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October 12, 2020by Yanhong Hu

It is well-settled that if a proposed modification or combination of prior art would change the principle of operation of the prior art invention being modified, the teachings of the references are not sufficient to render the claims prima facie obvious.  In Ex parte Binder (Appeal No. 2019-003108), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection on the ground that the Examiner’s proposed modification changed the principle of operation of the primary reference.

The subject matter disclosed in the application at issue related to “electric shavers having electronic imaging functions.”  Claim 1 was illustrative of the claims on appeal and was drawn to a handheld device “for capturing and displaying images and for identifying an element in the images.”  The claimed device included, among other components, “a first digital camera for capturing a first image,” “a second digital camera for capturing a second image distinct from the first image,” and “a digital image processor coupled to the digital cameras for receiving the digital signals for receiving and processing the captured images.”  Further, the digital image processor identified the element in the captured images “using pattern recognition.”

The Examiner relied primarily on Oswald, which described a mobile communication device having two video cameras, for the claimed device.  The Examiner admitted that Oswald did not disclose the image identification was accomplished “using pattern recognition.”  However, the Examiner introduced Doughty, which described 3D image correlation photogrammetry, and argued it would have been obvious to “modify” Oswald to use Doughty’s pattern recognition technique to “determine strain fields on the skin surface” and to “quickly and conveniently apply a removable pattern.”

The Board disagreed.  The Board first found Oswald explicitly described in the specification and illustrated in the figures that the two video cameras were on opposite sides of the device and pointed in opposite directions.  The Board further noted Oswald taught the first camera was used to track the user “in real-time to determine their body and facial movement” while the second camera was pointing in the “direction as the movement of the user.”  Therefore, the two cameras of Oswald’s device not only were directed at opposite directions but were focused upon different objects. The mobile device described in Oswald thus could be used to “allow a reporter to capture a sequence of images of the scene, and simultaneously capture a sequence of images of himself or herself describing the scene.”  By contrast, as noted by the Board, the dual cameras’ focus in the technique depicted in Doughty was in the same general direction and was upon the same object to achieve a 3D representation of the object for strain measurement purposes.  Accordingly, the Board found combining Oswald’s apparatus with Doughty’s pattern recognition teachings “in order to determine strain fields on the skin surface” as alleged by the Examiner would require both of Oswald’s cameras to focus in essentially the same direction and upon the same object, which contradicted Oswald’s teaching that the two cameras faced in opposite directions and were upon different objects.

Therefore, the Board found the Examiner’s alleged modification would change the principle of operation of Oswald and agreed with the Appellant that the Examiner relied on an “improper rationale for combining [] the Oswald and Doughty references.”  Consequently, the Board reversed the Examiner’s obviousness rejection.

Takeaway:  When an Examiner relies on a secondary reference for a feature missing from a primary reference in an obviousness rejection, she tends to use the benefits or advantages described in the secondary reference to justify her reliance on the secondary reference.  Under such circumstances, it is important to investigate what is the underlying reason described in the secondary reference that leads to the identified benefits and to compare it with the principle of operation described in the primary reference.  As illustrated by Binder, if the underlying reason contradicts and thus would change the principle of operation of the primary reference, no prima facie case of obviousness is established.

Judges:  J. C. Kerins, M. L. Hoelter, and A. R. Reimers

Yanhong Hu

by Yanhong Hu

Yanhong (Claire) Hu, Ph.D., is a patent attorney and partner at Element IP. She is active in patent preparation and prosecution, post-grant proceedings, and legal opinions and counseling. Her knowledge and experience in a wide variety of technical fields, combined with her legal expertise, allow her to appreciate various technologies to successfully and efficiently assist her clients.