Yehuda Binder

Patent Trials and Appeals Board

Sep 25, 2019

13903569 - (D) (P.T.A.B. Sep. 25, 2019)

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.
13/903,569 05/28/2013 Yehuda BINDER BINDER-006-US6 5116
131926 7590 09/25/2019
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
BUKOWSKI, KENNETH
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
09/25/2019 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 YEHUDA BINDER

Appeal 2017-010995
Application 13/903,569
Technology Center 2600
____________

Before JEFFREY S. SMITH, JOSEPH P. LENTIVECH, and
SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 6, 7, 11–282, 30–42, and 45–53.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.3

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 May
Patents Ltd. Appeal Brief filed February 13, 2017 (“Appeal Br.”) 2.
2 While Claim 29 is shown in the Claims Appendix (Appeal Br. 47), neither
Appellant nor Examiner discusses the patentability of this claim and claim
29 appears to have been cancelled. See Amendment filed July 11, 2016, 7.
3 In addition to the Appeal Brief, this Decision refers to the Examiner’s Final
Office Action mailed Dec. 9, 2016 (“Final Action”); the Examiner’s Answer
mailed June 28, 2017 (“Answer”); and the original Specification filed May
28, 2013 (“Spec.”).
Appeal 2017-010995
Application 13/903,569

2

STATEMENT OF THE CASE
Appellant’s disclosure relates to the use of face or hand gesture
detection from a captured image, which is used to generate a control signal.
The control signal is provided to a device and a display on the device
displays information in response to the control signal. Spec., 4:19–9:27,
Abstract.
Claim 1 is independent. Claim 1, reproduced below with certain
limitations italicized for emphasis, is illustrative of the subject matter on
appeal:
1. A television set responsive to an element in an image,
the television set comprising:
a flat screen for displaying television channels;
a digital camera for capturing an image, said digital
camera having an output port, and being operative to transmit a
digital data form of the captured image via said output port, said
digital camera being fixed in position relative to said screen to be
movable in unison with said screen and being oriented to capture
an image of a scene substantially in front of the screen;
an image processor coupled to receive the image in the
digital data from said digital camera and for applying an
algorithm to detect the element in the captured image;
an antenna for over-the-air radio-frequency
communication;
a wireless transceiver coupled between said digital
camera output port and said antenna for transmitting the digital
data form of the captured image over the air; and
a single enclosure housing said flat screen, said digital
camera, said image processor, said antenna and said wireless
transceiver,
wherein information is displayed on said flat screen in
response to the detection of the element in the captured image.
Appeal 2017-010995
Application 13/903,569

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Appeal Br. 43 (Claims Appendix).
References and Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Wilson et al. US 2004/0189720 A1 Sept. 30, 2004
(“Wilson”)

Kato et al. US 2005/0084141 A1 Apr. 21, 2005
(“Kato”)

Gutta et al. US 6,931,596 B2 Aug. 16, 2005
(“Gutta”)

Trovato US 2006/0071135 A1 Apr. 6, 2006

Xu et al. US 2007/0126884 Al June 7, 2007
(“Xu”)

Kitaura US 2007/0132725 A1 June 14, 2007

Binder et al. US 2007/0173202 A1 July 26, 2007
(“Binder”)

Pamela Njissang, “WirelessHD® Next Generation Standard Now
Supports 3DTV, HDCP 2.0, Data Applications and Data Rates in Excess of
10 Gbps,” dated January 5, 2010. (“Njissang”)

The Examiner also relies upon Appellant’s Admitted Prior Art
(AAPA), appearing in the Specification at paragraphs 109–118 of the Patent
Application Publication (US 2013/0258113; A1 published Oct. 3, 2013) of
the present application, corresponding to page 16, line 22 through page 20,
line 30 of the Specification as filed.
Appeal 2017-010995
Application 13/903,569

4

Claims 1–3, 6, 12–15, 31–33, 37–42, and 48–53 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Trovato, Gutta,
AAPA, and Wilson. Final Act. 19–23.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Trovato, Gutta, AAPA, Wilson, and Kato. Final Act. 24.
Claims 11 and 36 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Trovato, Gutta, AAPA, Wilson, and Xu. Final Act.
24–25.
Claims 16, 17, 34, 35, and 45–47 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Trovato, Gutta, AAPA,
Wilson, and Kitaura. Final Act. 25–26.
Claims 18–28 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Trovato, Gutta, AAPA, Wilson, and Binder. Final
Act. 26–28.
Claim 30 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Trovato, Gutta, AAPA, Wilson, Binder, and Njissang.
Final Act. 29.
Claims 1 and 53 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Kitaura and AAPA. Final Act. 29–30.

ANALYSIS
Argument regarding combination of AAPA with Trovato and Gutta
In the rejection of claim 1, the Examiner finds that Trovato and Gutta,
in combination, teach or suggest the television set of claim 1, including a
screen for display, a digital camera having an output port and oriented to
capture an image of a scene substantially in front of the screen (e.g., of a
Appeal 2017-010995
Application 13/903,569

5

viewer), an image processor coupled to receive that image and for applying
an algorithm to detect an element in the captured image. Final Action 19–
20. The Examiner finds that the AAPA teaches claim limitations including
the limitations directed to “an antenna for over-the-air . . . communication”,
and “a wireless transceiver coupled between [the] digital camera output port
and [the] antenna.” Id. at 20. The Examiner finds that one of ordinary skill
would have been motivated to combine the AAPA with the teachings of
Trovato and Gutta “to allow for the predictable result of communication of
detected images of a network medium with increased image enhancements,
further ensuring the operation of the display control system.” Id. The
Examiner explains that the combination of “Trovato/Gutta . . . requires data
transmission over some type of communication medium in order to
communicate the camera image to the system” and that this is taught in the
AAPA. Id. at 7. The Examiner further reasons that “the Trovato reference
. . . requires that the device components be in communication with each
other to carry out the object of the invention” and that the AAPA provides
the necessary components to ensure that such communication takes place.
Id. at 5–6.
Appellant argues that no motivation to combine is presented for this
combination, and that the combination is based on impermissible hindsight.
Appeal Br. 11–12. Appellant further argues that since in Trovato and Gutta
the camera and flat screen are located together, in one enclosure, there is no
need for any additional communication interface to the digital camera to
communication to an entity outside the “closed loop control system.” Id. at
13, 15. Appellant argues that the rationale for combining is conclusory. Id.
at 16–17.
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Application 13/903,569

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We agree with the Appellant that the motivation for the combination
is insufficient. The Specification includes a description (not marked as prior
art) of a camera 16 which is connected to a control box 11 by a cable 26 for
transmission of captured images. Fig. 6; Spec. 16:10–21. The Specification
then describes, in the section the Examiner uses as AAPA, a prior art camera
which could be used, including a transceiver 75, and specifying that the
cable 26 could be a wired or non-wired medium. Id. at 17:20–24.
The Examiner’s motivation for combining the wireless teachings of
the AAPA with the teachings of Trovato and Gutta, however, is “to allow for
the predictable result of communication of detected images of a network
medium with increased image enhancements.” Final Action 20. We see no
indication in the AAPA that increased image enhancements are provided by
wireless communication, of indeed of any image enhancements or
differences between image enhancements. The Examiner cites a portion of
the Specification. Answer 6, 8 (each citing “[0111]” of the published
application, appearing at 16:22–23 of the Spec. as filed). That portion of the
Specification describes the sensor of the camera. However, neither that
paragraph, nor any other in the AAPA, describe image enhancements. Also,
the AAPA does not describe a benefit for the sensor or overall device
attributed to the use of wireless communications. Spec. 16:22–20:30.
Additionally, as Appellant argues, the Trovato and Gutta references disclose
a single enclosure for the camera and the image processor, and the Examiner
has not sufficiently indicated why, in such a case, one of ordinary skill
would have used an antenna and a wireless transceiver for communication
between these elements. See Appeal Br. 13–14.
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Application 13/903,569

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Thus, we do not sustain the rejections of claim 1, or claims 2, 3, 6,
12–15, 31–33, 37–42, and 48–53, which depend from claim 1, and were
rejected based on the rejection of claim 1. The Examiner does not find that
any of the secondary references cure this deficiency, and we, therefore, also
do not sustain the rejections of claims 7, 11, 16–28, 30, 34–36, and 45–47.
Argument regarding combination of AAPA with Kitaura
In the rejection of claim 1 over Kitaura and AAPA, the Examiner uses
the same elements of the prior art and the same motivation to combine.
Final Action 29–30. Appellant argues that “[n]either the content of the
AAPA, nor the disclosure of Kit[au]ra provide a motivation or suggestion
for the combination on which the rejection is based” and the motivation
provided amounts to impermissible hindsight and is conclusory. Appeal Br.
36, 38–39. Appellant argues that while the Examiner finds that one of
ordinary skill would have been motivated to combine the prior art to “ensure
the operation of the display control system” there is no indication that a
deficiency exists to be remedied in the display control system of Kitaura. Id.
38–39.
As before, the Examiner’s recited motivation to combine is not found
in the AAPA, and for the same reasons discussed above, we do not sustain
the rejection of claims 1 or 53 over the combination of Kitaura and AAPA.

DECISION
We reverse the Examiner’s rejection of claims 1–3, 6, 7, 11–28, 30–
42, and 45–53 under 35 U.S.C. § 103.
In summary:
Appeal 2017-010995
Application 13/903,569

8

Claims
Rejected
Basis Affirmed Reversed
1–3, 6, 12–
15, 31–33,
37–42, and
48–53
§ 103 – Trovato, Gutta,
AAPA, and Wilson
1–3, 6, 12–
15, 31–33,
37–42, and
48–53
7 § 103 – Trovato, Gutta,
AAPA, Wilson, and Kato
7
11 and 36 § 103 – Trovato, Gutta,
AAPA, Wilson, and Xu
11 and 36
16, 17, 34,
35, and 45–
47
§ 103 – Trovato, Gutta,
AAPA, Wilson, and Kitaura
16, 17, 34,
35, and 45–
47
18–28 § 103 – Trovato, Gutta,
AAPA, Wilson, and Binder
18–28
30 § 103 – Trovato, Gutta,
AAPA, Wilson, Binder, and
Njissang
30
1 and 53 § 103 – Kitaura and AAPA 1 and 53
Overall
Outcome
1–3, 6, 7,
11–28, 30–
42, and 45–
53

REVERSED