Ex parte KONO

Board of Patent Appeals and Interferences

Nov 25, 1998

07890350 (B.P.A.I. Nov. 25, 1998)

Application for patent filed May 22, 1992. According1
to appellant, this application is a continuation of
Application 07/496,788, filed March 21, 1990, now abandoned.
1
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(2) is not binding precedent of the Board.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. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MITSURU KONO
__________
Appeal No. 95-3908
Application 07/890,3501
__________
ON BRIEF
__________
Before HAIRSTON, KRASS, and JERRY SMITH, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1, 3, 7, 8 and 17 through 23, all of the claims in the
Appeal No. 95-3908
Application No. 07/890,350
2
application.
The invention is directed to a portable audio/display
device for displaying and reproducing data in the form of
alphanumeric information, diagrams, graphics, music and sound
which are recorded on a mass storage medium.
Representative independent claim 1 is reproduced as
follows:
1. A compact portable audio/display electronic apparatus
comprising:
a compact portable casing capable of being held in one
hand and operated with the other hand of a user,
a hinged cover secured to one edge of a top surface of
said casing and pivoted to cover said casing top surface
constituting its closed position and pivoted to an upright
angular position relative to said top surface constituting its
open position,
a liquid crystal display formed on an inside surface of
said hinged cover for viewing by a user when said hinged cover
is in its open position,
compact mass storage memory means provided in a cavity in
said apparatus comprising a magneto-optic storage medium, said
memory characterized by having a data storage capacity that is
more than that of conventional memories and capable of
handling concurrently recording and access of both display and
audio data,
user interface means comprising a keyboard formed in said
apparatus top surface and including iconic input keys for
inquirable and inquisitorial access to data stored in said
compact mass storage means, said user interface means
overlying said compact mass storage means in said cavity,
Appeal No. 95-3908
Application No. 07/890,350
While neither appellant nor the examiner addresses the2
limitation of a “storage capacity that is more than that of
conventional memories” in the claim, we find the language a
bit odd since what is “conventional” now or when the instant
application was filed or during the term of any patent which
may issue is a continuously changing parameter.
3
said keyboard comprising a transparent touch key input
matrix on a top surface of said casing overlying a matrix of
liquid crystal display elements formed in said casing beneath
said top surface comprising said display, the keys of said
transparent touch key matrix in alignment with the display
elements of said liquid crystal matrix,
circuit control means for operating said mass storage
memory means, said user interface means and said display and
comprising:
means for recording alphanumeric and graphic display data
in said compact mass storage memory,
means to random access said data in response to
inquirable and inquisitorial input via said iconic input keys,
and
circuit means for synchronizing the reproduction of said
data for display and audio output whereby the display and
reproduction of said data is arranged in one compact housing
for the synchronized reproduction of the display of
information concurrently with the audio reproduction of
information directly associated with the displayed information
based upon user inputted inquirable and inquisitorial entries
via said iconic input keys.2
The examiner relies on the following references:
Thom Des. 277,962 Mar. 12, 1985
Washizuka 4,639,225 Jan. 27, 1987
Dunn 4,667,299 May 19, 1987
Krenz 4,669,053 May 26, 1987
Appeal No. 95-3908
Application No. 07/890,350
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Hattori 62-279585 Apr. 12, 1987
Claims 1, 3, 7, 8 and 17 through 23 stand rejected under
35 U.S.C. § 103. As evidence of obviousness, the examiner
cites Dunn and Hattori with regard to claims 1 and 19, adding
Washizuka with regard to claims 7, 8, 17 and 20 through 23.
With regard to claim 3, the examiner cites Dunn and Hattori
together with Krenz. Finally, the examiner cites Krenz in
view of Thom and Hattori with regard to claim 18.
Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
Turning first to the rejection of claims 1 and 19 under
35 U.S.C. § 103 in view of Dunn and Hattori, we will not
sustain this rejection because we agree with appellant that
there would have been no reason to combine the teachings of
these references.
The examiner contends that Dunn teaches the claimed
invention but for the “means for synchronizing the
reproduction of said data for display and audio output” so
that the information is displayed concurrently with the audio
reproduction of information directly associated with the
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Application No. 07/890,350
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displayed information. The examiner then relies on Hattori
for synchronizing display information and audio information
and concludes that it would have been obvious to have provided
Hattori’s means for synchronizing the display and audio
reproduction to the device of Dunn.
The question which comes to our mind is: Why provide such
synchronization in Dunn when Dunn is not interested in any
audio information which relates to text or graphical
information which might be displayed on Dunn’s screen? There
is simply no suggestion to the artisan to modify Dunn’s
system, which displays text or graphics unrelated to any audio
information, in a manner so as to synchronize the textual or
graphic display therein with the reproduction of related audio
information. The examiner appears to have taken references
which teach bits and pieces of the claimed subject matter and
combined them through a hindsight reconstruction of
appellant’s invention rather than for any reason that would be
