DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue Applications
This application seeks to reissue US Patent No. 10.965,914 (“the ‘914 patent”). After filing a notice of appeal on 12/05/2025, the applicant filed a request for continued examination (RCE) on 01/23/2026. Claims 1, 18, and 23 have been amended, and claims 4-17 are canceled. Claims 1 and 18-29 are pending.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,965,914 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/23/2026 has been entered.
Applicant’s Response
The applicant has amended claim 1 such that it is similar in scope to original claim 1 of the patent. Claim 1 in its unamended form was rejected for numerous reasons in the 01/23/2025 non-final Office action, including an obviousness rejection based on the Barley-Jeske-Fleissner combination. Following this Office action, the applicant amended the claim on 04/28/2025 to significantly alter its scope. In response, the subsequent final Office action presented a different obviousness rejection that was based on the newly amended claim. The application states that in the final Office action, the §103 rejection from the non-final “was not repeated” thus the “applicant assumed that the rejection was withdrawn and applicant’s distinguishing comments were indeed persuasive.” Remarks pg. 6-7 and 13. This is mistaken.
The grounds of rejection in the final action addressed the claims as they were presented at the time. Repeating the rejections from the non-final action would have been inappropriate, as it would have addressed claims that the applicant did not present in the 04/8/2025 amendment. Failing to repeat this rejection from the non-final was not an indication that those grounds of rejection would be withdrawn if the original claim were to be presented again, and no statement to this effect was made by the examiner. Some issues that were described in the non-final, such as the §112(b) rejections, were withdrawn because they were overcome by the applicant’s 04/28/2025 amendment. The grounds of rejection from the non-final action that did apply to the amended claims were described in the final action. See, for example, the final action at 4-14, 18-21, and 29-32. Reverting the claims back to be similar in scope to their original form requires that a number of rejections from the non-final be repeated. These issues are presented below.
The applicant argues that the claim term “real time mode” would be understood by the POSITA to require something different than the “live stream video” that is taught in the Barley reference. Remarks pg. 7. The examiner disagrees. The only disclosure in the specification of the ‘914 patent relating to this claim term states that there are “real-time communications” between the camera and the remote viewer. See e.g. ‘914 patent, 10:10-26. There is no discussion of what this entails, or whether (or how) it would differ from live-stream delivery of captured video.
The applicant submits that unlike real time delivery, live streaming suffers from delays caused by “processing, compression, and network latency.” Remarks pg. 7. But for the ‘914 patent’s trail camera to deliver imagery to the remote viewer also inherently requires processing, compression, and delivery over a network. The POSITA would appreciate that real time delivery of video would require significant compression and processing, because it would not be possible to send uncompressed video in real time over the Wi-Fi connection that is used by the camera. And because a Wi-Fi connection is used by the camera in the ‘914 patent, the POSITA would appreciate that delivery via a network would also be necessary. Therefore this argument does not convincingly show that the “real time communications” in the specification differ from live-stream delivery of video.
The applicant appears to take the position that the claim term “real time mode” is a term of art that would be understood to require something different than the “live stream video” taught by Barley. As evidence to support this distinction, the applicant has submitted a blog post from the website http://antmedia.io as Exhibit 5. This blog post was published over two years after the effective filing date of the ‘914 patent, thus is not relevant to the how the POSITA would understand the term “at the time of the invention, i.e., as of the effective filing date of the patent application.” See MPEP 2111.01 III.
Even if we look past that deficiency, Exhibit 5, which distinguishes between “live streaming” and “real time streaming,” does not show that the term “real time streaming” is a known term of art that would be understood by the POSITA to require something different than live streaming. It provides one example of those terms being used differently. However, documents that pre-date the ‘914 patent’s filing date also that skilled artisans used the term “live streamed video” (or its equivalent) to describe enable a user to view video in “real time.” See, e.g., US20170339200 ¶ 1; US20180192086 ¶¶ 2 and 17; and US20180338119 ¶ 47. Therefore the examiner disagrees that a “real time mode” (in claim 1), or displaying a camera’s field of view “in real time” (claim 23) would be understood by the POSITA as a known term of art that requires something different than live-streaming video from the camera. It is noted that the applicant’s own submitted evidence describes that live streaming “allows users to view real-time footage from their trail camera.” See Exhibit 3, pg. 3.
Therefore the examiner maintains that a POSITA would understand that a camera that delivers live-streamed video includes a “real time mode” (claim 1) and the remote viewer displays a camera’s field of view “in real time” (claim 23).
To demonstrate that Barley does not teach “real time” video, the applicant somewhat confusingly describes Barley’s live streamed video as “real-time transmission of video over a network.” Remarks pg. 7 (emphasis mine). This statement appears to admit that Barley at least discloses a “real time mode” as claim 1 requires, and as the specification discloses (see ‘914 patent, 10:10-26). The applicant does not show how this disclosure in Barley differs from the claim limitation requiring a “real time” mode.
