Application No: 13/931,857
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`Docket No.: SEC-P120US
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`I.
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`Overview
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`REMARKS
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`Claims 1-21 are pendingin the present application. The claims stand unamendedby the
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`present Response. The only issue raised by the Examinerin the current Office Action dated
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`November28, 2014 (‘the Office Action’’) is that claims 1-21 stand rejected under 35 U.S.C. §
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`102(a) as being anticipated by U.S. Patent No. 7,027,659 B1 to Thomas(hereinafter, “Thomas’”’).
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`Applicant respectfully traverses the outstanding claim rejections and requests reconsideration
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`and withdrawalin light of the remarks presented below.
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`II.
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`Rejection of claims under 35 U.S.C. § 102
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`Asnoted, the Office Action indicates that claims 1-21 are rejected under 35 U.S.C. §
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`102(a) as being anticipated by Thomas. Applicant respectfully traverses.
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`A. Rejection Does Not Comport with Office Policy.
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`Applicant respectfully contends that the rejections of claims 2 through 21, particularly
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`dependentclaims 2 through 7, 9 through 13 and 15 through 21, as presented in the Office Action
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`do not comport with Office policy. Specifically, the Examineris directed that “[i]n accordance
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`with the patent statute, ‘Whenever, on examination, any claim for a patentis rejected, or any
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`objection .
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`.
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`. made’, notification of the reasons for rejection and/or objection together with such
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`information and references as may be useful in judging the propriety of continuing the
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`prosecution (35 U.S.C. 132) should be given,” M.P.E.P. § 707.
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`In particular 37 C.F.R §
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`1.104(c)(2) instructs:
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`In rejecting claims for want of novelty or for obviousness, the examiner
`must cite the best references at his or her command. Whenareference is
`complex or showsor describes inventions other than that claimed by the
`applicant,
`the particular part relied on must be designated as nearly as
`practicable. The pertinence of each reference, if not apparent, must be
`clearly explained and each rejected claim specified.
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`The current Office Action summarily deals with each chain of dependent claimsbyciting
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`a single paragraph of Thomas, without apply Thomasto the claim elements. The cited paragraph
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`is only marginally applicable to some of the dependentclaims, and clearly inapplicable to other.
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`Application No: 13/931,857
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`Docket No.: SEC-P120US
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`Since the Office Action has failed to properly apply the Thomasreference to the elements ofthe
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`dependentclaims, the Office Action does not meet the goal “to clearly articulate any rejection
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`early in the prosecution process so that the applicant has the opportunity to provide evidence of
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`patentability and otherwise reply completely at the earliest opportunity.” M.P.E.P. § 706.
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`Applicant therefore respectfully requests that, if the claims are not allowed, the Examinerset
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`forth any remainingrejections of claims 2 through 21, particularly dependent claims 2 through7,
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`9 through 13 and 15 through 21, in a non-final Office Action, so that Applicant may havea full
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`and fair opportunity to explore the patentability of claims 2 through 21, particularly dependent
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`claims 2 through 7, 9 through 13 and 15 through 21.
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`B. Thomas Fails to Teach (or Suggest) All the Elements ofthe Claims.
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`“Because the hallmark of anticipation is prior invention, the prior art reference—in order
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`to anticipate under 35 U.S.C. § 102—mustnotonly disclose all elements of the claim within the
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`four corners of the document, but must also disclose those elements ‘arranged as in the claim.’”
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`Net MoneyIn v. Verisign, Opinion in Case Number 2007-1565, pp. 15-16 (Fed. Cir. October 20,
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`2008) (citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “A claim
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`is anticipated only if each and every elementas set forth in the claim is found, either expressly or
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`inherently, described in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of
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`California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). (Emphasis added.)
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`Moreover, “[t]he identical invention must be shown in as complete detail as is contained in the
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`... Claim.” Richardson vy. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). (Emphasis
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`added.) The elements must be arranged as required by the claim... In re Bond, 910 F.2d 831, 15
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`USPQ2d 1566 (Fed. Cir. 1990). (Emphasis added.) (See, M.P.E.P. § 2131.) Applicant
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`respectfully asserts that Thomasfails to teach (or suggest) all the elements of claims | through
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`21, at least in as complete detail or as arranged by various onesofthe claims.
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`Independent claims1 and 8 eachrecite, “receiving video at a video visitation device in_
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`a secure environment.” (Emphasis added.) Similarly, independentclaim 14 recites, “a data
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`communication device configured to receive video from a video visitation device in a secure
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`environment.” The Office Action cites column 10, lines 25 through 38 of Thomasas teaching
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`these elements. This portion of Thomas discusses receiving compressed and encodedvideo data
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`in a receiving portion 650 from a transmitting portion 610, via a transmission medium 699, and
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`removalof “mosquito noise” from the decompresses video. Applicant notes that the cited
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`Application No: 13/931,857
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`Docket No.: SEC-P120US
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`portion of Thomas, nor any other portion or Thomas, discusseslimitations suchas, “receiving
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`video at a video visitation device,” much less receiving video at such a video visitation device
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`“in a secure environment,” as affirmatively claimed. Such claim elements are more than a mere
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`statement of intended use,or he like in that they provide meaning and purpose to the
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`manipulative steps, see M.P.E.P. § 2103(C), citing Griffin v. Bertina, 283 F.3d 1029, 1034, 62
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`USPQ2d 1431(Fed. Cir. 2002).
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`Independentclaims 1 and 8 furtherrecite, “adjusting a depth of field parameter for the
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`video, such that an imageofa first object at a first distance from the video visitation deviceis in
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`focus and an image of a second object at a second distance from the video visitation device is
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`blurred.” (Emphasis added.) Comparably, independentclaim 14 recites, “a data processor
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`configured to adjust a depth of field parameter for the video, such that an imageofa first object
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`at a first distance from the video visitation device is in focus and an imageof a second object at a
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`seconddistance from the video visitation device is blurred.” The Office Action cites column 12,
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`lines 23 through 40 of Thomasas teaching these elements. However, Thomas does not teach
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`“adjusting the depth offield” of its video to achieve the “defocus” discussed in this passage.
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`Rather, after touching on the concept that objects “beyond the plane of focus” of the camera
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`appear “‘defocused,” the cited paragraph of Thomasteaches(at column 12, lines 29 through 33),
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`“Images representing background objects, such as object 2012, are sent separately to the
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`receiving portion of the video conferencing system, as shownin FIG. 6b. Using digital signal
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`processing techniques, background object 2012 is defocused.” (Emphasis added.) Hence,
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`Thomas does not teach (or suggest) “adjusting a depth of field parameter for the video, such that
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`an imageofa first object at a first distance from the video visitation device is in focus and an
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`image of a second object at a second distance from the video visitation device is blurred,” as
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`claimed.
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`Independentclaims 1 and 8 additionally recite, “providing the video to a viewing
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`device located outside of the secure environment.” Similarly, independent claim 14 recites, “the
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`data communication device is configured to provide the video to a viewing device located
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`outside of the secure environment.” The Office Action cites column 12, lines 41 through 47 of
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`Thomasin addressing these elements. However, the cited portion of Thomas merely mentions,
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`“The composite image thus formedis displayed to the remote viewer on display 652.” Thus,
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`again, Applicant respectfully points-out that Thomasis silent concerning a secure environment
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`Application No: 13/931,857
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`Docket No.: SEC-P120US
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`or the like, and hencefails to teach (or suggest) limitations such as providing the video to a
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`viewing device located outside such a secure environment, as claimed.
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`For at least the above reasons, Applicant respectfully asserts that Thomasfails to
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`disclose, within the four corners of the document, all of the elements of independent claims1, 8
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`and 14, muchlessall of the elements arranged or combinedin the same wayasrecited.
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`Therefore, Thomas cannotbe said to prove prior invention of the claimed subject matter, and
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`thus, cannot anticipate independent claims 1, 8 and 14 under 35 U.S.C. § 102.
