Ex Parte Friedman

Board of Patent Appeals and Interferences

Mar 8, 2010

10740744 (B.P.A.I. Mar. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEE G. FRIEDMAN
____________

Appeal 2009-004221
Application 10/740,744
Technology Center 2100
____________

Decided: March 8, 2010
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY, III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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STATEMENT OF THE CASE
Appellant’s invention identifies an input device among a number of
similar input devices that are connected to a personal computer (PC). Using
the input device, the user provides a “signal stimulus” (e.g., an audible input
signal such as speaking into a microphone, or a visual input signal such as
hand waving in front of a camera), and the system detects the signal
generated by the input device. See generally Spec. ¶¶ 0009, 0010, and 0027-
33.
Claim 1 is reproduced below:
1. A computer system comprising:

a processor coupled with memory and with a plurality of
externally-accessible input ports; and

a device discovery system that polls all the plurality of
externally-accessible input ports to identify a user-desired input
device among a plurality of substantially similar input devices,
wherein the identification is carried out by detecting a signal that is
generated by the user-desired input device in response to a signal
stimulus provided by a user.

The Examiner relies on the following as evidence of unpatentability:
Fado US 6,266,571 B1 July 24, 2001
Brockway US 6,789,111 B1 Sept. 7, 2004
(filed Dec. 9, 1999)

Matthew Danda & Heather T. Brown, Home Networking with Microsoft®
Windows® XP: Step by Step 1-61 (2001), available at
http://proquest.safaribooksonline.com/print?xmlid=0735614350/ch08levlsec
2 (“Danda”).

1 Six printed pages of this reference were provided, and these page numbers
correspond sequentially to the pages provided.
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THE REJECTIONS
1. The Examiner rejected claims 1, 2, 6-8, 11, 17, 18, 20, 21, and 23
under 35 U.S.C. § 103(a) as unpatentable over Fado and Brockway. Ans.
3-9.2
2. The Examiner rejected claims 3-5, 9, 10, 12-16, 19, and 22 under
35 U.S.C. § 103(a) as unpatentable over Fado, Brockway, and Danda. Ans.
9-13.
At the outset, we note that Appellant’s assertions that the Office has
allegedly not provided Appellant with due process and Appellant’s request
to withdraw the finality of the office action (App. Br. 9-10) are petitionable
matters under 37 C.F.R. § 1.181—not appealable matters. Accordingly, we
will not address these issues. See Manual of Patent Examining Procedure
(MPEP), 8th ed., Rev. 7, §§ 1002 and 1201.
We next address the obviousness rejections.

THE OBVIOUSNESS REJECTION OVER FADO AND BROCKWAY
Claim Grouping
Appellant argues all claims together. See App. Br. 10-12.
Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Contentions
Regarding representative claim 1, the Examiner finds that Fado
discloses all recited limitations, except for a device discovery system that

2 Throughout this opinion, we refer to: (1) the Appeal Brief filed January 25,
2008; (2) the Examiner’s Answer mailed April 11, 2008; and (3) the Reply
Brief filed June 6, 2008.
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polls all the plurality of externally-accessible input ports. Ans. 3-4. The
Examiner relies on Brockway to teach this missing limitation so that
peripheral devices connected to input ports can be detected. Ans. 4.
Appellant argues that combining Brockway with Fado will
impermissibly change Fado’s principle of operation. App. Br. 10-12; Reply
Br. 5. In particular, Appellant contends that Fado only polls a port that has
been manually selected by the user, and that the graphical user interface
(GUI) is displayed based on the user’s selection. In Appellant’s view,
changing Fado to poll all input ports will impermissibly change Fado’s
operation of polling a manually-selected port. App. Br. 12.
The issues before us, then, are as follows:

ISSUES
(1) Under § 103, has the Examiner erred in finding the cited prior art
would have taught or suggested a device discovery system that polls all of
the externally-accessible input ports to identify a user-desired input device
among substantially similar devices?
(2) Under § 103, does combining Fado with Brockway render Fado
unsatisfactory for its intended purpose or impermissibly change Fado’s
principle of operation?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:

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Fado
1. Fado discloses a computer 1 with a processor 3 and peripheral
devices (e.g., microphone 27 and speaker 31). An audio interface (e.g., 29
and 33) is located between each peripheral device (e.g., microphone 27 and
speaker 31) and sound cards 21. Col. 15, ll. 26-38; Fig. 48.
2. Fado discloses using a Wizard to configure the audio interfaces of
the peripheral devices following the steps shown in Figure 1. Col. 2, ll. 39-
42 and col. 4, ll. 50-64; Fig. 1.
3. Fado’s configuration includes a Welcome page 80 at step 12 that
prompts the user to select whether to set up the microphone used in speech
recognition or adjust the audio level of recorded words. Col. 2, ll. 43-45,
col. 5, l. 51- col. 6, l. 14; Figs. 1-2.
4. Fado discloses an alternative GUI 90 if there is more than one
sound card in the computer system at step 14. Display 90 includes a first
drop-down list 94 of available sound cards for audio signal input and a
second drop-down list 96 of available sound cards for audio signal output.
The user selects the appropriate sound cards. Col. 6, ll. 30-47; Figs. 1 and 3.

Brockway
5. Brockway teaches a computer system 90 that includes a processor
94 coupled with memory 96 and input/output (I/O) ports 104 and 106. The
system also has a peripheral identification or detection unit 108 that
automatically detects and installs peripheral devices (e.g., printer 88). Col.
2, ll. 15-18 and col. 5, ll. 19-31; Fig. 3.
6. Brockway’s peripheral detection unit 108 polls its physical I/O
ports for the existence of a connected peripheral device at step 310 and
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detects if a peripheral device is attached to the I/O ports. The peripheral
identification unit 108 queries ports 104 and 106, one at a time, for an
identifying response from an attached device. The peripheral detection unit
108 is designed to detect identifying information (e.g., continuously
transmitted identifying signal from Plug and Play device 88). Col. 2, ll. 49-
63 and col. 7, ll. 26-49; Figs. 3 and 5.
7. Brockway discloses peripheral devices include printers, scanners,
and card readers, and each printer has a unique Plug and Play identifier that
is continuously transmitted by the peripheral device to its connected I/O
port. Col. 1, ll. 16-17 and col. 5, l. 67- col. 6, l. 3.

PRINCIPLES OF LAW
The ordering of references in an obviousness rejection is insignificant
regarding the Examiner’s obviousness determination. See In re Bush, 296
F.2d 491, 496 (CCPA 1961) (“[W]e deem it of no significance, but merely a
matter of exposition, that the rejection is stated to be A in view of B instead
of B in view of A, or to term one reference primary and the other
secondary.”)
If the proposed modification of the prior art would change the basic
principles of operation of the prior art being modified, the teachings of the
references are insufficient to render the claims obvious. In re Ratti, 270
F.2d 810, 813 (CCPA 1959).

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 which calls for, in pertinent
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part, a device discovery system that polls all the externally-accessible input
ports to identify a user-desired input device among substantially similar
input devices. The Examiner relies on Brockway to teach this polling
feature. Ans. 4. Brockway teaches a computer system (e.g., 90) that
includes a processor 94 coupled with memory 96 and externally-accessing
input ports (e.g., 104 and 106) and a device discovery system (e.g.,
peripheral detection unit 108) that automatically detects and installs
peripheral devices. FF 5. The device discovery system unit 108 polls all the
input ports to identify an input device among other input devices by
detecting a signal (e.g., identifying signal) that is generated by the input
device in response to a signal stimulus provided by the user (e.g., plugging
the device to port). See FF 6. Additionally, Brockway discloses various
peripheral devices, such as printers, can be connected to a computer, and
each printer has a unique identifier. See FF 7. Thus, Brockway also teaches
that the device discovery system polls an input port to identify an input
device (e.g., printer with a unique identifier) among substantially similar
input devices (e.g., a printer with another unique identifier).
Based on the above discussion, we find that Brockway teaches
all the limitations found in claim 1 and that the order of the prior art in
an obviousness rejection is insignificant to an obviousness
determination. See Bush, 296 F.2d at 496. Additionally, “[i]t is well
settled that ‘anticipation is the epitome of obviousness.”’ In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (citations omitted);
see also In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (noting that

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obviousness rejections can be based on references that happen to
anticipate the claimed subject matter). Appellant’s contentions that
Fado will be impermissibly changed are therefore moot.
Nonetheless, we additionally find that including Brockway’s
teaching with Fado’s system would not have changed Fado’s principle
of operation. Fado discloses an audio interface (e.g., 29 and 33)
between a computer 1 with a processor 3 and multiple input devices
(e.g., microphone 27 and speaker 31). FF 1. Ordinarily skilled
artisans would have recognized that including Brockway’s teachings
(FF 5-7) with Fado’s system would supplement Fado’s Wizard by
incorporating an automatic polling feature to detect all devices
attached to Fado’s system before configuring the attached input
devices (see FF 3). That is, an ordinarily skilled artisan would have
recognized this combination would have improved Fado’s computer
system by detecting automatically all attached input devices prior to
configuring the devices and would not destroy the Wizard’s ability to
receive the later-entered manual selections by the user as discussed by
Fado. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Fado also discloses the Wizard configures installed input
devices that are connected to a computer (FF 2), but fails to indicate
whether the Wizard is launched automatically or manually. See FF 1-
4. Brockway’s automating polling features (FF 5-7), however, would
have at least suggested launching Fado’s Wizard automatically after
polling so that each attached input device can be configured (FF 2).
Replacing a single manual activity of launching the Wizard with an
automatic means is also not inventive. See In re Venner, 262 F.2d 91,
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95 (CCPA 1958). Moreover, we see no reason why such a
replacement would destroy Fado’s overall manual selection ability
during configuration.
Additionally, we find an ordinarily skilled artisan would have
recognized using Brockway’s polling features to automate some, but
not all, portions of Fado’s configuration process. See FF 5. For
example, Fado discloses selecting appropriate sound cards at step 14.
FF 4. We see no reason why incorporating Brockway’s teachings (FF
5-7) with Fado would not have improved Fado’s device by detecting
automatically those devices associated with sound cards connected to
the computer, and skip over unnecessary options and manual
selections in Fado. Thus, we find the combination of Fado and
Brockway is nothing more than a predictable use of prior art elements
according to their established function. See KSR, 550 U.S. at 417.
We therefore find that combining Brockway with Fado would not
have rendered Fado unsatisfactory for its intended purpose nor
impermissibly changed Fado’s principle of operation.
For the foregoing reasons, the Examiner has not erred in rejecting
independent claim 1 based on Fado and Brockway. We therefore sustain the
rejection of claim 1, and claims 2, 6-8, 11, 17, 18, 20, 21, and 23 which fall
with claim 1.

THE OBVIOUSNESS REJECTION OVER FADO, BROCKWAY, AND DANDO
The Examiner rejected claims 3-5, 9, 10, 12-16, 19, and 22 under 35
U.S.C. § 103(a) as unpatentable over Fado, Brockway, and Danda. Ans.
9-13. Appellant does not argue any of these claims separately. See App. Br.
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10-12. The arguments and issues are thus the same as those in connection
with claim 1. For the above reasons, we are not persuaded by Appellant’s
arguments, and conclude that the Examiner has not erred in rejecting claims
3-5, 9, 10, 12-16, 19, and 22 under § 103 based on Fado, Brockway, and
Danda.

CONCLUSION
The Examiner has not erred in rejecting claims 1-23 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-23 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)(1)(iv).

AFFIRMED

pgc

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