Ex Parte Denmeade

Board of Patent Appeals and Interferences

May 28, 2009

10388157 (B.P.A.I. May. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BEANSTALK VENTURES COMPANY
____________________

Appeal 2008-004348
Application 10/388,157
Technology Center 2800
____________________

Decided:1 May 29, 2009
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.3.4, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Beanstalk
Ventures Company (BVC), under 35 U.S.C. § 134(a) from a final rejection
of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Haven 6,637,888 Oct. 28, 2003
Derryberry 6,626,543 Sep. 30, 2003
Pinhanez 6,431,711 Aug. 13, 2002
Fujimori 6,406,151 Jun, 18, 2002

The Rejections on Appeal
The Examiner rejected claims 1-8 and 12-19 under 35 U.S.C. § 103 as
unpatentable over Derryberry and Fujimori.
The Examiner rejected claim 9 under 35 U.S.C. § 103 as unpatentable
over Derryberry, Fujimori, and Haven.
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103 as
unpatentable over Derryberry, Fujimori, and Pinhanez.

The Invention
The invention relates to a stand-alone image projection and audio
system. (Spec. 1:6-13.)
Claim 1 is reproduced below (Claims App’x 28:2-22):
1. A self-contained, portable, digital projector comprising:

a digital non-volatile storage device that produces a source data
signal;

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a microprocessor that is electrically connected to the digital
non-volatile storage device, said microprocessor generating an output
projection signal and an audio signal in response to the source data
signal of the digital non-volatile storage device;

a portable housing that is at least partly encloses said digital
non-volatile storage device and said microprocessor;

an image projection device that is at least partly contained in
said portable housing at times when said image is being projected,
said image projection device being electrically connected to said
microprocessor and also being responsive to the projector signal of
said microprocessor, said image projection device providing an image
display signal that illuminates a remote surface in response to the
projection signal from said microprocessor;

a control set that is mounted on said housing and that is
electrically connected to said microprocessor, said control set being
responsive to mechanical commands to provide control signals to said
microprocessor, said microprocessor being responsive to said control
signals to provide actuation signals to said digital non-volatile storage
device such that said digital nonvolatile storage device provides said
source data signal to said microprocessor in response to said actuation
signals; and

a speaker that is also at least partly contained in said portable
housing and that is electrically connected to said microprocessor, said
speaker providing audible sound in response to the audio signal of
said microprocessor.
B. ISSUE
1. Has BVC shown that the Examiner erred in concluding that
BVC’s claim 1 is unpatentable over the combined teachings of Fujimori and
Derryberry?
2. Has BVC shown that the date of Derryberry as prior art under
35 U.S.C. § 102(e)/103 cannot be the date of the Derryberry priority
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provisional application, for those teachings of Derryberry which are not
specifically directed to a speaker but are necessary for the rejection on
appeal?
C. FINDINGS OF FACT
1. Derryberry was filed on June 13, 2001 and claims priority to a
provisional patent application filed June 13, 2000 (“Derryberry
provisional”).
2. Derryberry discloses a projector with an integrated computer
device. (Derryberry 2:17-21.)
3. Derryberry provisional discloses a combined or integrated
projector/computer (“CIPC”). (Derryberry provisional p. 2, DESCRIPTION
section.)
4. According to both Derryberry and Derryberry provisional, the
integrated projector and computer device combines the electronic image
display function of a projector with the computing capability to generate and
store the electronic images. (Derryberry 3:66-4:8.) (Derryberry provisional
p. 2, DESCRIPTION section.)
5. Both Derryberry and Derryberry provisional disclose that there
are numerous other capabilities and functions of projectors, computers,
software applications and hardware attachments that are known in the arts
and can also be incorporated into the invention. (Derryberry 3:32-37.)
(Derryberry provisional pp. 2-3.)
6. Both Derryberry and Derryberry provisional disclose that the
computer and projector combination provides videoconferencing capability.
(Derryberry 3:57.) (Derryberry provisional p. 2, DESCRIPTION section.)
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7. BVC’s claim 1 includes this requirement about a speaker (App.
Br. 28, Claims App’x):
a speaker that is also at least partly contained in said
portable housing and that is electrically connected to said
microprocessor, said speaker providing audible sound in
response to the audio signal of said microprocessor.