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`Claims2 through 7 cach ultimately depend from independentclaim 1, and thereby each
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`of claims 2 through 7 inherits all elements of independent claim 1. Claims 9 through 13 each
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`ultimately depend from independentclaim 8, and thereby each of claims 9 through 13 inherits all
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`elements of independent claim 8. Claims 15 through 21 each ultimately depend from
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`independentclaim 14, and thereby each of claims 15 through 21 ach inherits all elements of
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`independent claim 14. Therefore, for at least the reasons advanced above in addressing the
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`anticipation rejections of independent claims 1, 8 and 14, each of claims 2 through 7, 9 through
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`13, and 15 through 21 includes features and elements not taught (or suggested) by Thomas.
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`Thus, Applicant respectfully asserts that for at least this reason, claims 2 through 7, 9 through 13,
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`and 15 through 21 are patentable over the 35 U.S.C. § 102 rejections of record. Furthermore,
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`manyof claims 2 through 7, 9 through 13, and 15 through 21 recite further elements not taught
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`(or suggested) by Thomas.
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`For example, claim 2 recites, “adjusting the depth of field parameter further comprises
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`adjusting an f-stop setting of a camera associated with the video visitation device.” (Emphasis
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`added.) Similarly, claim 15 recites “a camera controller configured to adjust an f-stop setting of
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`a camera associated with the video visitation device.” As noted, in addressing all of the
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`dependentclaims, the Office Action cites a single paragraph of Thomas spanning column 12,
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`line 48, through column 13, line 3. However, Thomas,in its entirety, much less in this
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`paragraph,fails to mention adjusting the “f-stop” of a camera. In fact, as pointed out above,
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`Thomas “defocuses” a portion of an image that represents background objects by separating it
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`out and applying digital processing techniques to “defocus” it. The cited portion of Thomas
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`discussesthat “The result of such a transformation is to change the effective focal length of the
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`camera for the person speaking/participating in the video conferencing session and the
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`Application No: 13/931,857
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`Docket No.: SEC-P120US
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`backgroundobjects.” Hence, Thomasfails to teach (or suggest) physical parameter elements
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`such as “adjusting an f-stop setting of a camera associated with the video visitation device,” as
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`claimed in each of claims 2 and 15. Further, with respect to claim 15 Thomasappears to be
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`silent with respect to a “camera controller,” or the like, that is “configured to adjust an f-stop
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`setting of a camera.” For at least these reasons, Applicant respectfully asserts that Thomasfails
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`to disclose, within the four corners of the document, these additional elements from claims 2 and
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`15, muchless these additional elements arranged or combined in the same wayasrecited.
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`Therefore, claims 2 and 15 are further patentable over the anticipation rejections of record.
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`Asanother example, claim 3 (which depends from claim 2 andis thereby further
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`patentable for at least the same reasonsas claim 2) furtherrecites, “adjusting the f-stop setting
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`further comprises adjusting a focal length of a lens coupled to the video visitation device.”
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`(Emphasis added.) As noted, the defocusing adjustments in Thomasare carried out using digital
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`processing on separated image portions, not through physical means such as “adjustingafocal_
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`length of a lens,” as recited by claim 3. For example, as noted, the cited portion of Thomas
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`states, “The result of such a transformation is to change the effective focal length of the camera
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`for the person speaking/participating in the video conferencing session and the background
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`objects.” Hence, Thomasfails to teach (or suggest), within the four corners of the document,
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`these additional elements from claim 3, muchless these additional elements arranged or
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`combined in the same wayas recited. Therefore, claim 3 is further patentable over the
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`anticipation rejections of record.
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`Asyet another example, claim 4 (which also depends from claim 2 andis thereby further
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`patentable for at least the same reasonsas claim 2) further recites, “adjusting the f-stop setting
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`further comprises adjusting an aperture setting of the camera associated with the video visitation
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`device.” Similarly, claim 18 recites, “the camera controller is further configured to adjust an
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`aperture setting of the camera associated with the video visitation device.” Thomasissilent
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`concerning the camera aperture and thus adjustments thereto, as claimed. Thus, further with
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`respect to claim 18 Thomas does not teach (or suggest) a camera controller that that adjusts
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`camera aperture. Hence, Thomasfails to teach (or suggest), within the four corners of the
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`document, these additional elements from claims 4 and 18, muchless these additional elements
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`arranged or combined in the same wayasrecited. Therefore, claims 4 and 18 are further
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`patentable over the anticipation rejections of record.
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`Application No: 13/931,857
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`Docket No.: SEC-P120US
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`In still further examples, claim 6 recites, “adjusting the depth of field parameter is
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`remotely controllable by a third party.” (Emphasis added.) Similarly, claim 10 recites,
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`“adjusting the depth of field parameter is remotely controllable by a third-party monitor,” and
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`claim 16 recites, the camera controller is controllable by a third-party to remotely adjust the f-
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`stop setting.” Further in this regard, claims 7 and 11 eachrecite, “providing the video to a
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`second viewing device for security monitoring, the second viewing device being associated with
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`a remote control device configured to allow a third party monitor to remotely control the depth of
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`field parameter.” (Emphasis added.) Along the samelines, claim 19 recites, “a second viewing
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`device for security monitoring, the second viewing device being associated with a remote control
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`device configured to allow a third-party to remotely control the depth of field parameter.” It
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`does not appear that Thomasdisclosesa third party having any sort of control over a depth of
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`filed parameteror the like, as claimed in these claims, much less providing the video to such a
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`third party monitor for security monitoring for such remote control over the depth offield
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`parameter, as claimed in claims 7, 11 and 19. Forat least these reasons, Applicant respectfully
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`asserts that Thomasfails to teach (or suggest), within the four corners of the document, the
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`above-quoted further elements from claims 6, 7, 10, 11, 16 and 19, muchless these additional
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`elements arranged or combined in the same wayasrecited. Therefore, claims 6, 7, 10, 11, 16 and
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`19 are clearly further patentable over the anticipation rejections of record.
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`Asa final set of examples of dependent claims that include further elements not taught
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`(or suggested) by Thomas, Applicant notes, claim 12, recites “providing the video stored in the
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`data storage device to an investigator in response to indicia from the third-party monitor.”
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`(Emphasis added.) Similarly, claim 20 recites, “the data communication device is further
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`configured to provide the video stored in the data storage device to an investigator in response to
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`indicia from the third-party.” Along the samelines, claims 13 recites, “providing the video
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`stored in the data storage device to an investigator in response to a request from the
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`investigator,” and claim 21 recites, “provide the video stored in the data storage device to an
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`investigator in response to a request from the investigator.” (Emphasis added.) Thomas doesnot
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`mention an investigator, much less providing the video to such an investigator in response to
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`indicia from a third-party monitor and/or in response to a request from the investigator.
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`Therefore, Applicant respectfully asserts that Thomasfails to teach (or suggest), within the four
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`corners of the document, the above-quoted additional elements from claims 12, 13, 20 and 21,
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`Application No: 13/931,857
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`Docket No.: SEC-P120US
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`muchless these additional elements arranged or combined in the same wayasrecited. Therefore,
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`claims 12, 13, 20 and 21, are clearly further patentable over the rejections of record under 35
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`US.C. § 102.
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`Ill.
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`Conclusion
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`Applicant has madea diligent effort to explain why the claims are patentable over the
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`rejections of record and to explain why the examination of the claims is lacking in such a manner
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`that any further rejections must be spelled-out in a non-final Office Action. So, for at least the
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`reasons advanced above Applicant respectfully asserts that pending claims 1 through 21 are
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`patentable, and that the present application is in condition for immediate allowance. Should
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`there remain unresolved issues, it is respectfully requested that the Examiner telephone
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`Applicant’s attorney at 303-578-4633 prior to the mailing of a subsequent Office Action, so that
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`any such issues may beresolved as expeditiously as possible, such as through entry of an
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`Examiner’s Amendment.
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`Respectfully submitted,
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`/Jerry L Mahurin/
`Jerry L. Mahurin
`Attomey for Applicant
`Reg. No. 34,661
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`February 27, 2015
`Date
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`FOGARTY, L.L.C.
`5700 Granite Parkway, Suite 200
`Plano, Texas 75024
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`303-578-4633
`888-453-1815 (fax)
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`Jerry@FogartyIP.com
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