Ex Parte James

Board of Patent Appeals and Interferences

Jun 29, 2009

10957094 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDMUND H. JAMES III
____________

Appeal 2009-001595
Application 10/957,094
Technology Center 2800
____________

Decided:1 June 29, 2009
____________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and ELENI
MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 8-11, 13-21, 23 and 24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, 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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STATEMENT OF CASE
Appellant’s claimed invention is an imaging system including an
operator module for detachable electrical and mechanical attachment to an
interface port on an imaging apparatus such as a printer (Spec. ¶¶ [0010],
[0018]). The operator module has memory for storing data such as digital
images from a digital camera memory card (Spec. ¶¶ [0032], [0035]). When
the operator module is attached to the interface port it is “configured to
operate as a printer operator panel” for printing data such as digital images
(cls. 1, 16; Spec. ¶¶ [0024], [0028]). When the operator module is not
attached to the interface port it is configured to facilitate playback of data
such as digital images (Spec. ¶¶ [0010], [0038]-[0039]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An imaging system, comprising:

an imaging apparatus having a print engine and an
interface port; and

an operator module configured with an
electrical/mechanical interface for detachable electrical
and mechanical attachment to said interface port, said
operator module including a memory device for storing
data, a user interface, a dedicated power source
electrically coupled to said user interface and said
memory, and a communication port separate from said
electrical/mechanical interface to facilitate
communication with an external device,

said operator module being configured to operate
as a printer operator panel to facilitate user interaction
with said imaging apparatus when said operator module
is attached to said interface port,
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said operator module being configured to facilitate
playback of data when said operator module is detached
from said interface port.

REFERENCE
Wilkinson U.S. Pat. Pub. 2003/0202013 A1 Oct. 30, 2003
Holloway U.S. Pat. Pub. 2004/0252966 A1 Dec. 16, 2004
(filed Jun. 10, 2003)

The Examiner rejected claims 1-6, 11, 13-16, 18, 19, 21, 23, and 24
under 35 U.S.C. § 102(e) based upon the teachings of Holloway.
The Examiner rejected claims 1-6, 8-11, 13-21, 23, and 24 under 35
U.S.C. § 103(a) based upon the teachings of Wilkinson, and Holloway.2
Appellant contends that Holloway does not disclose “a printer
operator panel to facilitate user interaction with said imaging apparatus”
(App. Br. 14; Reply Br. 7).
Appellant further contends the Examiner has provided no motivation
for modifying the display device of Wilkinson to include the communication
port of Holloway to obtain Appellant’s claimed invention (App. Br. 23).

ISSUES
Did Appellant establish that the Examiner erred in finding Holloway
teaches a printer operator panel?

2 The Examiner rejected claims 1-4, 6, 8-11, 13-17, 19-21, 23-24 over
Wilkinson under 35 U.S.C. § 102(e) in the Final Office Action mailed
March 13, 2007. However, the Examiner noted that this rejection was a
typographical error and has been withdrawn (Ans. 3).
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Did Appellant establish that the Examiner erred by improperly
combining the display device of Wilkinson with the communication port of
Holloway?
FINDINGS OF FACT
1. Appellant’s claimed invention is directed to an operator module
16 and system 10 including an imaging apparatus 12, wherein the imaging
apparatus can be a printer (Spec. ¶¶ [0017]-[0018]; Fig. 1). The operator
module includes a memory device 56 for receiving data such as digital
images from a digital camera memory card for storage, access, and printing
(Spec. ¶¶ [0032], [0035]).
2. Appellant’s operator module is configured to operate as a
printer operator panel to facilitate user interaction and can function as a
“standard operator panel for imaging apparatus 12” (Spec. ¶ [0024]).
Specifically, a controller 52 in the operator module can perform the
functions of a “typical printer operator panel” (Spec. ¶ [0028]).
3. Holloway teaches a portable video and audio storage and
playback device 10 adapted to receive and store incoming data as files on a
memory component (¶¶ [0022], [0024], [0026]; Figs. 1-2). These files
include “still picture[s]” for storage and display (¶ [0057]). A user interface
to the device includes a display 16 and buttons 14 for controlling file
recording, playback and management functions (¶¶ [0029]-[0030], [0085];
Fig. 1).
4. The playback device of Holloway has an “interface for
connection to a general purpose computer, or another interface of the video
board assembly 50, [that] can be used to establish an operational connection
to other devices. For example . . . a printer” (¶ [0063]). Holloway also
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teaches communication from the device 10 to display 22 via various
communication ports (¶¶ [0045], [0042]-[0043]; Figs. 4, 6, 8).
5. Wilkinson teaches a modular display device 10 having a user
interface, including a display 12 and digital selection member 18, such as
buttons, for displaying a digital image received from a digital data storage
device 16 via a receiving port 14 (¶¶ [0002], [0046], [0048]; Fig. 1). The
display device is coupled to a printer module 50 (¶¶ [0055]-[0056]). The
display device can be configured to enable user control of the printer (¶¶
[0055], [0061], [0068]-[0069]) and to facilitate playback, storage, and
retrieval of data (video and sound images) in a memory device when the
modular display device is detached from the interface port (¶¶ [0005],
[0048]-[0049]).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, when considering
obviousness of a combination of known elements, the operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
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combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Further,
“it is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.” In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; . . . Rather, the test is 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).

ANALYSIS
Anticipation
The Examiner rejected claims 1-6, 11, 13-16, 18, 19, 21, 23, and 24
under 35 U.S.C. § 102(e) as anticipated by Holloway. Appellant argues this
rejection with respect to claims 1-6, 11, 13-16, 18, 19, 21, 23, and 24.
Appellant presented substantially the same arguments with respect to claims
1 and 16 (App. Br. 15), thus, this rejection is addressed with respect to
representative claim 1. Because the arguments presented with respect to the
dependent claims rely on those provided with respect to claims 1 and 16, the
dependent claims stand or fall therewith (App. Br. 15-16).
The Examiner finds Holloway teaches all the elements of claim 1
(Ans. 4-5). Particularly, the Examiner finds Holloway includes a user
interface with a display 16 and buttons 14 as shown in Fig. 1 for controlling
file recording, playback and management functions (Ans. 4; FF 3). The
Examiner also finds that Holloway teaches the operator module being
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“configured to operate as a printer operator panel to facilitate user
interaction with said imaging apparatus” (Ans. 4; FF 4). Appellant contends
Holloway does not teach or suggest supplying video data to a printer to
facilitate “user interaction” with the printer as claimed. Rather Holloway
merely discloses an “operational connection” to devices such as a printer
(App. Br. 14).
While Appellant acknowledges that Holloway requires an electrical
interface and supports the transfer of data, Appellant argues that the device
of Holloway cannot serve as a “printer operator panel” to facilitate “user
interaction” because a computer that performs the functions (Reply Br. 6-7).
Rather, Appellant asserts, the “operational connection” disclosed in
Holloway only facilitates the transfer of data; whereas the operator module
of Appellant’s invention is configured to operate as a printer module to
facilitate user interaction (Reply Br. 7). However, as found by the
Examiner, the connection of the device in Holloway to a printer does require
a user interface as the printer would otherwise print all stored information as
soon as a connection is made. Further, the buttons in Holloway allow a user
to carry out file selection and management (Ans. 10; FF 3).
Appellant also contends, “it is well known in the art that a printer
operator panel is a panel that permits a user to make selections relating to
printer functions” (App. Br. 14). Appellant argues there is nothing in
Holloway disclosing that device 10 is used as an operator panel for an
imaging apparatus such as a printer (App. Br. 14). With the existence of
many different printers having a variety of features, it is clear that a printer
operator panel as defined by Appellant is very broad. Claim 1 only requires
the printer operator panel “to facilitate user interaction” with the imaging
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apparatus. As recited above, Holloway teaches a user interface having a
display and buttons for controlling various functions and including an
“operational connection” with a printer (FF 3, 4). Thus, Holloway teaches
facilitating user interaction with an imaging apparatus as a printer operator
panel.
Appellant has not shown the Examiner erred in finding Holloway
facilitates user interaction when in operational connection with a printer and
thereby operates as a printer operator panel. Thus, claims 1-6, 11, 13-16, 18,
19, 21, 23, and 24 are anticipated by Holloway.

Obviousness
The Examiner rejected claims 1-6, 8-11, 13-21, 23, and 24 under 35
U.S.C. § 103(a) based upon the teachings of Wilkinson and Holloway.
Appellant argues this rejection with respect to claims 1-6, 8-11, 13-21, 23,
and 24. Appellant presented substantially the same arguments regarding
claims 1 and 16 (App. Br. 15), thus, this rejection is addressed with respect
to representative claim 1. Because the arguments presented relating to the
dependent claims rely on those provided concerning claims 1 and 16, the
dependent claims stand or fall therewith (App. Br. 22-25).
The Examiner finds that Wilkinson teaches an imaging system having
a printer and a display device (Ans. 6-7; FF 5). However, the Examiner
states that “Wilkinson does not disclose another communication port, such
as an audio port, separate from said electrical/mechanical interface (USB) to
facilitate communication with an external device” (Ans. 8). The Examiner
then cites Holloway as teaching this feature (Ans. 9). Referring to
paragraphs [0022] and [0023] of Holloway, the Examiner finds that an
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ordinarily skilled artisan would be aware that it is common practice to
connect a display device to an external device such as a camcorder or larger
display and also to modify Wilkinson with the various communication ports
of Holloway for the benefit of enabling presentation of video on a larger
screen and audio on larger speakers (Ans. 13).
Appellant states that modifying Wilkinson in this manner appears
plausible “at first consideration” (App. Br. 23). Appellant argues, however,
that there is no motivation for modifying the display device 10 to include a
communication port as taught by Holloway because Wilkinson already
permits interfacing to multiple devices through stackable modules (App. Br.
23). Appellant further argues “even assuming arguendo that one skilled in
the art were motivated to modify Wilkinson, the modification would be for
the design of additional stackable modules for interfacing to the Wilkinson
module 30, and not for a modification of display device 10 of Wilkinson”
(App. Br. 23; Reply Br. 10).
As the Examiner finds, Holloway shows that a device storing video
and audio data can be coupled to display devices such as televisions
providing enhanced display capabilities of stored digital data (FF 4). Thus,
Holloway provides the requisite motivation to improve Wilkinson’s display.
Appellant has not shown the Examiner erred in finding one skilled in the art
at the time of the invention would have been motivated to modify Wilkinson
to include a communication port to facilitate communication with an
external device.
Further, Appellant appears to be attacking the references separately
and/or arguing that the physical structure of Wilkinson must somehow be
combined with the physical structure of Holloway to require additional
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stackable modules and not the addition of another communication port as
determined by the Examiner (App. Br. 23.). Holloway was cited to show
that an ordinarily skilled artisan at the time of Appellant’s invention would
have known the advantages of adding at least one additional communication
port to a portable display device to facilitate communication with one or
more external devices (Ans. 14). It is not necessary that the references be
physically combinable. See In re Sneed, 710 F.2d at 1550. Further, the test
for obviousness is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. See In re Keller 642 F.2d
at 425.
As set forth above, adding at least one additional communication port
to an imaging system would have been known at the time of Appellant’s
invention. Thus, the Examiner’s rejection of claims 1-6, 8-11, 13-21, 23,
and 24 is sustained.

CONCLUSION
Appellant did not establish that the Examiner erred in finding
Holloway teaches all of the features of Appellant’s claimed invention
including a printer operator panel.
Appellant did not establish that the Examiner improperly combined
the display device of Wilkinson with the communication port of Holloway.

DECISION
The Examiner’s decision rejecting claims 1-6, 8-11, 13-21, 23, and 24
is affirmed.
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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

gvw

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