluetooth audio and the video capture at the same [time].” Id. Appellant contends Fernandez’s speaker 42, shown in Figure 9, only “communicates with the portable electronic device such that audio signals transmitted from the portable electronic device are emanated from the speaker.” Appeal Br. 11 (citing Fernandez 7:14, 8:33-35). Because Fernandez’s speaker 42 only “communicates with the portable electronic device” Appellant argues Fernandez’ speaker 42 (1) “does not receive audio signals from an audio source which is not a portable electronic device, to combine these signals received from an audio source which is not the portable electronic device producing a video, with the video produced by the portable electronic” and, as such, (2) “never combines the audio signals . . . with the video produced by the portable electronic device.” Id. at 11-12. According to Appellant, Fernandez has absolutely nothing to do with the appellants’ device and is contrary to the appellants’ invention . . . the audio signals received from this totally different audio signal source and not from a portable electronic device producing a video as in Fernandez reference. Id. at 12 (underlining omitted). Appeal 2021-005055 Application 16/726,236 11 Appellant’s contentions are not persuasive of Examiner error. Instead, we find the Examiner’s findings, including the Examiner’s responses to Appellant’s contentions, are supported by a preponderance of the evidence on this record. Ans. 3-7. As such, we adopt the Examiner’s findings provided therein. Id. For additional emphasis, we note Appellant’s arguments are not commensurate with the scope of the claims and, for that reason, do not demonstrate error in the Examiner’s rejection of claim 1 as well as claims 20, 22, and 25. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Claim terms, during examination, are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Here, the term “audio signal source” is not defined by Appellant’s Specification. As correctly recognized by the Examiner, the limitation “‘audio signals from an audio signal source’ . . . does not require that the audio signal source must necessarily be different from the electronic device.” Ans. 5. Instead, the term “audio signal source” can be broadly, but reasonably, interpreted to encompass any source of audio signals including Fernandez’s electronic device or smartphone. Id. Appeal 2021-005055 Application 16/726,236 12 For these reasons, Appellant does not persuade us of Examiner error.4 Accordingly, we sustain the Examiner’s rejection of claims 1, 20, 22, and 25, which are not argued separately. For the same reasons, we also sustain the Examiner’s rejection of (1) claims 2, 3, 13-16, 18, 19, and 24 as obvious over Fernandez and Casarez; (2) claims 6 and 10 as obvious over Fernandez and Li; (3) claim 5 as obvious over Fernandez, Li, and Paradice, III; (4) claims 8 and 9 as obvious over Fernandez, Li, and Casarez; (5) claims 11 and 12 as obvious over Fernandez and Liang; (6) claims 17 and 21 as obvious over Fernandez and Tyner; (7) claim 23 as obvious over Fernandez, Casarez, Tyner, and Liang; and (8) claim 26 as obvious over Fernandez and Paradice III, which are not argued separately. CONCLUSION On this record, Appellant does not demonstrate the Examiner errs in rejecting (1) claims 1-3, 5, 6, 8-20, 22, and 24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement; (2) claim 9 under 35 U.S.C. § 112(b) as being indefinite; (3) claims 1, 20, 22, and 25 under 35 U.S.C. § 103 as obvious over Fernandez; (4) claims 2, 3, 13-16, 18, 19, 4 In the event of further prosecution, Appellant may wish to contact the USPTO Pro Se Assistance Program at (https://www.uspto.gov/patents/basics/using-legal-services/pro-se- assistance-program). The program aims to assist pro se applicants with making informed decisions regarding their patent applications, and one-on- one assistance is available by appointment. The program may be reached at the following email: innovationdevelopment@uspto.gov; toll free phone number: 1-866-767-3848; post mail: Pro Se Assistance, Mail Stop 24, P.O. Box 1450, Alexandria, Virginia 22313-1450. Appeal 2021-005055 Application 16/726,236 13 and 24 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez and Casarez; (5) claims 6 and 10 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez and Li; (6) claim 5 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez, Li, and Paradice, III; (7) claims 8 and 9 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez, Li, and Casarez; (8) claims 11 and 12 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez and Liang; (9) claims 17 and 21 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez and Tyner; (10) claim 23 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez, Casarez, Tyner, and Liang; and (11) claim 26 under 35 U.S.C. § 103 as obvious over the combined teachings of Fernandez and Paradice, III. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5, 6, 8-20, 22, 24 112(a) Written Description 1-3, 5, 6, 8-20, 22, 24 9 112(b) Indefiniteness 9 1, 20, 22, 25 103 Fernandez 1, 20, 22, 25 2, 3, 13- 16, 18, 19, 24 103 Fernandez, Casarez 2, 3, 13- 16, 18, 19, 24 6, 10 103 Fernandez, Li 6, 10 Appeal 2021-005055 Application 16/726,236 14 5 103 Fernandez, Li, Paradice, III 5 8, 9 103 Fernandez, Li, Casarez 8, 9 11, 12 103 Fernandez, Liang 11, 12 17, 21 Fernandez, Tyner 17, 21 21 103 Fernandez 21 23 103 Fernandez, Casarez, Tyner, Liang 23 26 103 Fernandez, Paradice, III 26 Overall Outcome: 1-3, 5, 6, 8-26 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED