Ex parte Jaeger

Board of Patent Appeals and Interferences

Mar 9, 2001

08703418 (B.P.A.I. Mar. 9, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DENNY JAEGER
____________
Appeal No. 1998-3127
Application No. 08/703,418
____________
ON BRIEF
____________
Before KRASS, FLEMING, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-4, all of the claims pending in the present the
application.
The claimed invention relates to a radio having a
plurality of user programmable station selection switch
Appeal No. 1998-3127
Application No. 08/703,418
2
buttons which are depressed to select a particular station. A
plurality of flat panel display screens, each of which forms a
portion of the front surface of separate ones of the switch
buttons, are controlled to display indicia which identifies
the user selected station on depression of a particular switch
button.
Claim 1 is illustrative of the invention and reads as
follows:
1. In a radio having a plurality of station selector
switches each having a button which may be depressed to select
a particular station and having means for enabling a user of
the radio to condition each button for selection of a
particular station that is chosen by the user, the improvement
comprising a plurality of flat panel display screens for
generating visible images, each of said screens forming at
least a portion of the front surface of a separate one of said
buttons, and control means for causing each of said screens to
display indicia which identifies the user chosen station that
is selected by depression of the particular button.
The Examiner relies on the following prior art:
Goldmacher et al. (Goldmacher) 3,499,702 Mar. 10,
1970
Murao et al. (Murao) 3,922,067 Nov. 25,
1975
Nishimura et al. (Nishimura) 4,295,224 Oct.
13,
1981
Leeder et al. (Leeder) GB2019628 Oct. 31,
1979
(Published UK Pat. Application)
Appeal No. 1998-3127
Application No. 08/703,418
The Appeal Brief was filed January 5, 1998. In response1
to the Examiner’s Answer dated March 16, 1998, a Reply Brief
was filed April 21, 1998, which was acknowledged and entered
by the Examiner without further comment in the communication
dated May 29, 1998.
3
Claims 1-3 stand finally rejected under 35 U.S.C. § 103
as being unpatentable over Nishimura in view of Leeder. Claim
4 stands finally rejected under 35 U.S.C. § 103 as being
unpatentable over Nishimura in view of Leeder, Goldmacher, and
Murao.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the1
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence of obviousness relied upon by the Examiner as support
for the rejections. 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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Application No. 08/703,418
4
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 obviousness of the invention as set forth
in claims 1-4. 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
at the claimed invention. Such reason must stem from some
Appeal No. 1998-3127
Application No. 08/703,418
5
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 Hospital Systems, Inc. v.
Montefiore Hospital, 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).
Appeal No. 1998-3127
Application No. 08/703,418
6
With respect to independent claim 1, the Examiner
proposes to modify the radio frequency tuning indicator
disclosure of Nishimura which, as illustrated in Figure 1,
describes a plurality of user conditionable station selector
switch buttons. As recognized by the Examiner, the selector
switch buttons of Nishimura do not include a flat panel
display screen on the front surface of the buttons as claimed.
To address this deficiency, the Examiner turns to Leeder which
describes a flat panel display screen incorporated in a
programmable function key for displaying a message indicator
on the face of the key. In the Examiner’s line of reasoning
as stated at page 4 of the Answer:
Thus, it would have been obvious to one having
ordinary skill in the art at the time the
invention was made to modify each button of
Nishimura to have a flat panel display screen
as taught by Leeder so as to provide a direct
feedback to the operator indicating that the
desired key function has been initiated after
the key is hit, and to reduce the likelihood of
operator confusion, especially in comparison
with unlighted keys of the prior art.
In response, Appellant asserts that the Examiner has
failed to establish a prima facie case of obviousness since
the proposed combination of Nishimura and Leeder would not
Appeal No. 1998-3127
Application No. 08/703,418
7
result in the invention as set forth in independent claim 1
(Brief, page 7). After 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 review of Leeder finds that, contrary to the
Examiner’s interpretation, while a message is provided on the
programmable keys that changes according to the programmed key
function, there is no suggestion that such message is related
to the function performed by the keys. The Examiner at least
impliedly recognizes this shortcoming of Leeder since the
stated rationale for modifying Nishimura with Leeder rests
solely on a desire to provide a user with a feedback
indication that a desired key function has been initiated. In
our view, however, the resulting modification of Nishimura
with Leeder would at best provide an indication to a user that
a particular switch button has been pressed, but there would
be no indication that a particular station selected by
depression of the switch button would be identified as
required by claim 1.
As to the Examiner’s assertion (Answer, page 7) that,
since the disclosed programmable key of Leeder can have any
Appeal No. 1998-3127
Application No. 08/703,418
8
message selected by a user, a displayed message on the
modified key of Nishimura could include radio station
identification information, we find no evidentiary support on
the record, outside of Appellant’s own disclosure, for such an
assertion. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge or capable
of unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
Accordingly, we do not sustain the Examiner’s obviousness
rejection of claim 1, nor of claims 2 and 3 dependent thereon,
based on the combination of Nishimura and Leeder.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103 rejection of dependent claim 4 in which the Goldmacher
and Murao references are added to the combination of Nishimura
and Leeder, we reverse this rejection as well. It is apparent
from the Examiner’s analysis (Answer, page 5) that Goldmacher
and Murao are relied on solely to address the claimed parallel
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9
busbar conductor structure of the display screen. We find
nothing, however, in the disclosures of Goldmacher or Murao
which would overcome the innate deficiencies of Nishimura and
Leeder discussed supra.
In conclusion, since the Examiner has not established a
prima facie case of obviousness, the 35 U.S.C. § 103 rejection
of independent claim 1 and claims 2-4 dependent thereon,
cannot be sustained. Therefore, the decision of the Examiner
rejecting claims 1-4 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 1998-3127
Application No. 08/703,418
10
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
lp
Appeal No. 1998-3127
Application No. 08/703,418
11
HARRIS ZIMMERMAN
1330 BROADWAY SUITE 710
OAKLAND CA 94612
Leticia
Appeal No. 1998-3127
Application No. 08/703,418
APJ RUGGIERO
APJ KRASS
APJ FLEMING
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: September 27, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT