Ex parte Jinsu Park

Board of Patent Appeals and Interferences

Jul 22, 1997

08024495 (B.P.A.I. Jul. 22, 1997)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JIN-SU PARK
____________
Appeal No. 95-1187
Application 08/024,495
____________
HEARD: 9 June 1997
____________
Before HARKCOM, Vice Chief Administrative Patent Judge, and
FLEMING and TORCZON, Administrative Patent Judges.
TORCZON, Administrative Patent Judge.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FINDINGS OF FACT
Nature of the appeal
1. The subject application for patent was filed 1 March
1993. (Paper 1 at 1.)
2. Applicant claims the benefit under 35 U.S.C. § 119 of
Korean patent application number 88-18099, filed 31 December
1988. Applicant also claims the benefit under 35 U.S.C. § 120 of
United States patent application numbers 07/398,927, filed
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Application 08/024,495
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28 August 1989 (now abandoned) and 07/681,843, filed 21 November
1990 (now abandoned). (Paper 4 at 2.)
3. Applicant appeals from the final rejection of claims 2
through 9. (Paper 14.)
4. As of the hearing, the examiner has allowed claims 2
through 7 and 9. Claim 8 remains rejected under 35 U.S.C.
§§ 102(b) and 103. No other claims are pending. (Paper 24.)
5. The subject matter of the invention is a locking method
for a system with an on-screen display, such as a videotape
recorder ("VTR"). According to Applicant,
The locking device on a VTR is generally used for the
purpose of keeping children from watching adult video
programs, by preventing their reproduction. The
conventional locking device for the above purpose is
used to display the status of the secret codes being
inputted by the viewer on an additional display unit[,]
such as a digitron, when locking or unlocking the VTR.
Meanwhile the character generator circuit is generally
incorporated in the video processing system such as [a]
VTR or digital television for displaying warning
information, channel or other character information on
a monitor.
(Paper 1 at 1.) Applicant provides an algorithm for operating a
device that uses the VTR or television display instead of an
additional display unit.
6. Claim 8 defines the invention as follows:
A locking method for controlling an on-screen
display system having a lock key on a keyboard or
remote control, said method comprising the steps of:
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checking for a key-data input signal from said
keyboard or remote control during a system power
standby mode of operation, and remaining in said system
power standby mode of operation until said checking
step identifies said key-data input signal as being
indicative of an input from said lock key;
displaying prompts, on a screen, for a lock
function setting state by employing an on-screen
display function when the checking step identifies said
key-data input signal as being indicative of an input
from said lock key and sequentially storing and
displaying, on said screen, a secret code input by a
user in response to said prompts;
immediately determining whether the on-screen
display system is in a locked state with said on-screen
display system preventing viewing of any video program
other than said prompts for said lock function setting
state after the secret code is input to the on-screen
display system;
storing the secret code as a lock code, clearing
said screen of said prompts and said secret code
displayed during the displaying step, and locking the
on-screen display system when the determining step
determines that the on-screen display system is not in
said locked state;
making a comparison between the secret code and a
stored lock code already in the on-screen display
system when the determining step determines that the
on-screen display system is in said locked state;
displaying an error message by utilizing the on-
screen display function when said comparison determines
that the secret code and the stored lock code do not
match each other; and
clearing the secret code from the screen and
unlocking the on-screen display system with said on-
screen display system enabling said viewing when said
comparison determines that the secret code and the
stored lock code match each other.
The rejection
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7. The examiner relied on the following references:
Bonneau et al. (Bonneau) 4,510,623 9 Apr. 1985
Amano et al. (Amano) 4,620,229 28 Oct. 1986
8. Claim 8 was rejected under 35 U.S.C. § 102 in view of
Bonneau, under section 102 in view of Amano, under section 103 in
view of Bonneau, and under section 103 in view of Amano.
(Paper 13 at 3.)
9. Applicant has not presented any evidence in support of
secondary considerations.
Bonneau does not anticipate claim 8
Paragraphs 10 through 18 set forth our fact findings for
each contested limitation.
"a lock key on a keyboard or remote control"
10. Applicant's disclosure offers scant information about
the lock key. (Paper 1 at 7-8.) Although the lock key must be
on the keyboard or the remote control, it need not be any
particular key. It could be any alphanumeric or a function key
that has no other role during the system power standby mode.
Neither the disclosure nor claim 8 bar the lock key from acting
in conjunction with other keys.
11. Bonneau teaches a four-digit security code D± D± D± D± E± ,
where D± is a digit key and E± is the enter key. (5:53-6:28.)
Bonneau also teaches that more or fewer digits may be used or
Appeal No. 95-1187
Application 08/024,495
The fact that the power to the overall system is off1
does not mean that no power is available to the remote control or
the "micom". By analogy, the power button on a standard
television remote control communicates with a detector in the
television that must receive some power even though the overall
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that characters may be substituted. (6:24-28.) We find that
Bonneau teaches at least one lock key within the meaning of the
claim.
"system power standby mode of operation"
12. Applicant defines "stand-by power" as "the power
consumption while the chip is not performing any read or write
operation." (Paper 25 at 5 (citing New IEEE Standard Dictionary
of Electrical and Electronic Terms (5th ed.).) According to
Applicant, this describes his "power stand-by mode of operation".
(Paper 25 at 5.) Standby power for an unspecified chip, however,
does not correlate to the claimed system power standby.
13. The specification does not describe a "system power
standby mode". The closest description relates to the system's
main power status. (Paper 1 at 7.) The specification discloses
a main program loop that runs whether the system power is on or
off. The lock-function is only executed if the main system power
is off (i.e., in standby status). Thus, we construe "checking
. . . during a system power standby mode" (claim 8) to mean
running the key-checking function while the main system power is
off. Bonneau discloses no equivalent requirement for starting1
Appeal No. 95-1187
Application 08/024,495
television is off.
Figure 4 shows six displays entitled "LOOK SET". The2
Korean priority document entitles the displays "LOCK SET", which
makes more sense in context. (Korean patent application number
88-18099, Fig. 3.)
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the locking process from a system-power-off state. Thus, Bonneau
does not anticipate the claimed invention.
Displaying prompts and the key code on the screen
14. Bonneau displays two kinds of prompts for entry of a
security code: a blank screen (8:22-24) and a blinking screen
(7:50-53). Bonneau displays the blank screen during security-
code entry so the code cannot be observed. Applicant, however,
discloses acts of prompting for each digit of the code
independently and of displaying each digit as it is entered.
(Paper 1 at 8-11; Fig. 4. ) Thus, Bonneau's display step is not2
equivalent to the claimed display step.
"immediately determining whether the
on-screen display is in a locked state"
15. Applicant argues that Bonneau's determination is not
immediate because one must press the enter key before the
determination is made. (Paper 25 at 9.) The enter key, however,
is within the range of equivalents for key code inputs (i.e., the
enter key is the last digit of the code) when claim 8 is broadly
construed -- as it must be during prosecution. Thus, Bonneau's
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determination after the enter key is detected is equivalent to
the claimed immediate determination.
storing the secret code, clearing the display,
and locking the system if it is unlocked
16. Applicant is mistaken in his belief that an old code in
Bonneau cannot be changed for twelve hours. (See 9:8-12.)
Bonneau can set, clear, and reset the code. Bonneau does not,
however, have a step equivalent to Applicant's process of
clearing the existing code or setting a new code each time.
