Ex Parte Jeon

Board of Patent Appeals and Interferences

Dec 22, 2009

10777655 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte YOUNG JAE JEON
_____________

Appeal 2009-0069791
Application 10/777,655
Technology Center 2400
______________

Decided: December 24, 2009
_______________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is LG Electronics Inc.
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STATEMENT OF THE CASE
Appellant filed a notice of appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-5 and 7-31, which were all of the
claims pending at that time, under 35 U.S.C. § 103(a). In an “Amendment
Under 37 CFR § 1.116” received September 5, 2007, and approved for entry
in an Advisory Action mailed October 17, 2007, Appellant revised
independent claims 1, 9, and 15 to include the limitations recited in
respective dependent claims 7, 14, and 27, and canceled those claims.
Consequently, the only claims now before us are claims 1-5, 8-13, 15-26,
and 28-31.
Oral argument was heard on December 3, 2009.2
We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a
new ground of rejection.

A. Appellant’s invention3
Appellant’s invention is a home network system and a method of
providing the operation history for a home network system. Specification
¶ 0002.

2 “[A]rguments not presented in the brief or reply brief and made for the
first time at the oral hearing are not normally entitled to consideration.”
MPEP § 1205.02 (8th ed., rev. 7, July 2008) (citing In re Chiddix,
209 USPQ 78 (Comm’r Pat. 1980)).
3 References herein to Appellant’s Specification are to the Application as
filed rather than to corresponding Patent Application Publication
2004/0162884 A1.
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In the “Discussion of the Related Art” portion of the “Background of
the Invention” (id. ¶¶ 0003-0006), Appellant explains that “[i]n general, a
typical home network system includes a master device and a plurality of
slave devices,” that “some of the typical master devices are a television (TV)
receiver, a personal computer (PC) and an Internet-ready refrigerator,” and
that “[t]he master appliances have a memory for sharing information with
salve [sic: slave4] devices connected in a network.” Id. ¶ 0004. The
“Discussion of the Related Art” also describes a BLOCK function as
follows:

4 This typographical error was corrected by an “Amendment in Response to
Non-Final Office Action” received July 7, 2005, at 2.
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In such [a] home network system, when a slave device
receives a status request signal from the master device, it always
sends a response signal (e.g., a message or event signal) back to
the master device. Therefore, when a large number of slave
devices are connected to the network and are in operation, the
master device may have problems in properly receiving and
displaying all the message or event information sent by all the
slave devices. Due to this reason, a user may be greatly disturbed
when trying to use or operate the master device. One of the
known functions for eliminating this overload problem is a
BLOCK function, which may be activated in the master device for
not displaying (blocking) the message signals sent by the slave
devices for a predefined period of time. Therefore, it is
impossible for a user to view or check the messages which are
sent by the slave devices during the time the BLOCK function was
activated.
Id. ¶ 0005. The master devices of the existing home network systems do not
store any messages or data received from the slave devices. Id. ¶ 0006. As a
result, a user is unable to check previous operation history data of the slave
devices. Id.
Appellant’s Figure 1 is reproduced below.

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Figure 1 illustrates a home network system according to Appellant’s
invention. Id. ¶ 0016. The home network system includes a plurality of
slave devices and a master device operatively connected to the slave devices.
Id. ¶ 0019. Some of the examples of the slave devices are an electric rice
cooker, a refrigerator, a heat oven, a microwave oven, and an air conditioner.
Id. The master device can be an electrical device having data display and
user interface capabilities, such as a television (TV) receiver, a refrigerator
with a display panel, a personal computer (PC), or a personal data assistant
(PDA) device. Id.
Appellant’s Figure 2 is reproduced below.
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Figure 2 illustrates Appellant’s method of providing an operation
history for a home network system. Id. ¶ 0017.
In step 301, the master device connected to the home network system
may be set to Power-on Mode or Standby Mode. Id. ¶ 0023. After all the
slave devices in the network are identified by the microprocessor 22 (Fig. 1)
in step S302, the microprocessor starts monitoring the slave devices by
sending status request signals to the slave devices, respectively, in step
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S303. Id. ¶¶ 0024, 0025. A response signal sent by a slave device may
include data (e.g., a message) indicating the current operation status (or
condition) of the slave device. Id. If it is determined in step S304 that any
response signal is received from the slave devices, the microprocessor 22
stores the operation status data included in each response signal in the
storage (e.g., a memory) 21 of the master device in step S305, regardless of
whether the BLOCK function of the master device is currently activated or
not. Id. ¶ 0026. The BLOCK function, as noted above, prevents any
message sent by each slave device from being displayed on the display unit
23 of the master device when the message is received. Id. ¶ 0022.
When, in step S306, a user makes a request for accessing to the
operation history data stored in the storage 21, the user can select one or
more options for selecting the portion of the operation history data he or she
wishes to access (view). Id. ¶ 0029.

B. The claims
The independent claims before us are claims 1, 9, and 15, of which
claim 1 is reproduced:
1. A home network system comprising:
at least one slave device; and
a television receiver operatively connected to the at least
one slave device, the television receiver comprising:
a microprocessor operatively connected to the at least one
slave device for repeatedly sending a status request signal to the
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at least one slave device and receiving one or more response
signals from the at least one slave device;
a memory coupled to the microprocessor for constructing
an operation history database by cumulatively storing operation
status data of the at least one slave device included in each
response signal, wherein the microprocessor extracts data from
the operation history database when a history inquiry request is
received from a user; and
a display unit coupled to the microprocessor for
displaying the extracted operation history data,
wherein (1) the operation status data includes data related
to specific functions performed by the at least one slave device,
(2) the television receiver includes a capability to activate a
message BLOCK function which prevents messages sent from
the at least one slave device from being displayed, and (3) the
memory cumulatively stores the operation status data included
in each response signal even when the message BLOCK
function of the television receiver is currently activated.
Claims App. (Br. 31). The subject matter added by amendment to claim 1
from claim 7 consists of the “BLOCK function” limitations recited in the
“wherein” clause. “Amendment Under 37 CFR § 1.116,” received Sept. 5,
2007, at 2.

C. The references
The rejections are based on the following references:5
Klosterman et al. (“Klosterman”) US 2002/0092017 A1 Jul. 11, 2002

5 Because the availability of the references as prior art against Appellant’s
claims is not at issue, only the issue or publication dates are being provided.
(Continued on next page.)
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Smyers US 6,430,629 B1 Aug. 6, 2002
Dara-Abrams et al. (“Dara-Abrams”) US 6,826,512 B2 Nov. 30, 2004
Aizu et al. (“Aizu”) US 6,838,978 B2 Jan. 4, 2005
Sitnik US 6,988,276 B2 Jan. 17, 2006

D. The rejections
The Examiner agrees (Answer 3, para. 6) that the grounds of rejection
before us are correctly stated in the Brief as follows:
Claims 1, 3-5, 9, 12, 15, 18-23, 25, 26, 28, 29, and 31 stand rejected
under 35 U.S.C. § 103(a) for obviousness over Smyers in view of Sitnik and
Klosterman. (Br. 14.)
Claims 2, 11, 13, 16, and 17 stand rejected under § 103(a) for
obviousness over Smyers, Sitnik, and Klosterman further in view of Dara-
Abrams (identified in the Brief as U.S. Patent 6,852,512). (Id. at 15.)
Claims 8, 10, 24, and 30 stand rejected under § 103(a) for obviousness
over Smyers, Sitnik, and Klosterman further in view of Aizu. (Id. at 16.)

E. Claim grouping
Appellant argues independent claims 1, 9, and 15 as a group. (Br. 17-
24). We select claim 1 as representative of these claims. 37 C.F.R.
§ 41.50(c)(1)(vii) (2009).

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THE ISSUE
Appellant has the burden on appeal to show reversible error by the
Examiner in maintaining the rejection. See In re Kahn, 441 F.3d 977, 985-
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” (citation omitted)).
The principal issue before us is whether Appellant has shown that the
Examiner erred in concluding that it would have been obvious to combine
the teachings of Smyers (with the monitor being implemented as a TV
receiver) with those of Klosterman in a way that satisfies claim 1.

ANALYSIS
Smyers discloses a monitor for an IEEE 1394 home network. Smyers,
col. 1, ll. 6-10. An example of such a home network can include a central
controller that turns on a Set Top Box (STB) and a VCR at a pre-
programmed time to record a program. Id. at col. 1, ll. 15-18.
Smyers’s invention comprises a network monitor, including a device
for obtaining information by monitoring the state of devices in a 1394 home
network, and means for storing the obtained information. Id. at col. 1, ll. 37-
41.
Figure 1 of Smyers is reproduced below.
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Figure 1 is a block diagram of Smyers’s 1394 home network monitor
(unnumbered) connected to a 1394 home network. Id. at col. 1, ll. 52-54.
The home network has multiple nodes, shown in Figure 1 as a VCR 110, a
digital camera 120, a set top box (STB) 130, and a thermometer 140. Id. at
col. 2, ll. 9-12. By means of a “user interface 60 [sic: 160],” a user can
instruct the monitor 10 to monitor the states of the various nodes in the 1394
home network and record the information in the storage means 80. Id. at
col. 2, ll. 34-37. When a home user so desires, he or she can examine the
information log stored in storage 80. Id. at col. 2, ll. 52-53.
When comparing Smyers to claim 1 as it read prior to its above-noted
revision to include the limitations of claim 7, the Examiner found that
Smyers discloses all of the claimed subject matter except using a television
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receiver as the monitor and relies on Sitnik for such a teaching, citing
Sitnik’s discussion of in-home networks at column 1, lines 25-36, under the
heading “Background of the Invention.” Final Action 4-5. During oral
argument, counsel for Appellant conceded the obviousness of implementing
Smyers’s monitor as a television receiver. We therefore find it unnecessary
to consider whether the Examiner erred in relying on Sitnik for such a
teaching.
For a teaching of the “BLOCK function” limitations added to claim 1
from claim 7, the Examiner relies on Klosterman. Klosterman’s disclosed
invention relates generally to television systems, and more particularly, to
the interception of television programming signals tuned by a television and
the replacement or overlay of said tuned television programming signals
with alternative video and/or audio programming and/or with graphics
and/or text. Klosterman ¶ 0002. Specifically, Klosterman’s invention
provides methods and systems to replace and/or modify the advertisements
that can be seen and heard by the television viewer. Id. ¶ 0010.
One of Klosterman’s disclosed embodiments employs a “blocking”
function. Specifically, in one embodiment of an EPG (Electronic Program
Guide6) implementation, Klosterman’s invention relies on an audio blocking
bit (“ABB”) and/or a video blocking bit (“VBB”) of the channel ID entries
in the channel data table and on the “show list” entries in the show list data
structures depicted in Figures 2A and 2B in order to determine whether to

6 Klosterman ¶ 0008.
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block the video and/or audio signals currently tuned by the viewer’s
television set. Id. ¶ 0060. If either of audio and visual blocking is activated,
the system can access an advertising database according to a preprogrammed
set of instructions dependent upon criteria such as the time of day, the day of
the week, the type of program that the viewer was watching immediately
before activating the EPG, and/or the channel to which the viewer was tuned
immediately before activating the EPG. Id. ¶ 0063. The preprogrammed set
of instructions determines the appropriate replacement advertisement to
display in the appropriate window and/or windows of the EPG display. Id.
The Examiner, after characterizing Klosterman’s system as
“allow[ing] television programming signals to be received or stored in the
receiver device while the display of the signal is blocked from view or
replaced with alternative graphics and/or text” (Final Action 16), concluded
that
[i]t would therefore be obvious to one of ordinary skill in
the art at the time of the invention to combine and/or modify
Smyers’[s] invention, with the feature of a master device that
includes a capability to activate a message BLOCK function
which prevents messages sent from the at least on slave device
from being displayed, and wherein the memory cumulatively
stores the operation status data included in each response signal,
regardless of whether a message BLOCK function of the master
device is currently activated or not, as disclosed by Klosterman,
for the motivation of blocking out undesired or unwanted
television signal programs (i.e., commercials and advertisements)
according to viewer preferences [0003-0006].
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Id. at 17 (emphasis omitted) (third brackets in original). We understand the
Examiner to be proposing to use a blocking function like Klosterman’s in
Smyers for the purpose of blocking the display of data obtained from
Smyers’s nodes (e.g., VCR 110, digital camera 120, set top box (STB) 130,
and thermometer 140). We agree with Appellant that, even assuming for the
sake of argument that an artisan would have considered Klosterman to be
analogous prior art, the effect of modifying Smyers in this way would be to
block display of the historical data, which is the only type of data Smyers
describes as being displayed, thereby rendering Smyers inoperative for its
intended purpose. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)
(not obvious to modify a prior art device if the modification would render
the device inoperable for its intended purpose). Specifically, Appellant
argues that
the statement that one would be motivated to block Smyers’[s]
operational history displays, which a user explicitly wants to
display in Smyers, is counterproductive and, would effectively
frustrate a user of Smyers’[s] system by blocking the very
operational history reports that user has asked for. This is an
example of where the proposed modification of Smyers by
Klosterman would result in an inoperative device in the sense that
Smyers would be precluded from operating as intended.
(Br. 23.) We note that the Examiner has not provided a response to this
argument by Appellant.
For the foregoing reasons, the rejection of independent claims 1, 9,
and 15 for obviousness over Smyers in view of Sitnik and Klosterman is
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reversed, as is the rejection on the same ground of dependent claims 3-5, 12,
18-23, 25, 26, 28, 29, and 31.
The rejection of dependent claims 2, 11, 13, 16, and 17 for
obviousness over Smyers, Sitnik, and Klosterman in view of Dara-Abrams is
reversed because Dara-Abrams does not cure the above-noted deficiencies in
the other three references.
Similarly, the rejection of dependent claims 8, 10, 24, and 30 for
obviousness over Smyers, Sitnik, and Klosterman in view of Aizu is
reversed because Aizu does not cure the above-noted deficiencies in the
other three references.

CONCLUSION OF LAW
The Examiner’s rejections of claims 1-5, 8-13, 15-26, and 28-31
under 35 U.S.C. § 103(a) for obviousness over the cited prior art are
reversed.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we are entering
the following new ground of rejection against claim 1.
Claim 1 is hereby rejected under 35 U.S.C. § 103(a) for obviousness
over the subject matter described in paragraphs 0004 and 0005 in the
“Discussion of the Related Art” portion of Appellant’s Specification in view
of Smyers.
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A statement by an applicant during prosecution identifying certain
matter not the work of the same inventor as “prior art” is an admission that
the matter is prior art. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d
1346, 1354 (Fed. Cir. 2003). Such an admission can be relied on as support
for a rejection under 35 U.S.C. § 103(a). See In re Nomiya, 509 F.2d 566,
570-71 (CCPA 1975) (“We see no reason why appellants’ representations in
their application should not be accepted at face value as admissions that
Figs. 1 and 2 may be considered ‘prior art’ for any purpose, including use as
evidence of obviousness under § 103.”). Furthermore, a person is barred by
35 U.S.C. § 102(f) from obtaining a patent on that which is obtained from
someone else whose possession of the subject matter is inherently “prior.”
See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1401 (Fed. Cir.
1997) (“Section 102(f) provides that a person shall be entitled to a patent
unless ‘he did not himself invent the subject matter sought to be patented.’
This is a derivation provision, which provides that one may not obtain a
patent on that which is obtained from someone else whose possession of the
subject matter is inherently ‘prior.’”). Derivation of an invention from the
work of another can be applied as § 102(f) prior art in a rejection based on
§§ 102(f) and 103. Id. at 1403-04 (“[S]ubject matter derived from another
not only is itself unpatentable to the party who derived it under § 102(f), but,
when combined with other prior art, may make a resulting obvious invention
unpatentable to that party under a combination of §§ 102(f) and 103.”).
As noted above, Appellant’s paragraph 0004 explains that “[i]n
general, a typical home network system includes a master device and a
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plurality of slave devices,” that “some of the typical master devices are a
television (TV) receiver, a personal computer (PC) and an Internet-ready
refrigerator,” and that “[t]he master appliances have a memory for sharing
information with salve [sic: slave] devices connected in a network.”
Specification ¶ 0004 (emphasis added). The terms “typical” and “have” in
this paragraph suggest that the use of a TV receiver as a master device in a
home network system and the provision of a master device with a memory
were not invented by Appellant and thus constitute prior art with respect to
Appellant’s claimed invention.
Likewise, the characterization of the BLOCK function described in
paragraph 0004, reproduced (again) below, as “known” suggests that the
BLOCK function, too, is prior art with respect to Appellant’s claimed
invention:
In such [a] home network system, when a slave device
receives a status request signal from the master device, it always
sends a response signal (e.g., a message or event signal) back to
the master device. Therefore, when a large number of slave
devices are connected to the network and are in operation, the
master device may have problems in properly receiving and
displaying all the message or event information sent by all the
slave devices. Due to this reason, a user may be greatly disturbed
when trying to use or operate the master device. One of the
known functions for eliminating this overload problem is a
BLOCK function, which may be activated in the master device for
not displaying (blocking) the message signals sent by the slave
devices for a predefined period of time.
Id. ¶ 0005 (emphasis added). Appellant has not filed a declaration or
affidavit under 37 C.F.R. § 1.132 asserting that the subject matter described
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in paragraphs 0004 and 0005 was invented by Appellant and thus does not
constitute prior art with respect to Appellant’s claims. See Riverwood,
324 F.3d at 1355 (“One’s own work may not be considered prior art in the
absence of a statutory basis . . . .”). Under these circumstances, it is
appropriate to treat that subject matter of paragraphs 0004 and 0005 as
admitted prior art and/or as prior art under 35 U.S.C. § 102(f). That subject
matter is hereinafter referred to as the “admitted prior art.”
Comparing claim 1 to the admitted prior art, the differences are: (1)
the television receiver in the admitted prior art is not described as
“repeatedly” sending status request signals to at least one a slave device; and
(2) the memory in the television receiver is not described as “cumulatively
stor[ing] the operation status data included in each response signal even
when the message BLOCK function of the television receiver is currently
activated.” As explained above, Smyers discloses using the monitor 10 to
monitor and record the states of the various nodes in a storage log 80 of a
home network (Smyers, col. 2, ll. 34-37) so that “[w]hen a home user so
desires, he or she can examine the information log stored in storage 80.” Id.
at col. 2, ll. 52-53. Furthermore, the monitoring and recording can be
programmed to occur repeatedly. For example, the controller can be
programmed to examine the temperature measured by thermometer 140
every thirty minutes. Id. at col. 2, ll. 37-41.
We conclude that it would have been obvious to modify the admitted
prior art so to include Smyers’s disclosed recording and subsequent log
playback capabilities. It also would have been obvious to record the
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monitored values for later log playback even if the BLOCK function has
been activated by the user, thereby preventing immediate display of those
values. This combination of reference teachings comports with the KSR
principle that “[t]he 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). See also
id. (“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”).
Although we have not entered a new ground of rejection based on the
above prior art against any of the remaining claims pursuant to our
discretionary authority under 37 C.F.R. § 41.50(b), that does not mean we
have determined that the remaining claims are patentable over that prior art.
Rather, we leave the patentability determination regarding these claims to
the Examiner. See MPEP § 1213.02.
Regarding the new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b), that paragraph explains that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Appellant, within two months from the date of this decision, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
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rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
37 C.F.R. § 41.50(b) (2009).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(v) (2009).

REVERSED; 37 C.F.R. § 41.50(b)

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