Tim Goldburt et al.

Patent Trials and Appeals Board

Jan 27, 2022

2022000155 (P.T.A.B. Jan. 27, 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. 16/939,724 07/27/2020 Tim Goldburt 2140 169490 7590 01/27/2022 Matt Sandy PO Box 519 Elmsford, NY 10523 EXAMINER GARFT, CHRISTOPHER ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 01/27/2022 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 2022-000155 Application 16/939,724 Technology Center 3600 ____________ Before DANIEL S. SONG, STEFAN STAICOVICI, and LISA M. GUIJT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Jan. 12, 2021, hereinafter “Final Act.”) rejecting claims 1, 3-6, and 22-25. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The inventors, Tim Goldburt and Matt Sandy, are identified as the real party in interest in Appellant’s Appeal Brief (filed Apr. 9, 2021, hereinafter “Appeal Br.”). Appeal Br. 2. Appeal 2022-000155 Application 16/939,724 2 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to a device for supporting a smartphone having a video camera and for adjusting its orientation, panning movement, rolling movement, and pitching movement in order to achieve smooth shooting at multiple angles. Spec. 1, ll. 2-5. Claims 1, 3, and 25 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A device for supporting a smartphone having a video camera for recording a video or supporting an action video camera for recording a video, comprising a gimbal that stabilizes a video recording by the smartphone video camera or by the action video camera; a grip connected to the gimbal and securing the smartphone having the video camera or the action video camera; a holder connected to the gimbal and controllable by a user and also provided with a speaker; a power button provided in the holder and operative for powering on or off the movement of the gimbal and thereby the movement of the grip; components provided in the holder allowing to receive in the device audio signals from an outside audio source, in order to reproduce these audio signals in the vicinity of the holder and the grip of the device so that during video recording with the supported smartphone video camera or the action video camera, the video recording can include the reproduced audio signals from the device; and an audio signal powering up and a volume adjustment up button for powering on the audio signals reproduced in the speaker and for adjusting the volume of the received audio Appeal 2022-000155 Application 16/939,724 3 signals up, independently from powering up the movement of the gimbal and thereby the movement of the grip. Appeal Br. 21 (Claims App.). REJECTIONS I. The Examiner rejects claims 5 and 23 under 35 U.S.C. § 112(b) as being indefinite. II. The Examiner rejects claims 1, 3, 4, 6, 22, and 24 under 35 U.S.C. § 103 as being unpatentable over Appellant’s Admitted Prior Art (hereinafter “AAPA”),2 Pestl,3 and Hale.4 III. The Examiner rejects claims 5 and 23 under 35 U.S.C. § 103 as being unpatentable over AAPA, Pestl, Hale, and Bo.5 IV. The Examiner rejects claim 25 under 35 U.S.C. § 103 as being unpatentable over AAPA, Pestl, and Akaike.6 ANALYSIS Rejection I Appellant does not make any arguments (see Appeal Br. 9-10) and thus has waived any argument of error. See Appeal Br. 7 (“[I]f Honorable Members of the Patent Trials and Appeals Board agree with the Examiner on this issue, the Appellants will cancel claims 5 and 23.”). As such, we summarily sustain the Examiner’s rejection of claims 5 and 23 as indefinite. 2 Figure 1 of Appellant’s Drawings. 3 Pestl et al., US 2020/0333934 Al, published Oct. 22, 2020. 4 Hale, US 4,713,801, issued Dec. 15, 1987. 5 Bo, US 8,571,613 Bl, issued Oct. 29, 2013. 6 Akaike et al., US 2020/0120410 Al, published Apr. 16, 2020. Appeal 2022-000155 Application 16/939,724 4 See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal Rejection II The Examiner finds that AAPA discloses a device for supporting a smartphone having a video camera including, inter alia, gimbal 80, grip 3, holder 2, and power button 9 for powering on/off movement of gimbal 80. Final Act. 7-8 (citing Appellant’s Figure 1). The Examiner further finds that Pestl discloses a video recording device (“selfie mirror speaker”)7 including, inter alia, video camera 105, control buttons 106, and holder 103 housing speaker 201 “to capture, broadcast and record still photos, audio and video of the user” and “to receive in the device audio signals from an outside audio source.” Id. at 9 (citing Pestl, para. 6, Figs. 1, 2). The Examiner also finds that Hale discloses a radio-tape recorder including various controls, such as, “audio powering up and . . . volume adjustment up button [14] . . . for powering on the audio signals reproduced in the speaker for adjusting the volume of the received audio signals up.” Id. at 10 (citing Hale, col. 3, ll. 31-39, Fig. 1). As such, in a first instance, the Examiner concludes that it would have been obvious for a skilled artisan “to modify AAPA to include the speaker system of Pestl . . . [to] enable[] the user to capture, broadcast, and record still photos, audio and video of a user,” and, thus, “enhance the user’s production quality since music or other sounds could be added to videos in 7 Nomenclature refers to Pestl, para. 6. Appeal 2022-000155 Application 16/939,724 5 real time.” Id. at 9-10 (citing Pestl, para. 6). In a second instance, the Examiner determines that it would have been obvious to a person of ordinary skill in the art “to modify the controls of [AAPA, as modified by] Pestl[,] to have the power and volume controls combined as disclosed by Hale since Hale states that such a modification is conventional and well- known in the art,” and, thus, “would simplify the controls and reduce the number of needed buttons which would reduce overcrowding the device with controls.” Id. at 11 (citing Hale, col. 3, ll. 331-39). Appellant argues that the Examiner’s rejection is based on impermissible hindsight because “there is no reason or suggestion in the prior art for selecting the procedure used in claims 1 and 3, other than the knowledge learned from the applicant’s disclosure.” Appeal Br. 18. In particular, Appellant contends that because “[n]owhere does Pestl hint of integrating the audio from the speaker into the video recording,” a skilled artisan would not make the AAPA and Pestl combination to “record video and audio together.” Id. at 14. The Examiner responds that the “motivation for combining the cited references has been taken from the prior art teaching themselves.” Examiner’s Answer (dated July 1, 2021, hereinafter “Ans.”) 17. In particular, the Examiner notes that the rejection “has not relied upon any disclosure by the Appellant but has cited specific motivations found in the prior art references.” Id. at 25. Paragraph 5 of Pestl discloses a device including, inter alia, “a module capable of capturing, broadcasting, and recording still photos, audio, and video of a user,” which “may pair with at least one Bluetooth® enabled device or MP3 player.” We, thus, agree with the Examiner’s findings that Appeal 2022-000155 Application 16/939,724 6 “Pestl explicitly discloses [that] the module (camera) captures, broadcasts and records audio and video of a user and that the speaker may pair with a Bluetooth enabled device or MP3 player.” Ans. 21. We appreciate the Examiner’s position that “Pestl may not explicitly state that audio is recorded while [video] recording the user.” Id. However, the lack of an express disclosure of a particular claim element does not defeat a rejection under 35 U.S.C. § 103(a), and such a requirement would essentially defeat the purpose of 35 U.S.C. § 103(a). We must attribute skill to the hypothetical person described in 35 U.S.C. § 103(a). In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Here, because Pestl’s device is capable of recording both video and audio of the user, when paired with an external audio source (i.e., Bluetooth, MP3 player), a skilled artisan would readily recognize that Pestl’s device records video and audio of the user, and, in addition, is capable of recording the audio played by the external source on speaker 201. Thus, we agree with the Examiner that a skilled artisan would recognize that “the Pestl device has the capability of integrating audio from the speaker into [a] video recording by merely having the speaker [201] play audio while the camera is recording audio and video of the user.” Ans. 21. Moreover, the Examiner is correct that “the limitations dealing with functions of the smartphone are intended use limitations since they do explicitly limit the gimbal device itself.” Id. Appellant does not provide persuasive reasoning that the device of AAPA, as modified by Pestl, would not be capable of performing the intended use or function of the claimed device for supporting a smartphone to record video and audio signals reproduced from an outside, external source. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (once the Examiner finds that the prior art Appeal 2022-000155 Application 16/939,724 7 structure would be capable of performing all of the functions claimed, the burden shifts to the applicant to show that this is not the case). As such, we are not persuaded by Appellant’s argument that the Examiner’s determination of obviousness of the AAPA and Pestl combination is based on impermissible hindsight reconstruction, but rather is based on the disclosure of Pestl. In particular, the Examiner’s modification is an improvement to the device of AAPA to include Pestl’s module to integrate audio signals from an external source into a video recording in the same way to lead to a predictable result, and the modification is well within the skill of a person having ordinary skill in this art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Appellant has not persuasively explained why the findings and reasoning of the Examiner are in error. We are also not persuaded by Appellant’s argument that “there would be no suggestion or hint in Hale to motivate a person of ordinary skill to add a button for movement of the gimbal and the grip independently from the powering on/off and volume controls of the audio signals.” Appeal Br. 15 (emphasis added). Such an argument appears to be holding the Examiner