(Paper 1 at 12-13.) Moreover, since Bonneau does not display the
code, it cannot clear the code from the display.
determining whether the system is locked
17. Both Applicant and Bonneau check a lock flag in memory.
Applicant's lock flag indicates whether the whole display device
is locked. (Paper 1 at 12.) Bonneau determines whether a
particular channel is locked. (5:33-46.) Broadly construed, a
system that is locked with respect to even one input (channel)
can be said to be locked. Thus, we find Bonneau's determination
to be equivalent to Applicant's claimed determination.
displaying an error message
when an incorrect code is entered
18. Bonneau displays a channel equivalent to the last two
digits of the incorrect code. (6:63-68.) Broadly construed,
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this is equivalent to an error message. It would certainly alert
the user to the fact that a mistake has been made.
Bonneau does not anticipate the claimed invention
19. After considering the contested limitations, we do not
find a preponderance of evidence supporting a finding of
anticipation under 35 U.S.C. § 102(b) in view of Bonneau.
Amano does not anticipate claim 8
Paragraphs 20 through 27 set forth our fact findings for
each contested limitation.
20. Applicant's arguments regarding Amano are substantially
the same as those for Bonneau so we will note only significant
differences.
"a lock key on a keyboard or remote control"
21. Amano's PPC (programmable pickup center) key (5:16-20)
anticipates Applicant's claimed lock key since the signal from
the PPC key is used as a trigger for the lockout operations.
(Compare 6:39-41 with Paper 1 at 8.) The fact that the PPC key
may be pressed many times to achieve many different functions
does not alter this finding. Nothing in the claim or the
specification limits the lock key to only one use. Rather, the
lock key is only defined in terms of a particular triggering
function at a particular time. The PPC meets that definition.
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"system power standby mode of operation"
22. Amano has nothing equivalent to Applicant's claim
limitation that the system power be off during the checking step.
The system power is on during Amano's code entry steps. (5:36-
45; Fig. 3.)
"immediately determining whether the
on-screen display is in a locked state"
23. As with Bonneau, the argument that Amano does not
immediately determine the lock state (Paper 25 at 8) is
unavailing. The PPC key can be broadly construed as part of the
code sequence. Consequently, the fact that the PPC key must be
pressed before the determination begins does not remove Amano
from the scope of claim 8.
storing the secret code, clearing the display,
and locking the system if it is unlocked
24. Amano is silent about whether the entered lock code is
stored. Nothing in Amano suggests a step equivalent to
Applicant's step of storing a new code if the system is not
locked.
determining whether the system is locked
25. As with Bonneau's system, Amano's system can be said to
be locked when any channel is locked within the broadest
permissible meaning of claim 8. Thus, Applicant's argument that
Amano's system is not locked (Paper 25 at 10) is not correct.
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displaying an error message
when an incorrect code is entered
26. Amano discloses the broad equivalent of an error
message display. If the tuner is tuned to a blocked channel, the
screen says "BLOCKED". (6:51-56; Fig. 4F.) If the user does not
enter the correct code, the screen will still say "BLOCKED".
(6:65-7:3.) Thus, the "BLOCKED" screen is equivalent to
Applicant's claimed error message since it effectively conveys to
the user that the unlocking step was not successful.
Amano does not anticipate the claimed invention
27. In light of the above findings, the preponderance of
evidence does not support a finding of anticipation under
35 U.S.C. § 102(b) in view of Amano.
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CONCLUSIONS OF LAW
Claim construction
Scope of claim 8
1. During prosecution, claims are given their broadest
reasonable interpretation consistent with the specification. In
re Snead, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983).
The steps in claim 8 must be construed to
cover corresponding acts in the specification
2. Claim 8 is written in step-plus-function format, which
triggers a presumption that its steps must be construed to cover
the corresponding acts in the specification. 35 U.S.C. § 112;
see also York Prods. Inc. v. Central Tractor Farm & Family Ctr.,
99 F.3d 1568, 1574, 40 USPQ2d 1619, 1623 (Fed. Cir. 1996) (Use of
"means" language triggers the presumption.); In re Cohn, 438 F.2d
989, 999, 169 USPQ 95, 97 (CCPA 1971) (applying then-paragraph
three to a similarly worded method claim).
3. This presumption finds support in the record, where
both Applicant and the examiner discuss the equivalence of
various elements. (E.g., Paper 25 at 11-12; Paper 26 at 4-5.)
Moreover, claim 8 recites broad functions in comparison to the
specificity of the disclosure (e.g., Paper 1, Figs. 3A & 3B),
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which further suggests an intent to claim in terms of broad
functions instead of specific steps.
4. At the hearing, Applicant's agent stated that the claim
did not fall within paragraph six, but he offered no explanation
for his statement. On this record, Applicant has not overcome
the presumption that paragraph six applies. Hence, we must
construe claim 8 to cover to the acts disclosed in the
specification or their equivalents. 35 U.S.C. § 112; In re
Donaldson Co., 16 F.3d 1189, 1195 n.5, 29 USPQ2d 1845, 1850 n.5
(Fed. Cir. 1994) (in banc); Valmont Indus. v. Reinke Mfg.,
983 F.2d 1039, 1041-42, 25 USPQ2d 1451, 1453-54 (Fed. Cir. 1993).
The subject matter of claim 8 was not obvious
5. Even if the invention is not identically disclosed or
described in the prior art reference, it is unpatentable if the
claimed subject matter would have been obvious to a person having
ordinary skill in the art. 35 U.S.C. § 103(a).
6. A determination of obviousness based on a particular
prior art reference requires a suggestion or motivation to modify
the teachings of that reference. This suggestion or motivation
need not be expressly stated. B.F. Goodrich Co. v. Aircraft
Braking Sys., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir.
1996).
Appeal No. 95-1187
Application 08/024,495
The examiner did not refuse to enter the reply brief.3
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7. The examiner bears the burden of establishing
unpatentability by a preponderance of evidence. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
8. Curiously, Applicant does not challenge the examiner's
rejections for obviousness in his brief.
9. Even the reply brief, which is ostensibly limited to
new points raised in the examiner's answer, 37 CFR § 1.193(b),3
only mentions obviousness in passing. (Paper 30 at 6 n.5, 7 n.8,
and 10, 11, and 12.)
10. When we asked Applicant's agent at the hearing about
his arguments against the obviousness rejections, he indicated
that they were the same as his arguments regarding anticipation.
Obviousness and anticipation are, however, different rejections
requiring different analyses.
11. Applicant complains that the examiner has improperly
dissected claim 8 rather than view the claim in its entirety.
(Paper 30 at 6 n.5.) Applicant points specifically to the
dispute over the equivalence of power standby to blocked
channels. (Paper 30 at 6-7.)
12. As we have already noted in the fact findings, the
arguments of both the examiner and Applicant are inconsistent
with the language of claim 8 and the specification. Claim 8 uses
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the phrase "system power standby" (emphasis added), which we have
construed to mean the power of the system is off.
13. Neither of the references teaches or suggests a reason
to initiate the lockout operation while the system power is off.
Although it would be simple enough to modify Bonneau or Amano to
operate that way, we see no motivation to do so. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Thus,
we cannot conclude that the subject matter of claim 8 would have
been obvious in light of Bonneau or Amano.
14. We do not, however, agree with Applicant that Bonneau
does not teach or render obvious the step of displaying the code
on-screen. (Paper 30 at 10.) Bonneau expressly teaches causing
the display to be blank so the code cannot be observed. (8:22-
24.) Nevertheless, a reference is valid for all it would have
suggested to a person having ordinary skill in the art. The fact
that Bonneau has deliberately chosen one of two possible options
(display the code for convenience, hide the code for security),
does not mean that the alternative choice would have been lost on
the artisan.
DECISION
The record does not support a finding of anticipation or a
conclusion of obviousness in light of Bonneau or Amano for
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claim 8, when properly construed. Consequently, all of the
rejections on appeal are reversed.
REVERSED
GARY V. HARKCOM, Vice Chief )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-1187
Application 08/024,495
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