Ex Parte Casler

Board of Patent Appeals and Interferences

Jan 4, 2006

09995933 (B.P.A.I. Jan. 4, 2006)

The opinion in support of the decision being entered today
was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte CHRISTOPHER L. CASLER
_____________

Appeal No. 2006-0146
Application No. 09/995,933
______________

ON BRIEF
_______________

Before BLANKENSHIP, SAADAT and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the rejection of
claims 1, 2, 4, 9, 10 and 12. For the reasons stated infra we will not sustain the
examiner’s rejection of claims 1, 2, 4, 9, 10 and 12.

Appeal No. 2006-0146
Application No. 09/995,933

THE INVENTION

The invention relates to a method to use a lens for increasing the range of
incident angles over which an infrared remote control may be used with an
infrared remote-controlled electronic entertainment device. See page 4 of
appellant’s specification.
Claim 1 is representative of the invention and is reproduced below:

1. A method, performed by a retail purchaser of a previously-
purchased remote-controlled retail electronic entertainment device, for
retro-fitting said remote-controlled device to provide an increased
acceptance angle for an infrared receiver thereof, the method comprising
the steps of:
purchasing, on a retail basis and subsequent to a previous
purchase of said remote-controlled device, a hemispheric lens, the
hemispheric lens comprising a lens body, the lens body being fabricated
from a dielectric material substantially transparent at an infrared
wavelength received by the infrared receiver, the lens body having a
substantially hemispheric convex outer surface, a substantially
hemispheric concave inner surface, a substantially flat annular surface
connecting the inner and outer hemispheric surfaces, and an adhesive
layer comprising double-sided adhesive tape provided on the annular
surface for securing the lens to a face of the remote-controlled retail
electronic entertainment device over the infrared receiver thereof; and
after purchasing the hemispheric lens, securing the hemispheric
lens to the face of the previously-purchased remote-controlled retail
electronic entertainment device over the infrared receiver thereof, thereby
increasing the acceptance angle over which infrared remote control
signals may be received by the infrared receiver,
wherein the remote-controlled retail electronic entertainment device
is a television, a video cassette recorder, a video cassette player, a DVD
player, a DVD recorder, a cable television receiver, a satellite television
receiver, a radio, a stereo, a hi-fi system, an audio cassette player, an
audio cassette recorder, an audio CD player, an audio CD recorder, a
home theatre system, a surround-sound system, an MP3 player, an MP3
recorder, a DVD-audio player, or a DVD-audio recorder.

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Appeal No. 2006-0146
Application No. 09/995,933

THE REFERENCES

The references relied upon by the examiner are:

Keitoku 5,036,188 July 30, 1991

Takahashi et al. (Takahashi) 4,921,330 May 1, 1990

Haddock et al. (Haddock) 4,912,880 April 3, 1990

Harwood GB 1,500,495 February 8, 1978

THE REJECTIONS AT ISSUE
Claims 1, 2, 4, 9, 10 and 12 stand rejected under 35 U.S.C. § 103 as
being obvious over Keitoku in view of Harwood and Haddock or Takahashi. The
examiner’s rejection is set forth on pages 3 through 6 of the answer. Throughout
the opinion we make reference to the brief and the answer for the respective
details thereof.
OPINION

We have carefully considered the subject matter on appeal, the rejection
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejection. We have, likewise, reviewed and taken
into consideration, in reaching our decision, appellant’s arguments set forth in the
briefs along with the examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
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Appeal No. 2006-0146
Application No. 09/995,933

With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellant and the examiner, for the
reasons stated infra we will not sustain the examiner’s rejections of claims 1, 2,
4, 9, 10 and 12 under 35 U.S.C. § 103.
Appellant argues, on page 4 of the brief, that the disclosure of Keitoku
teaches away from installation of a hemispherical lens with a flat annular surface
mounted on the front face of the device. Further, appellant argues: “The
Examiner has not demonstrated any showing, teaching, or motivation in Keitoku
or Harwood for combining the references or indicating the desirability of
modifying the lens of Keitoku for mounting with a flat surface on the front face of
the device.” On page 5 of the brief, appellant argues:
No one skilled in the art would have looked to Harwood for such a
teaching or suggestion, since the lens of Harwood is intended to be used
underwater, while the lens of the appealed claims is intended to be used
in air. As such, the respective optical design or optimization problems are
completely different, and one cannot be used as a guide for the other.

The examiner responds, on pages 6 and 7 of the answer:
Although, the flat lens of prior art figures 8 and 9 may have been installed
from within the device, this action does not preclude anything being
attached to the outside surface at a later date. … Although, Keitoku sets
forth a solution in figs. 1-4, 6-7 of incorporating a hemispherical lens into
the original product in order to solve the identified problem, Keitoku is not
relied upon for the teaching of retrofitting, Harwood is. Therefore, the
solution of providing the hemispheric lens by retrofit as set forth in
Harwood rather than redesigning the original device to the [sic] increase
the acceptance angles of the device is an appropriate obviousness
rejection from the combined teachings of the references.

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Appeal No. 2006-0146
Application No. 09/995,933

We disagree with the examiner’s rationale. An obviousness analysis
commences with a review and consideration of all the pertinent evidence and
arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and arguments.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “[T]he Board must not
only assure that the requisite findings are made, based on evidence of record,
but must also explain the reasoning by which the findings are deemed to support
the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). When determining obviousness, “[t]he factual inquiry
whether to combine references must be thorough and searching.” Lee, 277 F.3d
at 1343, 61 USPQ2d at 1433, citing McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “It must be based
on objective evidence of record.” Id. “Broad conclusory statements regarding the
teaching of multiple references, standing alone, are not ‘evidence.’” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617. “Mere denials and
conclusory statements, however, are not sufficient to establish a genuine issue of
material fact.” Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617, citing
McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993). The Federal Circuit states that, “[t]he mere fact that
the prior art may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the desirability of
the modification.” In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780,
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1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). In addition, our reviewing court stated, that
when making an obviousness rejection based on combination, “there must be
some motivation, suggestion or teaching of the desirability of making the specific
combination that was made by Applicant” in Lee, 277 F.3d at 1343, 61 USPQ2d
at 1433 (quoting In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998)).
Claim 1 includes the limitation “securing the hemispheric lens to the face
of the previously-purchased remote-controlled retail electronic entertainment
device over the infrared receiver thereof, thereby increasing the acceptance
angle over which infrared remote control signals may be received.” Independent
claim 9 includes a similar limitation. The examiner has not provided any
objective evidence that teaches or suggests this feature. Keitoku teaches an
audiovisual apparatus which has a lens over the infrared photo-receiving device
for the remote control. However, we find no suggestion in Keitoku, that a lens
should be placed over a previously purchased audiovisual apparatus. Harwood
teaches a wide-angle lens assembly for an underwater camera. We find no
teaching or suggestion in Harwood that the lens assembly should be used over
the infrared receiving element of a remote controlled device. The examiner
asserts that Harwood provides suggestion to retrofit a device with a lens. We
disagree. Harwood teaches that the lens is separate from the camera so that the
camera is “rapidly returned to normal”, not as a “retrofit.” Thus, we do not find
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Application No. 09/995,933

that the examiner has presented objective evidence of motivation to combine the
references. Accordingly, we will not sustain the examiner’s rejection of
independent claims 1 and 9 or dependent claims 2, 4, 10 and 12 under 35 U.S.C.
§ 103.
In summary we will not sustain the examiner’s rejection of claims 1, 2, 4,
9, 10 and 12 under 35 U.S.C. § 103. The decision of the examiner is reversed.

REVERSED

HOWARD B. BLANKENSHIP
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/kis
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Appeal No. 2006-0146
Application No. 09/995,933

David S. Alavi
3762 West 11th Avenue
#408
Eugene, OR 97402

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