to the old teaching, suggestion, or motivation (“TSM”) standard where there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; such a standard is not required. KSR, 550 U.S. at 415 (“We begin by rejecting the rigid Appeal 2022-000155 Application 16/939,724 8 [application and requirement of a TSM to combine known elements in order to show obviousness]”). The proper inquiry is whether the Examiner has articulated sufficient reasoning based on a rational underpinning to explain why a person of ordinary skill in the art would have combined the teachings of AAPA, as modified by Pestl, and Hale. See KSR, 550 U.S. at 418 (stating that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). In this case, we agree with the Examiner that in light of the AAPA disclosure of gimbal power button 9 and Hale’s disclosure of a separate audio power and volume button 14, it would have been obvious for a skilled artisan to incorporate Hale’s button 14 into the device of AAPA, as modified by Pestl, to provide control of the audio power and volume, which is separate and independent from that of the gimbal. Ans. 22 (citing AAPA, Fig. 1; Hale, col. 3, ll. 31-39, Fig. 1). Moreover, combining the audio power on/off feature with the audio volume feature into one button, as per Hale, in the device of AAPA, as modified by Pestl, would also have been obvious to a skilled artisan in order to reduce the number of buttons. See Final Act. 11. Appellant has not persuasively explained why the findings and reasoning of the Examiner are in error. Appellant further argues that that Pestl is non-analogous art. See Appeal Br. 13. According to Appellant, “Pestl relates to a different field of invention and solves a different problem.” Id. In particular, Appellant contends that “[t]he Pestl reference does not relate to the same problem as the applicant’s invention.” Id. Appeal 2022-000155 Application 16/939,724 9 Criteria for determining whether prior art is analogous may be summarized as ‘(1) whether the art is form the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.’ Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). In this case, we agree with the Examiner that Appellant’s invention and Pestl address the common problem of receiving in a device, audio signals from an external source, reproducing the audio signals in the vicinity of the device, and including the reproduced audio signals in a video recording. Compare Spec. 3 with, Pestl, para. 6; see also Ans. 20. Thus, the Examiner correctly found that Pestl is analogous art, and properly considered its teachings in determining that the subject matter of independent claims 1 and 3 would have been obvious to a skilled artisan. Furthermore, we are not persuaded by Appellant’s arguments regarding the use of “common sense” (see Appeal Br. 11) because the Examiner’s rejection is not based on “common sense,” but rather on the combination of teachings of AAPA, Pestl, and Hale. See Ans. 18 (“[N]either common knowledge no[r] common sense were relied upon for the purpose of [the] rejection.”). Lastly, with respect to Appellant’s argument regarding “picking and choosing” features from Hale to combine with the teachings of AAPA and Pestl (see Appeal Br. 15), we note that the Supreme Court, in KSR, has provided guidance when addressing a concern about picking and choosing. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in Appeal 2022-000155 Application 16/939,724 10 their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152- 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 415-16. For these reasons, Appellant’s argument is not persuasive. Accordingly, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103 of independent claims 1 and 3 as unpatentable over AAPA, Pestl, and Hale. As to dependent claims 4, 6, 22, and 24, Appellant relies on the arguments discussed supra in the rejection of independent claims 1 and 3. See Appeal Br. 19 (“As for the dependent claims, these claims . . . should be allowed for the same reasons as the independent claims.”). Therefore, for the reasons discussed above, we also sustain the rejection of claims 4, 6, 22, and 24 over the combined teachings of AAPA, Pestl, and Hale. Rejections III and IV Appellant relies on the same arguments discussed supra. See Appeal Br. 9 (“These claims [5 and 23] . . . should be allowed for the same reasons as the[] independent claims.”), 18 (“The same above-presented arguments are fully applicable for the Examiner’s rejection based on combination of AAPA, Pestl and Akaike references applied against independent claim 25.”). Therefore, for the same reasons discussed above, we also sustain the Appeal 2022-000155 Application 16/939,724 11 rejections under 35 U.S.C. § 103 of claims 5 and 23 as unpatentable over AAPA, Pestl, Hale, and Bo and of claims 25 as unpatentable over AAPA, Pestl, and Akaike. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5, 23 112(b) Indefiniteness 5, 23 1, 3, 4, 6, 22, 24 103 AAPA, Pestl, Hale 1, 3, 4, 6, 22, 24 5, 23 103 AAPA, Pestl, Hale, Bo 5, 23 25 103 AAPA, Pestl, Akaike 25 Overall Outcome 1, 3-6, 22-25 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED