Brief Case Analysis

Let’s consider an invention in which a car has been enhanced to include a camera on the rear of the car.  The camera is angled toward the rear window.  The camera acquires images of ice on the rear window.  A processor performs a known processing on the images to determine a thickness of the ice.

In addition to the image processing, the prior art teaches that modern cars often include backup cameras (i.e., a camera used when the car is traveling in reverse).

Let’s assume the Applicant files the following claims:

1.  A car, comprising: a first camera on a rear of the car, the first camera to acquire an image; and a processor that processes the image acquired by the first camera.

2.  The car of claim 1, further comprising: a second camera that is a backup camera.

That is, the Applicant is attempting to distinguish Claim 2 from the prior art by two features: (1) the presence of two cameras (i.e., the first camera and the second camera), and (2) the implication that, because Claim 2 recites the prior art backup camera, the first camera of Claim 1 must be a different camera.

From the Applicant’s point of view, Claim 2 appears to force a logic problem.  Specifically, if the second camera in Claim 2 is in the prior art, and Claim 1 recites a different camera (i.e., the first camera), then the first camera of Claim 1 appears to distinguish over the prior art.

The Examiner is unlikely to find this reasoning persuasive.  Rather, if the Examiner can reasonably reject Claim 1, the Examiner also likely will reject Claim 2 as obvious over the prior art.  Why?

The first rationale is over Applicant’s admitted prior art: it is known for a car to include a backup camera.  Initially, it might seem there is no motivation to modify the car rejected in Claim 1 to include a second camera.  However, there was certainly some motivation for including backup cameras in cars: safety comes to mind.  Under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), this motivation is sufficient to render Claim 2 obvious.

Second, and more interestingly, the Examiner can simply consider Claim 2 as mere duplication of parts.  MPEP 2144.04 VI B.  The Examiner can advance such a position by rejecting Claim 1 as obvious over the prior art “car with a backup camera” in view of the known image processing.  The rejection would then duplicate the backup camera for Claim 2.

This rejection might seem odd, because the first camera of Claim 1 is not a backup camera.  However, Claim 1 does not recite the angling of the first camera toward the rear window.  Therefore, under the broadest reasonable interpretation (BRI), the prior art backup camera discloses the first camera of Claim 1.

This analysis hints at the path for the Applicant to move this application forward: Claim 1 should recite the angling of the first camera.

If Modal PLLC can assist you with claim analysis, please contact us.

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