Ex Parte ChenDownload PDFPatent Trial and Appeal BoardFeb 28, 201310978446 (P.T.A.B. Feb. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/978,446 11/02/2004 Duke Chen OP-093000705 2515 46103 7590 03/01/2013 HDLS Patent & Trademark Services P.O. BOX 220746 CHANTILLY, VA 20153-0746 EXAMINER YENKE, BRIAN P ART UNIT PAPER NUMBER 2422 MAIL DATE DELIVERY MODE 03/01/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DUKE CHEN ____________ Appeal 2011-010216 Application 10/978,446 Technology Center 2400 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 3, 5-7, 11, and 12, which are all the claims remaining in the application. Claims 2, 4, and 8-10 were canceled. (Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-010216 Application 10/978,446 2 Appellant’s Invention The invention at issue on appeal concerns a liquid crystal display (LCD) car monitor that does not block a driver’s rear vision. (Spec. 1:3-10; 5:6-6:6; Abstract.)1 Representative Claim Independent claim 7, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 7. A liquid crystal display (LCD) car monitor frame structure without blocking a driver’s rear vision, comprising: a LCD monitor having two elongate holes; a roof mount fixed to a car ceiling, which includes a receptive space; and two connecting members, each with one end pivotally connected to the roof mount and the other end slidably installed inside one of the two elongate holes so that the LCD monitor can be rotated with respect to the roof mount to be stowed in the receptive space as the connecting members being located in the elongated holes respectively, whereby an unobstructed space is formed between the roof mount and the LCD monitor when the LCD monitor is rotated out and pulled down to a pre-determined position for utilization by a driver, corresponding with the view angle of a rearview mirror, and the length of the unobstructed space is equal to the length of the connecting member. 1 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”) filed February 28, 2011. We also refer to the Examiner’s Answer (“Ans.”) mailed March 16, 2011. Appeal 2011-010216 Application 10/978,446 3 Rejection on Appeal The Examiner rejects claims 1, 3, 5-7, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over US 6,795,757 B2, issued Sep. 21, 2004 (“Sadahiro”), US 6,655,646 B2, issued Dec. 2, 2003 (“Johnson”), and US 6,246,449 B1, issued Jun. 12, 2001 (“Rosen”). ISSUE Based upon our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in finding that Sadahiro, Johnson, and Rosen would have collectively taught or suggested: (1) “two connecting members, each with one end . . . slidably installed inside one of the two elongate holes,” as recited in Appellant’s independent claim 7; and (2) “whereby an unobstructed space is formed between the roof mount and the LCD monitor,” as recited in Appellant’s independent claim 1 and 7? ANALYSIS With respect to Appellant’s independent claim 7, we agree with Appellant that Sadahiro, Johnson, and Rosen do not teach or suggest the limitation of “two connecting members, each with one end . . . slidably installed inside one of the two elongate holes” (claim 7), and that the Examiner never addressed Appellant’s arguments with respect to the limitation. (Br. 7; see Ans. 3-5, 10-11.) In addition, we disagree with the Examiner’s overly-broad interpretation of Johnson’s connecting members (Telescoping Arms, 45A/B) Appeal 2011-010216 Application 10/978,446 4 in combination with Sadahiro’s LCD monitor and roof mount (rear seat display, 40), such that the combination provides an “unobstructed space . . . formed between the roof mount and the LCD monitor” (claim 7). (Ans. 3- 10.) Sadahiro does not describe a separate roof mount and LCD monitor. Instead, Sadahiro describes a display (40) including a storage portion (40a), a rotary portion (40b), and a display portion (40c). (Sadahiro, col. 5, ll. 3-4; Fig. 1.) The entire display (40) attaches to various rails and mechanisms (126, 127, and 128) that move the display right/left, forward/backward, and rotate the display. (Sadahiro, col. 9, l. 53 to col. 10, l. 18; Figs. 4, 5.) Even if one were to incorporate Johnson’s telescoping arms (45A/B), it is unclear how or why one would do so in view of Sadahiro’s disclosure of a unitary display. At most, the Examiner has set forth classic impermissible hindsight reasoning for making the proffered combination. The motivation relied upon by the Examiner must not come solely from the description of the Appellant’s invention in the Specification. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight.” This results in “a poster child for impermissible hindsight reasoning.”). With respect to Appellant’s independent claim 1, we also agree with Appellant that Sadahiro, Johnson, and Rosen do not teach or suggest the limitation of “an unobstructed space is formed between the roof mount and Appeal 2011-010216 Application 10/978,446 5 the LCD monitor” (claim 1), for the same reasons discussed with respect to claim 7, supra. Consequently, we are constrained by the record before us to conclude that Sadahiro, Johnson, and Rosen fail to disclose, teach, or suggest the recited features of Appellant’s independent claims 1and 7, and the rejection of claims 1 and 7 fails to establish a prima facie case of obviousness. Appellant’s dependent claims 3, 5, 6, 11, and 12 depend on and stand with claims 1 and 7, respectively. Accordingly, we reverse the Examiner’s obviousness rejection of claims 1, 3, 5-7, 11, and 12. CONCLUSION OF LAW Appellant has shown that the Examiner erred in rejecting claims 1, 3, 5-7, 11, and 12 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1, 3, 5-7, 11, and 12 under 35 U.S.C. § 103(a). REVERSED peb Copy with citationCopy as parenthetical citation