Ex parte Deguchi

Board of Patent Appeals and Interferences

Jun 2, 2000

08305643 (B.P.A.I. Jun. 2, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KAZUO DEGUCHI
_____________
Appeal No. 1998-1320
Application No. 08/305,643
______________
ON BRIEF
_______________
Before BARRETT, RUGGIERO and BARRY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-18, all of the claims pending in the present
application.
The claimed invention relates to a display for a mobile
radio telephone apparatus in which a single 7, 8 segment
Appeal No. 1998-1320
Application No. 08/305,643
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light-emitting diode (LED) display is utilized to display
alphanumeric characters one at a time in sequence as dialed.
The single display also provides indications of various
operating parameters of the telephone apparatus by using
predetermined ones of the same segments used to display the
alphanumeric characters. Appellant asserts at page 2 of the
specification that the use of a single 7, 8 segment display in
place of conventional multiple digit display results in a
saving in cost and complexity.
Claim 1 is illustrative of the invention and reads as
follows:
1. A display for a mobile radio telephone
apparatus, comprising:
a single 7, 8 segment LED display having
seven segments for representation of
alphanumeric characters through selective
activation of various combinations of
said seven segments, and an eighth segment
for representation of an operational
parameter of said apparatus;
means for designating predetermined ones
of said seven segments for representation
of other operational parameters of said
apparatus; and
means for controlling selective activation
of said 7, 8 segment LED display in response
to signals from circuitry of said apparatus
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Application No. 08/305,643
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so as to selectively represent alphanumeric
characters and operational parameters
of said apparatus.
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Application No. 08/305,643
The Examiner additionally relies on Appellant’s1
admissions as to the prior art at page 1 of the specification.
The Appeal Brief was filed December 3, 1996. In2
response to the Examiner’s Answer dated February 4, 1997, a
Reply Brief was filed April 4, 1997 to which the Examiner
responded with a Supplemental Examiner’s Answer dated June 17,
1997. The Examiner submitted a further Supplemental
Examiner’s Answer dated October 22, 1997 in response to
Appellant’s Supplemental Reply Brief filed August 18, 1997.

4
The Examiner relies on the following prior art
references:1
Null et al. (Null) 4,320,255 Mar.
16, 1982
Digi-Key Corp. Brochure (Digi-key), Catalog No. 902, page
62 (Mar. - Apr. 1990).
Claims 1-18 stand finally rejected under 35 U.S.C. § 103
as being unpatentable over Appellant’s admissions as to the
prior art in view of Null and Digi-Key.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answers for the2
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner, the arguments
in support of the rejection and the evidence of obviousness
Appeal No. 1998-1320
Application No. 08/305,643
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relied upon by the Examiner as support for the rejection. We
have, likewise, reviewed and taken into consideration, in
reaching our decision,
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Application No. 08/305,643
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Appellant’s arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the invention set forth in claims 1-18.
Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
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Application No. 08/305,643
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at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1, 7, and 13, the
Examiner, as the basis for the obviousness rejection, proposes
to modify the mobile radio telephone display described as
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Application No. 08/305,643
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admitted prior art at page 1 of Appellant’s specification.
This admitted prior art, illustrated in Appellant’s Figure 1,
describes plural segmented digit displays for representing
alphanumeric characters and further includes indicator display
components for displaying the status of various system
operational parameters, but lacks a teaching of utilizing
predetermined ones of the alphanumeric display segments for
representing the system operational parameters. To address
this deficiency, the Examiner turns to Null which discloses
plural segmented digital displays for a radio in which
predetermined ones of the segments that make up each display
are utilized to represent other operational parameters of the
system as illustrated in Figures 5A-5D of Null. In the
Examiner’s view (Answer, page 4), the skilled artisan would
have found it obvious to incorporate Null’s feature of
utilizing various segments of a segmented numeric display for
representing other system parameters in the system of the
admitted prior art in order to eliminate the need for separate
operational status indicators.
The Examiner further adds the Digi-Key reference to the
combination of the admitted prior art and Null as providing a
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teaching of a single 7, 8 segment LED display, suggesting that
one of ordinary skill would recognize the cost savings of a
single as opposed to plural segmented digital displays. To
bolster his position, the Examiner cites In re Karlson, 311
F.2d 581, 136 USPQ 184 (CCPA 1963), which the Examiner asserts
(Answer, page 5) stands for the principle that omission of an
element and its function in a combination where the remaining
elements perform the same functions involves only routine
skill in the art.
In response, Appellant’s arguments (Brief, page 7)
primarily focus on the contention that the teachings of the
Digi-Key reference are insufficient to establish a prima facie
case of obviousness for modifying the plural displays of
either the admitted prior art system or Null to meet the
claimed requirement of a single 7, 8 segment LED display, a
feature in each of the independent claims. Upon careful
review of the applied prior art in light of the arguments of
record, we are in agreement with Appellant’s position as
stated in the Briefs. Our interpretation of the disclosure of
Digi-Key coincides with that of Appellant, i.e., this
reference teaches nothing more than that single digit displays
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exist. While it is reasonable to assume that a single 7, 8
segment LED display would be less expensive than multiple
7, 8 segment displays, as asserted by the Examiner, this fact
alone does not, in our view, establish that a skilled artisan
would have found it obvious to reconfigure the multiple digit
displays of either the admitted prior art or Null to provide
all of the claimed indicator functions in a single segmented
LED display. The 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, 1783-84 n.14 (Fed. Cir.
1992).
We further agree with Appellant that the Examiner’s
reliance on In re Karlson, id., is misplaced with regard to
the present factual situation. Contrary to the facts
presented in Karlson in which certain elements and their
functions are removed and the retained elements perform the
same functions as before, the
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Application No. 08/305,643
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functions of each of the omitted segmented displays in
Appellant’s claimed system are retained. In other words,
Appellant’s claimed system is reconfigured to perform the
functions of the removed displays by providing for display of
alphanumeric characters and system parameters by the single
7, 8 segment display. Our reviewing authority has held that
the omission of an element and the retention of its function
is an indicia of unobviousness. In re Edge, 359 F.2d 896,
899,
149 USPQ 556, 557 (CCPA 1966).
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For the reasons discussed supra, it is our opinion that,
since the Examiner has not established a prima facie case of
obviousness, the 35 U.S.C. § 103 rejection of independent
claims 1, 7, and 13, as well as claims 2-6, 8-12, and 14-18
dependent thereon, cannot be sustained. Accordingly, the
decision of the Examiner rejecting claims 1-18 is reversed.
REVERSED

)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JFR:hh
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Application No. 08/305,643
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