fairly suggested by the references themselves or by any common
knowledge of artisans.
Claim 1 also recites a “means for recording...in said
compact mass storage memory.” While the examiner relies on
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Application No. 07/890,350
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Hattori for such a teaching, we agree with appellant that
Hattori appears to be directed to prerecorded CDs which are
used only for playback and not to a mass storage memory on
which data may be recorded. Now, we might agree with the
examiner that the limitation is so broadly recited in the
claim that “recording” could include the information that was
originally prerecorded on the disk. However, previously in
the claim, it was recited that the storage capacity of the
mass storage memory means is “capable of handling concurrently
recording and access of both display and audio data.” This
would seem to strongly imply that the “recording” of claim 1
does not refer to prerecorded information but, rather, to data
which is recorded on the mass storage memory means when using
the claimed apparatus.
Thus, we will not sustain the rejection of claims 1 and
19 under 35 U.S.C. § 103. Further, since claims 7, 8, 20 and
21 depend from claim 1 and we find that Washizuka does not
provide for the deficiencies noted supra with regard to claim
1, we also will not sustain the rejection of these claims
under 35 U.S.C.
§ 103.
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Application No. 07/890,350
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We turn now to the rejection of claims 17, 22 and 23
under 35 U.S.C. § 103 over Dunn, Hattori and Washizuka.
Again, because the examiner appears to have constructed the
combination of references by fitting together bits and pieces
of the claimed subject matter based on hindsight gleaned from
the instant claims, we will not sustain this rejection.
As appellant points out, at pages 12-13 of the principal
brief, the examiner appears to have ignored the claim
limitations relating to the first and second liquid crystal
displays and the dual function of the keys, along with their
specific cooperation with the other claimed elements. In the
response to this argument, at page 12 of the principal answer,
the examiner states that Dunn discloses a first liquid crystal
display on the inside cover while Hattori teaches a liquid
crystal keyboard. However true this might be, the examiner
has provided no convincing rationale as to why the artisan
would have chosen only the keyboard of Hattori to be combined
with only the inside cover display of Dunn. Again, the
examiner chooses only so much of one reference required by the
instant claims to be combined with only so much of another
reference in order to piece together the claimed subject
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Application No. 07/890,350
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matter without a fair suggestion as to why the artisan would
have been led to make the combination. This is improper under
35 U.S.C. § 103.
With regard to the “animated” claim limitation, the
examiner merely points to the disclosure of “cartoons” at
column 2, line 8 of Washizuka and concludes that the claim
limitation is taught. However, not only does it appear that
there would have been no motivation for the artisan to have
provided such “cartoons” in Dunn’s device, but the mere
disclosure of “cartoons” by Washizuka does not, necessarily,
suggests that Washizuka intends for “animated” pictorial
representations since animation requires some movement while
“cartoons” might include still pictures. Thus, at the very
least, speculation is required to find a teaching of the
claimed “animated pictorial representations.”
Turning to independent claim 18, the examiner now bases
the rejection on Krenz, Thom and Hattori, no longer relying on
Dunn. We find no reason to modify the Krenz structure in
accordance with Thom’s teaching of providing a recess in which
to place the keyboard. There would have been no reason to
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Application No. 07/890,350
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provide such a recess in Krenz. Moreover, claim 18 requires
that the keyboard be “releasably secured” in the recess and
there is no teaching of this limitation in either Krenz or
Thom.
Claim 18 also requires the keyboard to have a dimensional
size “substantially the same as said second portion bottom
recess...” While the examiner apparently concludes that this
is the case in Thom, appellant concludes otherwise, stating
that in Thom, the keyboard can only be fit “partially” under
the printer. While the figures in Thom, e.g., Figure 3, would
appear to indicate that the keyboard therein is much larger
than the space in which it fits, it may also be true that the
drawings are not to scale. The important point here is that
we just don’t know. We must resort to speculation in order to
determine if Thom actually teaches that the dimensional size
of the key input means is “substantially the same size as said
second portion...” and we cannot bottom a finding of
obviousness on such speculation.
Finally, we turn to claim 3. However, claim 3 depends
from independent claim 1 and we find no indication that the
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Application No. 07/890,350
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additional reference to Krenz provides for the indicated
deficiencies of Dunn and Hattori. Accordingly, we will not
sustain the rejection of claim 3 under 35 U.S.C. § 103.
We have not sustained any of the rejections under 35
U.S.C. § 103 because, based on the evidence before us, the
examiner has failed to establish a prima facie case of
obviousness.
The examiner’s decision is reversed.
REVERSED
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jerry Smith )
Administrative Patent Judge )
Appeal No. 95-3908
Application No. 07/890,350
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Intellectual Property Dept.
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