8. Derryberry discloses that its projection system can include
speakers to present audio information but does not describe the location of
such speakers with respect to the housing of the projector. (Derryberry 3:64-
65.)
9. Derryberry provisional does not include any disclosure about
the use of a speaker, not even the general description contained in
Derryberry that a speaker may be used.
10. BVC does not dispute that Derryberry discloses all the
limitations of claim 1 except for the speaker requirement.
11. BVC does not dispute that Derryberry provisional has support
for that portion of Derryberry’s disclosure which is not specifically directed
to a speaker and which is relied on by the Examiner.
12. Fujimori discloses a projector 1 having an outer casing 2.
(Fujimori 5:38-42.)
13. In Fujimori, outer casing 2 includes integrated speakers 14R
and 14L contained within the casing. (Id. 5:62-65; Figs. 2A & 2B.)
D. PRINCIPLES OF LAW
Subject matter of a patent can be applied as prior art as of the date of a
priority provisional application if that subject matter is supported in the
provisional application under 35 U.S.C. § 112, first paragraph, and if the
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requirements of 35 U.S.C. § 119(e) are met. See Ex parte Yamaguchi, 88
USPQ2d 1606, 1611-12 (BPAI 2008).
A basis to combine teachings need not be expressly stated in any prior
art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There need
only be an articulated reasoning with rational underpinnings to support a
motivation to combine teachings. Id. at 988.
Where a rejection is based on multiple references, the test for
obviousness is not limited to what any one reference teaches, but rather is
based on what the combined teachings of the references would have
suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
It is not necessary that the inventions of the references be physically
combinable, without change, to render obvious the invention under review.
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
A reference teaches away from a claim feature only if it suggests that
the feature is unlikely to be productive for the result sought by the applicant
for patent. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
E. ANALYSIS
BVC has grouped all rejections with the rejection of claims 1-19 over
Derryberry and Fujimori and further grouped all claims in the context of that
rejection with claim 1. We need to address only the rejection of claim 1
over Derryberry and Fujimori.
While the Examiner referenced (Answer 5:8-11 and 5:15-16) the
general teaching in Derryberry about using a speaker (Derryberry 3:64-65),
the Examiner also stated on page 16, lines 1-2, that it is irrelevant whether
Derryberry teaches any speaker components as these components are taught
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by Fujimori. The general disclosure in Derryberry about a speaker was not
necessary for the rejection of claim 1. In pertinent part, the Examiner’s
explanation (Answer 15:20 to 16:4) reads as follows:
Fujimori teaches all the physical components of the speaker,
housing, and electrical components with regards to audio parts
of a projector. As far as teaching the actual components of a
projector with speakers and audio components, it is irrelevant
whether Derryberry teaches any speaker components as
these components are taught by Fujimori. Thus the
combination of Derryberry and Fujimori would result in the
claimed invention. (Emphasis added.)

Accordingly, for purposes of this decision, we disregard all teachings
in Derryberry specifically directed to the use of a speaker.
Subject matter of a patent can be applied as prior art as of the date of a
priority provisional application if that subject matter is supported in the
provisional application under 35 U.S.C. § 112, first paragraph, and if the
requirements of 35 U.S.C. § 119(e) are met. See Ex parte Yamaguchi, 88
USPQ2d at 1612. Here, BVC does not contend that Derryberry is not
entitled to the filing date of the Derryberry provisional, with regard to
Derryberry’s teachings not specifically directed to a speaker but necessary
for the rejection.
Thus, Derryberry is prior art under 35 U.S.C. § 102(e)/103 as of the
filing date of the Derryberry provisional for those portions of Derryberry’s
disclosure that are supported in the Derryberry provisional, consistent with
the principles set forth in In re Wertheim, 646 F.2d 527, 538-539 (CCPA
1981). Other than the disclosure about a speaker within the housing and
connected to and responsive to a microprocessor, BVC does not contend that
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any part of Derryberry’s disclosure is without support in the Derryberry
provisional.
BVC contends that it has antedated Derryberry by declarations and
exhibits filed under 37 C.F.R. § 1.131 and thus Derryberry is not available as
prior art. However, the antedating effort of BVC is premised on the basis
that the Examiner relied on the teachings in Derryberry about using a
speaker. Note BVC’s argument as reproduced below (Brief 7:11-21):
The Official Action’s motivation to combine those references
relies on Derryberry’s disclosure of speakers -- one of the key
elements of the claimed invention. However, the Official
Action refuses to recognize that the primary reference, the
Derryberry patent, had no support for “speakers” until June 13,
2001 -- the filing date of the non-provisional patent application.
The Derryberry Patent claims priority to Provisional
Application 60/211,071 (the “Provisional Application”), but
speakers are not disclosed in the Provisional Application. The
Applicant has sworn behind the non-provisional filing date of
the Derryberry’s first disclosure of speakers on June 13, 2001.
This means that there is no teaching in the Derryberry reference
to support the Official Action’s motivation to combine the
references as proposed. Thus, the combination is improper and
the claimed [invention] is patentable over the references on
which the official Action relies so that combination is not
permissible. (Emphasis in original.)

The argument is misdirected because the Examiner indicated that
whether Derryberry contains any disclosure about a speaker is irrelevant
in light of the fact that Fujimori contains all the teachings that are necessary
about the speaker limitation of claim 1 when combined with Derryberry.
BVC’s attempt to antedate Derryberry must fail (1) because BVC’s alleged
date of conception is not prior to the filing date of the Derryberry
provisional, and (2) because BVC does not assert that with respect to
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teachings not specifically directed to a speaker Derryberry is not entitled to
the effective filing date of the Derryberry provisional, June 13, 2000.
BVC’s antedating effort is ineffective to remove Derryberry as a prior
art reference, with regard to disclosure not specifically directed to a speaker.
To the extent that BVC argues that in any event Derryberry and
Fujimori would not have rendered obvious the invention of claim 1, the
argument is without merit.
The Examiner rejected claim 1 as unpatentable over the combination
of Derryberry and Fujimori. BVC evidently disputes that the combined
teachings of the two references satisfy the limitation of the claimed
invention, reproduced below, about a speaker in the same portable housing
partly enclosing the digital non-volatile storage device and connected and
responsive to a microprocessor:
a speaker that is also at least partly contained in said portable
housing and that is electrically connected to said microprocessor, said
speaker providing audible sound in response to the audio signal of
said microprocessor.

The Examiner determined that Derryberry discloses all the limitations
of claim 1 with the exception of the above-quoted limitation. To remedy the
deficiency, the Examiner relied on Fujimori as teaching the use of speakers
contained within a projector housing. The Examiner explained that a person
of ordinary skill in the art would have been “motivated to include the
speakers as they are well known (as evidenced by Fujimori) in projectors,
[and] are needed for several of intended capabilities of Derryberry’s
projector such as videoconferencing capability and to work with
microphones.” (Ans. 25:15-18.)
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Thus, the Examiner concluded that one with ordinary skill in the art
following the teachings of Derryberry and Fujimori would have incorporated
speakers in a combined computer and projector housing to enable audible
videoconferencing.
BVC does not dispute that Derryberry discloses all the limitations of
claim 1 except for the limitation relating to the speaker. BVC also does not
dispute that Fujimori discloses a projector housing having speakers
contained within the housing. Rather, BVC contends that the Derryberry
provisional teaches away from the use of speakers. (App. Br. 9:5-10.) BVC
argues that the Derryberry provisional teaches a projector that is made less
complex with fewer operational components. (Id. at 9:5-7.) According to
BVC, that teaching suggests simplifying the projector by excluding
additional features, such as speakers, rather than including them. (Id. at 9:7-
10.)
Because the rejection is based on Derryberry and Fujimori, and not
Derryberry provisional and Fujimori, we address BVC’s argument in the
context of Derryberry. BVC’s argument is unpersuasive. A reference
teaches away from a claim feature only if it suggests that the feature is
unlikely to be productive for the result sought by the applicant for patent.
See In re Gurley, 27 F.3d at 553. BVC has not identified anything in
Derryberry which indicates that for what BVC’s inventors want from a
speaker, including the speaker in the projector housing is unlikely to be
productive. Derryberry does not indicate to one with ordinary skill in the art
that a combined projector and computer cannot operate with an integrated
speaker in the same housing. The disclosure of a simplified housing that
does not include a speaker is not a teaching away from including a speaker
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in the housing. See Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73
F.3d 1085, 1090 (Fed. Cir. 1995) (non-disclosure of a feature is not the same
as a teaching away).
BVC also generally argues that there is no motivation to combine
Derryberry provisional’s electronic image projection device with Fujimori’s
teaching of integrated speakers. (Reply Br. 9:11-21.) We address the
argument in the context of Derryberry and not the Derryberry provisional
because the rejection is based on Derryberry.
We reject BVC’s argument. Derryberry discloses a projector with an
integrated computer. (Derryberry 2:17-21.) According to Derryberry, the
integrated projector and computer combines the electronic image display
function of a projector with the computing capability to generate and store
the electronic images. (Derryberry 3:66-4:8.) Also, Derryberry discloses
that there are numerous other capabilities and functions of projectors,
computers, software applications and hardware attachments that are known
in the arts and can also be incorporated into the invention. (Derryberry 3:32-
37.) Thus, Derryberry expressly teaches that additional components,
including known hardware attachments, may be incorporated into the
invention.
Fujimori discloses a projector 1 having an outer casing 2. (Fujimori
5:38-40.) In Fujimori, outer casing 2 includes integrated speakers 14R and
14L. (Id. 5:62-65; Figs. 2A & 2B.) That is, in Fujimori, the speakers are
contained within the same housing as the other features that make up the
projector.
The Examiner reasoned that one with ordinary skill in the art would
have modified the combined projector and computer of Derryberry to
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incorporate Fujimori’s integrated speakers for enabling audible
transmissions during videoconferences. A basis to combine teachings need
not be expressly stated in any prior art reference. In re Kahn, 441 F.3d at
989. There need only be an articulated reasoning with rational
underpinnings to support a motivation to combine teachings. Id. at 988.
The Examiner’s reasoning is credible. Derryberry discloses that the
combined computer and projector device provides videoconferencing
capability. (Derryberry 3:57.) One with ordinary skill in the art would not
have viewed that disclosure as limiting the device solely to the display of
images. Rather, the level of ordinary skill in the combined projector and
computer art is such that one with ordinary skill would have recognized the
desirability of having both audio and video capability available during
videoconferencing proceedings. The recognition that in videoconferencing
it would be desirable for the equipment to also support an audio capability is
not based on hindsight in light of BVC’s own disclosure but on the level of
ordinary skill in the art, particularly in light of Fujimori’s disclosure of the
use of integrated speakers within a projector. BVC has not shown why there
is error in the Examiner’s reasoning.
Moreover, Derryberry states that an object of the invention is to
provide an electronic image projector having integrated computer
capabilities. (Derryberry 2:17-19.) Derryberry also teaches that additional
hardware components known in the art may be incorporated into that
invention. (Derryberry 3:32-37.) Fujimori discloses speakers as hardware
components that are contained within a projector housing. In light of the
combined teachings of the references, a person of ordinary skill in the art
would have readily recognized that the housing of Derryberry’s combined
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projector and computer device may incorporate known hardware
attachments for projectors, such as speakers that are contained within the
projector housing as taught in Fujimori. Physically combining embodiments
of the references, without change, is not necessary to render the invention
obvious. In re Sneed, 710 F.2d at 1550. The Examiner reasonably
determined that the teachings of the references taken together from the
perspective of one with ordinary skill in the art would have suggested the
invention of claim 1 including a speaker at least partially contained within
the housing of a combined computer and projector.
BVC additionally argues that (App. Br. 22:11-16):
Fujimori discloses a projector that has integral speakers, but
Fujimori is merely a projector. It has no microprocessor as required
by Claims 1-19 . . . Although Fujimori describes speakers 14R and
14L, there is nothing in Fujimori to describe how these speakers might
be operated with an internal microprocessor.