Other than state that a real time mode is not the same as live streaming, the applicant has not described how these terms differ, or what the claim does require. Does the claim term require the delivery of video “with ultra-low latency of under 0.5 seconds” as described in Exhibit 5? This is not described in the specification, and would not be understood by the POSITA to be required by the limitation. The question remains: if “real time” describes something different than live streamed video, what requirements does this claim term carry? Because this question cannot be answered with certainty, and because the applicant states that the term requires something other than how the POSITA would understand it, the §112(b) rejection of this term is maintained.
New claims 18-27 were rejected for violating the recapture rule of §251. See final action, 23-26. The applicant traverses this rejection, stating that these claims are drawn to overlooked aspects, thus are exempt from the recapture rule. Remarks pg. 9-10. In particular, the applicant submits that the methods that are recited in claims 18-29 are “unrelated to the camera mount” limitations that were surrendered during prosecution. Id. This is not persuasive.
For a claim to be drawn to an overlooked aspect, it must fall outside of the scope of every claim that was presented during prosecution of the original application:
Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. In other words, the reissue claims are drawn to a separate invention or separate species or embodiment that was not covered by a claim (e.g., a generic claim) at any point during the prosecution of the original application.
MPEP 1412.01 III (emphasis added). The methods that are recited in claims 18-29 fall within the scope of claims that were presented during prosecution of 16/505,026, from which the ‘914 patent issued. For example, claim 1 that was filed on 07/08/2019 in the ‘026 application recited:
1. A camera system comprising:
a camera comprising a lens;
data storage coupled to said camera;
a wireless connection between said camera and a remote viewer;
said remote viewer displaying a field of view of said lens;
a virtual aim point illuminated on said remote viewer1, said viewer simultaneously displaying said field of view of said lens.
In comparison, current claims 18 and 23 recite:
18. A method for aiming a trail camera in a camera system to a target zone, said trail camera system comprising:
a trail camera with lens, and
a remote viewer,
wherein a wireless connection couples said trail camera with the remote viewer, said method comprising
securing said trail camera to a support structure,
initiating real time wireless communication between said trail camera and said remote viewer to display the field of view of the trail camera to the target zone wherein the field of view displayed on said remote viewer moves in coordination with the movement of the camera and
aiming said camera to the target zone using the field of view displayed on said remote viewer as a guide.
23. A method for remotely displaying the field of view of a trail camera to a target zone in a trail camera system, said system comprising:
a trail camera with lens, and
a remote viewer,
wherein a wireless connection couples said trail camera with the remote viewer, said method comprising
securing said trail camera to a support structure, and
initiating wireless communication between said trail camera and said remote viewer wherein the field of view of said trail camera to the target zone is displayed on said remote viewer in real time.
The claim 1 filed with the ‘026 application was generic to both the final version of claim 1 (with its surrendered limitations) as well as current claims 18-29. In other words, current claims 18-29 fall within the scope of the original version of claim 1. These claims are not drawn to overlooked aspects because a claim that “was within the scope of at least one original claim cannot be an overlooked aspect.” MPEP 1412.01 III. And because these claims omit surrendered limitations, as described below, they violate the recapture rule of §251.
Claims 18-27 were rejected under §101 as being drawn to abstract ideas without significantly more. See final action, 16-18. The applicant traverses, stating that the claims “do not remotely relate to any of the categories of organizing human activity” described in MPEP 2106.04. Remarks pg. 10. This is not convincing. The applicant provides no description of why it is thought that the claims do not recite the abstract idea of “organizing human activity, such as following rules or instructions.” See final action, 17.
Based on the emphasis placed on the phrase “between people” (see Remarks pg. 10), the applicant appears to submit that for a claim to recite the abstract idea of “managing personal behavior” would require the claim to recite management of behaviors between people. This is mistaken. The “methods of organizing human activity” groupings of abstract ideas “encompass activity of a single person (for example, a person following a set of instruction…).” MPEP 2106.04(a)(2)(II). The examiner maintains that claims 18-29, which recite activities that are performed by a human using a camera, recite the ineligible concept of managing personal behavior by following instructions. See below.
The applicant traverses the §112(a) rejection of claim 1. Remarks pg. 11. The examiner maintains that the specification does not support the limitation requiring that the remote viewer uploads images. However, amended claim 1 no longer includes this limitation, thus the applicant’s arguments are not relevant to the current claims.
Various claims have been rejected under §112(a) because the specification does not disclose that the scope of the claim term “wireless connection” covers cellular connections. See e.g. final action pg. 3-5 and 19. The claims do not actually recite a cellular connection. But the applicant continues to state on the record that the claim limitation “wireless connection” includes in its scope cellular connections. See Remarks pg. 12, as well as every response to Office action that has been filed in this application. The BRI of these claims therefore includes cellular connections, as will be discussed below. And because the BRI of the claims covers an unsupported form of wireless connection, the §112(a) rejections are appropriate.