That argument is misdirected. Whether or not Fujimori alone teaches
use of a speaker responsive to a microprocessor is of no moment. Where, as
here, a rejection is based on multiple references, the test for obviousness is
not limited to what any one reference teaches, but rather is based on what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. In re Keller, 642 F.2d at 425.
As noted above, Derryberry discloses the combination of a projector
and a microprocessor used for controlling the features of the projector. A
skilled artisan would have recognized that in combining Fujimori’s speakers
with Derryberry’s projector and microprocessor, the speakers would have
been configured for operation with the micro-processing capabilities already
disclosed in Derryberry for controlling features of the projector. A person of
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ordinary skill is one of ordinary creativity, not an automaton. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007). BVC has articulated insufficient
basis to find that one with ordinary skill and creativity in the art would not
have known how to connect the speakers to a microprocessor and make
them responsive to a microprocessor.
For the foregoing reasons, we conclude that in light of the combined
teachings of Derryberry and Fujimori, claim 1 would have been obvious to
one with ordinary skill in the art.
For the foregoing reasons, we sustain the rejections of: (1) claims 1-8
and 12-19 as unpatentable over Derryberry and Fujimori; (2) claim 9 as
unpatentable over Derryberry, Fujimori, and Haven; and (3) claims 10 and
11 as unpatentable over Derryberry, Fujimori, and Pinhanez.
F. CONCLUSION
1. BVC has not shown that the Examiner erred in concluding that
BVC’s claim 1 is unpatentable over the combined teachings of Fujimori and
Derryberry.
2. BVC has not shown that the date of Derryberry as prior art
under 35 U.S.C. § 102(e)/103 cannot be the date of the Derryberry priority
provisional application, for those teachings which are not specifically
directed to a speaker but are necessary for the rejection on appeal.
G. ORDER
The rejection of claims 1-8 and 12-19 under 35 U.S.C. § 103(a) as
unpatentable over Derryberry and Fujimori is affirmed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Derryberry, Fujimori, and Haven is affirmed.
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The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Derryberry, Fujimori, and Pinhanez is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb

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