As described in the final action pg. 3-5:
Claims are given their broadest reasonable interpretation (BRI) during examination in order to "establish a clear record of what applicant intends to claim." MPEP 2111. The BRI of a claim term "can be ascertained by examining the claim language, specification, and the prosecution history." MPEP 2111.01 III (emphasis added). In addition, "[w]hen the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention." In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). "The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed." Id.
The BRI of the term “wireless connection” includes cellular connections because the applicant has repeatedly shown this to be “the meaning that the claim terms are intended to have.” The specification of the ‘914 patent does not support this BRI, and thus the claims are rejected under §112(a).
The applicant traverses, stating that the term “wireless connection” would be understood by the POSITA to include “both WiFi and cellular connections.” Remarks pg. 12. The applicant also submits that this is a “genus/species relationship” and that “all forms of wireless connection” are implicitly disclosed in the specification. Id. This is not persuasive.
“[A]n adequate description of a genus may not support claims to a subgenus or species within the genus.” MPEP 2163(I)(B). Disclosure of a wireless connection does not provide written description support of every possible type of wireless connection, as the applicant argues. For example, the POSITA would not conclude that the specification provides support for Bluetooth, Wireless USB, Zigbee, IrDA, WiMAX, HiperMAN, DSRC, WiBro, or TransferJet, to name a few wireless connection protocols that existed at the time of the application. When a claim limitation is not present in the specification, “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” MPEP 2163(II)(3)(b). It has not been shown, and the POSITA would not conclude, that the specification requires the use of a cellular connection when that specific connection type is not disclosed.
It is not contested that cellular connections were a known type of wireless connection. However, whether the specification provides adequate written description is “not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure.... Rather, it is a question whether the application necessarily discloses that particular device.” Hyatt v. Boone, 146 F.3d 1348, 1354 (Federal Circuit, 1998). The applicant has not shown that the specification “necessarily discloses” a camera that uses a cellular connection.
The applicant’s Exhibits 1 and 2 are not sufficient to show that the POSITA would understand the wireless connection described in the ‘914 patent to necessarily include cellular connections. Exhibit 1 only describes that cellular connections are a known type of wireless connection. Exhibit 2 was published after the filing date of the ‘914 patent, thus is not relevant to what the POSITA at the time of the application would have understood the term “wireless connection” to disclose. It is not disputed that a cellular connection is a known type of wireless connection. But the ‘914 patent does not require a cellular connection any more than it requires, say, a connection using the HiperMAN wireless connection protocol. See above. The examiner therefore maintains that the §112(a) rejections are proper.
To overcome this rejection, the examiner suggests stating on the record that the claim term “wireless connection” does not cover connection types that are not described in the written description. This would show that the scope of the invention that the “applicant intends to claim” does not include unsupported subject matter.
The applicant submits that the advisory action’s description of the grounds of obviousness is inconsistent with the §112(b) rejection: “if such terms [‘field of view’ and ‘aim point’] are clear for purposes of rejecting applicant’s claims, these terms should be clear under section 112, i.e., the Examiner can’t have it both ways.” Remarks pg. 13-14. The applicant is reminded that standard examination practice dictates that terms that are found to be indefinite are to still addressed under prior art. See MPEP 2173.06. Such is the case here. While indefinite, the claim terms were addressed, and the interpretation of these terms was made clear in describing how the prior art met each limitation. Therefore the examiner disagrees that the prior art and indefiniteness rejections are inconsistent.
In addition, the applicant misunderstands the description of the “noticed fact.” The final Office action took official notice that certain limitations in claims 18-29 were well known. See final action pg. 34-35. The applicant traversed this official notice, and while the official notice was not properly traversed2, documentary evidence was provided in the advisory action. The advisory stated that the Nest and Smith references provided evidence that “the noticed facts,” i.e., the limitations that were previously subject to official notice in the final action, were known. The advisory did not state, as the applicant understood it to state, that the Nest and Smith references show that these limitations were “noticed fact.” Rather, it showed that these limitations were disclosed by the prior art. In other words, the advisory action withdrew the assertion of official notice in response to the applicant’s traversal and replaced it with prior art references showing that the limitations were known.
The applicant traverses the §103 rejection by submitting that unlike the Nest document, “the applicant is not claiming the use of a VIDEO stream to aim his camera.” Remarks pg. 14 (emphasis original). As has been explained above, the POSITA would understand that this is what the specification describes. In addition, the applicant still does not describe what, if not a “video stream,” is delivered to the remote viewer. The applicant has also not explained how the “real time streaming” delivers imagery to the remote viewer without providing a stream of video, or how the “real time mode” differs from what is taught in the cited prior art.
The applicant’s arguments on pg. 14 regarding official notice are not relevant, as official notice is no longer relied upon in the claim rejections. See the remarks above, the claim rejections below, and the advisory action.
The applicant submits that the Nest document is not dated. While the Nest document is not relied upon in the prior art rejections below, this document was published before the filing date of the ‘914 patent. Google indexed the document on September 08, 2016, which is evidence that it was posted, and therefore publicly available, as of that date. See the screenshot below.
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The applicant also argues that Nest is “only of marginal relevance” to the claims because it describes a security camera (and not a trail camera), is hard-wired (not battery powered), and uses a “video stream to aim its cameras.” Remarks pg. 15. None of these arguments show that Nest is not analogous prior art, or that its teachings do not suggest the claimed invention. As admitted by the applicant, Nest uses streamed video to “aim its cameras” (see Remarks pg. 15), which shows that its disclosure is at least within the same field of endeavor as the claimed invention and is reasonably pertinent to the problem faced by the inventor of aiming a camera using a remote display of video from the camera. See MPEP 2141.01(a). As such, Nest (and Smith) are analogous prior art.
The specific type of camera (security vs. trail) is not relevant, nor is its power source (hard wired vs. battery), as the POSITA would recognize that the aiming technique in Nest (and Smith) would likewise work in Barley’s trail camera. Further, the examiner maintains that the POSITA would have found suggestion in Nest and Smith to aim Barley’s camera using the video that is displayed on the remote viewer. Accordingly, the examiner submits that reliance on Nest to show obviousness of the claims was legally proper.
Similar arguments regarding Smith (see Remarks pg. 16) are not persuasive. See above.
Claim Construction
Claims 18 and 23 are drawn to methods of aiming a trail camera, and remotely displaying images from a trail camera, respectively. These claims, while directed to methods, include in their preamble structural limitations describing the trail camera and remote viewer. This “preamble within a preamble” structure describes the “physical structures of a system in which the claimed method is practiced.” Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). The scope of these claim is understood to require “practicing the claimed method” using a camera “possessing the requisite structure.” Id.
However, the active process steps that are recited in claims 18 and 23 include steps that are performed by a person. For example, claim 18 only requires that a person secure a particular type of camera to a support structure, initiate a wireless connection between the camera and a remote viewer, and aim the camera using the image displayed on the remote viewer. Claim 23 similarly includes human-performed process steps. These claims are not eligible under §101. See below.
In addition, it is questionable whether the method steps in claims 18-29 are to be given patentable weight. These claims relate to an intended manner in which the trail camera is to be operated by a human. “[S]tatements of intended use or field of use … may raise a question as to its limiting effect.” MPEP 2103 C. In addition, “’the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” MPEP 2114 II. While the previous citation relates to apparatus claims, the unusual structure of claims 18 and 23, which recite both method and apparatus, would appear to render this guidance relevant to these claims. However, for purposes of examination, the limitations in these claims is addressed in the rejections below.
In a “wherein” clause, claim 18 recites that “the field of view displayed on said remote viewer moves in coordination with the movement of the camera.” This language does not limit the claim because it only describes what is intended to occur as a result of the “initiating” step. A “wherein” clause in a method claim that “simply expresses the intended result of a process step positively recited” is not limiting. MPEP 2111.04 I.
Objection, 37 CFR 1.173 – Improper Amendment
The application is objected to for failing to conform with 37 CFR 1.173(d) and (g), which require that amendments in a reissue application must show changes made relative to the patent. See MPEP 1453. The applicant has shown claim amendments relative to previous versions of the claims in this reissue application, and not relative to the claims of the patent, which included only claims 1-3. Please refer to MPEP 1453 for examples of proper claim amendments in reissue applications.
Objection – 37 CFR 1.175 – Defective Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following: The declaration filed on 10/06/2025 does not “identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application.” MPEP 1414 II.
The applicant is required to submit a supplemental declaration that correctly identifies an error that the reissue application seeks to correct.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 18-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. As described under the “Claim Construction” heading above, the claims recite various steps that are performed by a human using a particular type of camera and remote viewer. These steps in claim 18 include “securing said trail camera to a support structure”; “initiating real time wireless connection” between the camera and a remote viewer (i.e. by a user initiating a certain device setting); and “aiming said camera” using the imagery displayed on the remote viewer. The applicant states that this claim relates to “manually adjusting the aim point of the trail camera.” See 04/28/2025 Remarks at 18. Therefore the steps in claim 18 are taken to be instructions for a user to follow in order to aim the camera. Claim 23 recites similar steps that a user would follow to display imagery transmitted from the camera. The claims therefore recite the abstract idea of organizing human activity, such as following rules or instructions. MPEP 2106.04(a).
The claims include in their preamble various limitations describing the structural environment in which the methods are performed. See the “Claim Construction” heading above. The scope of these claims is limited to “practicing the claimed method” using a camera having the structure recited in the preamble. Microprocessor Enhancement Corp., 520 F.3d 1367, 1375 (emphasis original). Because “practicing the claimed method” includes only steps that are performed by a human, the claims can be interpreted as covering “a person following a set of instructions.” MPEP 2164.04(a)(2) II. It is noted that the steps that are recited in claims 18 and 23 would not appear out of place in a user manual for the trail camera, which provides additional evidence that the steps describe instructions for a user to follow.
The claims include no additional limitations outside of the “rules or instructions” steps that integrate the abstract idea into a practical application. The preamble limitations describing the structure of the system in which the method is performed does not describe a practical application of the method steps. For example, aiming the camera in the manner recited in claim 18 does not improve, or even alter, the manner in which the camera itself operates. Nor are the steps recited in claim 18 implemented using a particular machine, because these steps are not performed by a machine; they are performed by a person. Further, the claim does not provide any other meaningful limitation to the human-performed process steps beyond merely linking the steps to the camera that is recited in the lengthy preamble. The abstract idea of claim 23 is not integrated into a practical application for similar reasons.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. For reasons given above, the claims do not provide improvements to a computer, are not applied using a particular machine, and are only linked to a general technological environment.
Dependent claims 19-22 and 24-29 recite nothing more than well understood, routine and conventional features. These claims provide nothing beyond the abstract idea that integrates the judicial exception into an abstract idea or amounts to significantly more, thus are likewise ineligible under §101.
In case the applicant were to argue that the “initiating” limitation in claims 18 and 23 are not performed by a human, but instead by the camera and remote viewer, the claims would still be drawn to an abstract idea without significantly more. If, arguendo, this step is not performed manually by the user, the limitation would fall outside of the abstract idea of organizing human activity. However, this step would not be sufficient to amount to a practical application of, or significantly more than, the abstract idea. This merely links the judicial exception to a particular technological environment, and utilizes well-known and routine computing technology as a way to implement the abstract idea. See MPEP §§ 2106.04(d) and 2106.05(d). As such, this limitation does not render the claims eligible under §101.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 18-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 18, and 23, and their dependents, are rejected because the applicant’s remarks on the record show that what the “applicant intends to claim” (MPEP 2111) is an invention that is not supported in the written description. The applicant submits that the “wireless connection” that is recited in these claims includes a cellular connection (as well as “all forms of wireless connections”). The specification does not explicitly or implicitly describe this. See the “Applicant’s Response” heading above for a discussion of this issue, and why the BRI of the claims require subject matter that is not explicitly recited. Therefore the claims include in their scope a feature that is not supported by the written description.
Claim 29 is further rejected under §112(a). Claim 29 depends from claim 24, which recites that the remote viewer “communicates control signals to said camera to control the camera lens to adjust the field of view of said camera lens.” The scope of claim 29 includes that the “control signals” adjust the FOV of the camera “by physically or mechanically actuating the camera by moving the camera by hand.” The ‘914 patent does not disclose that the control signals, which are signals that are communicated to the camera from the remote viewer, adjust the FOV by moving the camera by hand, which is what this claim recites.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 and 18-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-3 and 18-29 recite that the camera includes a wireless communication connection. The applicant submits that the “wireless connection” that is recited in these claims includes “all forms of wireless connections” including cellular connections. See e.g. Remarks at 12. However, for reasons set forth above, the specification does not describe this. Applicant’s remarks on the record have introduced uncertainty because it is not clear what the bounds are of the claim term ”wireless connection.”
Claims 1-3 and 18-29 recite that the camera transmits the “field of view” to the remote viewer in “real time.” The scope of this language is not clear in light of the applicant’s remarks. The applicant states that this is not the same as transmitting live video that is captured by the camera. See e.g. Remarks at 7, as well as previous Remarks from the applicant. If this limitation does not describe capturing and transmitting live-streamed video, the POSITA would not understand what is required by this limitation. See also the “Applicant’s Response” heading above for a detailed discussion of these issues.
Claims 1-3 are further rejected under §112(b). Claim 1 is drawn to a camera system, and the majority of this claim recites structural or functional features of this system. However, claim 1 also contains the limitation “securing said camera mount to a supporting structure.” This is neither a functional nor structural limitation on the camera system. Instead, this limitation recites a process step that appears to be performed by a person to attach the camera to a support structure. This renders the scope of the claim indefinite. “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).” MPEP 2173.05(p). The claim is of indefinite scope because it would not be clear if infringement would occur when one makes the camera system, or if infringement would require a person to secure the camera mount to the support structure. See id. Claims 2-3 inherit this indefiniteness. To overcome this issue, the claim may be amended to recite that the camera system includes a structural element that is configured to secure the camera mount to a supporting structure.
Claims 1-3 recite that the camera system comprises, in part, “a wireless connection between said motion detecting trail camera and a remote viewer.” This limitation renders the scope of these claims. This “wireless connection” is neither a structural nor a functional feature of the camera. Rather, it is described in the ‘914 patent as non-structural communications that occur, via propagating electromagnetic waves, between the camera and a remote device. See e.g. the ‘914 patent at 10:10-15. It is not clear how the camera can “comprise” this type of wireless connection between two devices, and therefore the scope of this limitation is indefinite. Dependent claims 2-3 inherit this issue. To overcome this uncertainty in claim scope, it is recommended that the claims be amended to recite that the camera is “configured to” communicate via a wireless connection with a remote device, as described in the ‘914 patent at 10:10-57. For examination purposes, the claims will be interpreted as if the camera were configured in this manner.
Claims 2 and 3 are also indefinite under §112(b). Claim 2 recites that the camera system further comprises “said remote viewer communicating control signals …” As a process step, this does not describe a structural or functional feature of the camera system. It is not clear how the camera system can “comprise” this process step. Claim 3 is rejected for similarly reciting that the system “comprises” a process step. Similar to claim 1, these claims also improperly mix apparatus and method steps and are also indefinite for this reason. To remedy this issue in claims 2-3, it is recommended that the claims be amended to recite that a device in the system is “configured to” perform the recited steps.
Claim 29 is further rejected under §112(b). Claim 29 depends from claim 24, which recites that the remote viewer “communicates control signals to said camera to control the camera lens to adjust the field of view of said camera lens.” The scope of claim 29 includes that the control signals adjust the FOV of the camera “by physically or mechanically actuating the camera by moving the camera by hand.” This renders the claim indefinite. It is not clear how control signals, which are signals that are communicated to the camera from the remote viewer, can adjust the FOV of the camera by moving the camera by hand, which is what this claim recites.
Claims 18-29 are further rejected for being of indefinite scope. These claims recite steps that a human would perform using a camera system. It is not clear if infringement of these claims would only require making the camera system that is capable of being used in the manner recited in the claims, or if infringement would require that a person actually perform the steps. For example, claim 18 includes a step of “aiming said camera to the target zone using the field of view displayed on said remote viewer as a guide.” Would infringement only occur when a user actually adjusts the aim of the camera? If so, is the infringing party the manufacturer of the system, or the user that is performing the steps?
While directed to a method, and not an apparatus, these claims raise questions of indefiniteness that are similar to those described in IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), where a claim was held indefinite because it was unclear as to "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.” These claims are indefinite because the public would not be “informed of the boundaries of what constitutes infringement of the patent.” MPEP 2173.
Claim 22 recite the term “the aim point.” There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 251
Claims 1-3 and 18-29 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claims 1-3 and 18-29 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is described in the §112(a) rejections above.
Claims 18-29 rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
The recapture analysis involves a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
MPEP 1412.02 Il.
Step 1: Claims 18-29 of this reissue application are broader in scope than claim 1 of the ‘914 patent. Accordingly, step 1 is satisfied and analysis continues to step 2. MPEP 1412.02 I and IIA.
Step 2: During prosecution of US Application 16/505,026, from which the ‘914 patent issued, various limitation were added to claim 1 in order to overcome prior art rejections. Because these limitations were “presented, argued, or stated to make the claims patentable over the art,” this subject matter was surrendered. MPEP 1412.02 I. These surrender generating limitations (SGLs) are:
SGL 1: “a camera mount coupled to said camera, wherein said mount comprises a curved guide surface to position said camera at any position within the range permitted by the curvature of said guide surface.”
SGL 2: the limitation requiring the camera to be a “motion detecting camera” that is “operable in a real time mode and a picture taking mode.”
SGL 3: “a camera support housing carrying said motion detecting camera.”
SGL 4: “said rear face facing the front face of the base member, the rear face of the camera mount comprising a guide abutting surface.”
SGL 5: “a retainer holding the guide abutting surface against said curved guide surface to releasable retain said camera mount.”
SGL 6: “optionally displaying photographs transmitted across said wireless connection.”
SGL 7: “securing said camera mount to a tree.”
SGL 8: “wherein the mount releasably retains the camera support at one of a plurality of different positions along the curved guide surface and at one of a plurality of different available orientations relative to the support structure.”
SGL 1 was added to claim 1 in the response filed May 19, 2020 in 16/505,026. Applicant identified this limitation a reason why the claim was thought to differentiate over prior art that the examiner had previously cited. See Remarks filed May 19, 2020 in 16/505,026. Because this limitation was “relied upon by applicant in the original application to make the claims allowable over the art,” this subject matter was surrendered by the applicant. MPEP 1412.02 II B1.
SGL 2 - SGL 7 were added to claim 1 and were identified as a reason why applicant considered the claim to be distinct from the AlSalamah and Baumgarten references. See Remarks filed November 06, 2020 in 16/505,026. Additionally, SGL 2 - SGL 7 were “added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered.” MPEP 1412.02 II B2. Therefore SGL 2 - SGL 7 were surrendered during prosecution of 16/505,026.
Applicant authorized the inclusion of SGL 8 into claim 1 in an examiner's amendment in the November 30, 2020 Notice of Allowance. An addition by “examiner's amendments authorized by applicant” will likewise trigger the surrender of the limitation. MPEP 1412.02 Il B2. SGL 8 was therefore also surrendered.
Claims 18-29 of the reissue application omit SGL 1 through SGL 8, thereby broadening the reissue claims relative to surrendered subject matter. Step 2 of the recapture analysis is satisfied, and analysis continues to step 3. MPEP 1412.02 II B.
Step 3: because the surrendered limitations are entirely absent, claim 4 has not been materially narrowed relative to the surrendered subject matter. Claim 4 therefore violates the recapture rule of §251. “If a claim is presented in a reissue application that omits, in its entirety, the surrender-generating limitation, that claim impermissibly recaptures what was previously surrendered, and that claim is barred under 35 U.S.C. 251.” MPEP 1412.02 III B.
In addition, claims 18-29 are within the scope of the claim 1 that was originally filed in 16/505,026, thus are not directed to overlooked aspects and cannot for this reason avoid the recapture rule. See above and MPEP 1412.01 III.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 23 and 25-27 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Barley, US 20120327225.
Claim 23: Barley discloses a method for remotely displaying the field of view of a trail camera to a target zone in a trail camera system, said system comprising:
a trail camera with lens (Fig. 2), and
a remote viewer (Fig. 1: 15B and ¶64),
wherein a wireless connection couples said trail camera with the remote viewer (¶¶ 47 and 64-65), said method comprising
securing said trail camera to a support structure (¶56), and
initiating wireless communication between said trail camera and said remote viewer (¶¶ 43-44 – images are transmitted wirelessly from the camera to the remote viewer, implicitly showing that the wireless connection was initiated) wherein the field of view of said trail camera to the target zone is displayed on said remote viewer in real time (¶47 – video is streamed live from the camera to the remote viewer. As the video inherently captures the field of view of the camera, this field of view is transmitted to the remote viewer. And because live video is shown on the remote display, the field of view is displayed in real time.).
Claim 25: Barley discloses that the remote viewer is a phone (¶64).
Claim 26: Barley discloses that the wireless connection is a Wifi connection (¶56).
Claim 27: Barley discloses that the support structure is a tree, post or pole (¶56).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Barley in view of Jeske, US 20190196304.
Claim 1: Barley discloses a camera system comprising:
a motion detecting camera comprising a lens (Abstract, ¶52, and Fig. 1), said motion detecting camera operable in a real time mode and a picture taking mode (¶¶ 49 and 82 – the camera takes still photos or video. ¶47 – video is streamed live to a remote viewer in a real time mode);
a camera support housing carrying said motion detecting camera (Fig. 2);
a camera mount coupled to said camera support housing (¶56),
data storage coupled to said motion detecting camera (Fig. 3: 43; ¶54 – images taken by the camera are stored in data storage 43 within the trail camera);
a wireless connection between said motion detecting camera and a remote viewer (Fig. 1 and ¶44 – data and commands are communicated between the camera and a remote viewer (Fig. 1: 15) via a wireless connection);
said remote viewer displaying a field of view of said lens to the intended target zone, and optionally displaying photographs transmitted across said wireless connection (¶¶43-44 and 91 – the images (of the camera’s FOV, which thus depicts an intended target zone) are streamed to the remote viewer across the wireless connection as still pictures or video.),
securing said camera mount to a supporting structure, the supporting structure comprising a tree (¶56).
Barley fails to disclose that said mount comprises a base member having a rear face and a front face; said rear face facing the front face of the base member, the rear face of the camera mount comprising a guide abutting surface; and said front face comprising a curved guide surface to position said motion detecting camera at any position within the range permitted by the curvature of said guide surface; a retainer holding the guide abutting surface against said curved guide surface to releasably retain said camera mount; wherein the mount releasably retains the camera support at one of a plurality of different positions along the curved guide surface and at one of a plurality of different available orientations relative to the support structure.
However, Jeske discloses a mount for a trail camera, said mount comprises a base member having a rear face and a front face (Fig. 11A-11B and ¶56 – socket 126 has a “rear face,” while ball 104 has a “front face.” This interpretation is consistent with the ‘914 patent’s description of this feature at 3:56 – 4:31 and Fig. 1, which describes socket 32 as having rear face 50 and ball mount 40 as having front face 46);
said rear face facing the front face of the base member, the rear face of the camera mount comprising a guide abutting surface (Fig. 11A; ¶56 – socket 126 has a guide abutting surface); and
said front face comprising a curved guide surface to position said motion detecting camera at any position within the range permitted by the curvature of said guide surface (Fig. 11A – this is implicit in a ball and socket mount such as that shown in the Figure);
a retainer holding the guide abutting surface against said curved guide surface to releasably retain said camera mount (¶¶55-56 – magnets cause the ball and socket to be magnetically coupled, thus releasably retain the camera mount);
wherein the mount releasably retains the camera support at one of a plurality of different positions along the curved guide surface and at one of a plurality of different available orientations relative to the support structure (¶¶55-56).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify the system of Barley with the teachings of Jeske, the rationale being to provide improved usability by enabling camera view to “freely be moved in any direction”. See Jeske ¶56.
Claim 3: Barley discloses said motion detecting camera system further comprising communicating data from said data storage to said remote viewer (¶¶81-82).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Barley, Jeske, and Fleissner, EP 1274231 (reference below is made to the previously-provided English translation).
Claim 2: the Barley-Jeske combination fails to disclose said remote viewer communicating control signals to said motion detecting camera to control said lens by a zoom control.
Fleissner discloses a remote viewer communicating control signals to a motion detecting camera to control said lens by a zoom control (final paragraph of pg. 9).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Barley-Jeske with these teachings in Fleissner, the rationale being to provide users with a convenient way to adjust the zoom of Barley’s trail camera.
Claims 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Barley in view of Smith, US 20160105644.
Claim 18: Barley discloses a camera system, said trail camera system comprising:
a trail camera with lens, and a remote viewer, wherein a wireless connection couples said trail camera with the remote viewer (see rejection of claim 1, where the structural elements of the trail camera are addressed),
said method comprising: securing said trail camera to a support structure (¶56),
initiating real time wireless communication between said trail camera and said remote viewer to display the field of view of the trail camera to the target zone wherein the field of view displayed on said remote viewer moves in coordination with the movement of the camera (¶¶ 43-44 – a live video feed of the camera is displayed to the remote viewer over a wireless connection. Because a live image is displayed on the remote viewer device, the image shown on the remote viewer will inherently move in coordination with movement of the camera. In addition, the language “wherein the field of view displayed on said remote viewer moves in coordination with the movement of the camera” does not limit this method claim. See the Claim Construction heading, above).
Barley does not disclose a method for aiming the trail camera to a target zone, and aiming said camera to the target zone using the field of view displayed on said remote viewer as a guide.
Smith discloses a method for aiming a camera to a target zone, and aiming the camera to the target zone using the field of view displayed on a remote viewer as a guide (¶¶ 211 and 216 – a graphical user interface is displayed on client device 103 (a remote viewer) and displays live images received from the camera 101. A user may use the live video feed to aim the camera).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Barley with Smith to enable aiming the camera using the video displayed on the remote viewer. Smith ¶216 would have provided clear suggestion to use the live video when aiming Barley’s trail camera, i.e. to use the field of view displayed on the remote viewer as a guide to aim the camera. The POSITA would have been motivated to make this modification in order to ensure that the trail camera is aimed properly and that the desired images are captured; that is, to ensure that the camera is “properly aim[ed].” Smith ¶216.
In case it is argued that Barley does not disclose that the camera moves, thus does not teach that field of view displayed on said remote viewer moves in coordination with the movement of the camera, this is also suggested in Smith ¶216. It would further have been obvious to the POSITA to modify Barley to include this in order to enable live feedback when aiming the camera.
Claim 19: Barley-Smith discloses that the remote viewer is a phone (Barley ¶64).
Claim 20: Barley-Smith discloses that the support structure is a tree, post, or pole (Barley ¶43).
Claim 21: Barley-Smith discloses that the wireless connection is a WiFi connection (Barley ¶57).
Claim 22: Barley-Smith discloses that the aim point of the trail camera is adjusted manually (Smith ¶216).
Claims 24, 28, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Barley in view of Fleissner (of record).
Claim 24: Barley does not disclose that the remote viewer communicates control signals to said camera to control the camera lens to adjust the field of view of said camera lens.
Fleissner discloses a remote viewer that communicates control signals to a camera to control the camera lens to adjust the field of view of said camera lens (Abstract).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Barley with these teachings in Fleissner, the rationale being to enable remote adjustment of aim point, which would have improved user convenience when aiming Barley’s trial camera.
Claim 28: Fleissner discloses that the remote viewer communicates control signals to said camera to control the camera lens by at least one of zoom control, vertical translation control and horizontal translation control to manipulate the aim point of said camera (Abstract and pg. 2).
Claim 29: Fleissner discloses that the control signals adjust the field of view of said camera electronically, or by physically or mechanically actuating the camera by moving the camera by hand or by internal motor (Abstract and pg. 2 – a motorized pan/tilt mechanism adjusts the camera’s orientation in response to signals received from the remote viewer).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/ Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
1 As noted previously (see non-final action, 11), the “virtual aim point” recited in this claim is indefinite.
2 See the advisory action for a description of why this traversal was improper.