Ex Parte Kwon et alDownload PDFPatent Trial and Appeal BoardFeb 11, 201511589909 (P.T.A.B. Feb. 11, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/589,909 10/31/2006 Kwang Hun Kwon 8736.062.22-US 5047 7590 02/12/2015 MCKENNA LONG & ALDRIDGE LLP Song K. Jung 1900 K Street, N.W. Washington, DC 20006 EXAMINER PENG, HSIUNGFEI ART UNIT PAPER NUMBER 2426 MAIL DATE DELIVERY MODE 02/12/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KWANG HUN KWON and SANG HOON CHA ____________ Appeal 2012-005859 Application 11/589,909 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005859 Application 11/589,909 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1, 2, 5–12, and 15–20. Claims 3, 4, 13, 14, and 21–24 have been cancelled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim 1. A host communicating with a cable card in an open cable system, the host comprising: a plurality of Digital Visual Interface (DVI) ports; and a controller configured to receive a single DVI diagnostic request from the cable card to the host through a central processing unit (CPU) interface, the single DVI diagnostic request including a unique diagnostic identifier for identifying multiple diagnostics corresponding to the plurality of DVI ports, wherein the CPU interface enables the DVI diagnostic request to be transferred between a CPU of the host device and a CPU of the cable card, wherein the controller is further configured to generate DVI status information including the multiple diagnostics identified by the same diagnostic identifier in response to the single DVI diagnostic request, and control to display the DVI status information including the multiple diagnostics corresponding to the plurality of DVI ports. Rejection on Appeal The Examiner rejected claims 1, 2, 5–12, and 15–20 under 35 U.S.C. § 103(a) as being unpatentable over Applicant’s Admitted Prior Art (“AAPA”) in view of Iwamura (US 5,883,621, Mar. 16, 1999). Ans. 4–7. Appeal 2012-005859 Application 11/589,909 3 II. ISSUE Did the Examiner err in concluding that the combination of AAPA and Iwamura renders independent claims 1 and 11 unpatentable? In particular, the issue turns on whether the Examiner provides an articulated reason with some rational underpinning to combine AAPA and Iwamura. III. ANALYSIS 35 U.S.C. § 103(a) Rejection—Rationale to Combine The Examiner relies upon AAPA for all elements of exemplary claim 1 except for the recited “generate DVI status information including the multiple diagnostics identified by the same diagnostic identifier in response to the single DVI diagnostic request, and control to display the DVI status information including the multiple diagnostics corresponding to the plurality of DVI ports”; and relies upon Iwamura for that element. Ans. 4–5. The Examiner finds: Iwamura discloses giving each node connected to an IRD 100 an opportunity to identify itself with unique physical identification and ports status during identification phase (FIG.1; FIG.5; Col 2 lines 8-11; Col 5 lines 16-50; hence reads on collecting status information associated with each of the plurality of ports in a repetitive diagnostic fashion for each port in response to a single request. Ans. 5. Appellants contend the Examiner does not provide a sufficient rationale to combine AAPA and Iwamura. App. Br. 9–12. In particular, Appellants contend: Point of Disagreement: Did the Examiner articulate some reason based on rational underpinnings regarding (1) applying known principle of collecting all ports status information in a Appeal 2012-005859 Application 11/589,909 4 single request to the system of AAPA; and (2) that it would require no more than “ordinary skill and common sense” to request the status information for all ports at one time from a system as in the claimed invention? App. Br. 11 (emphasis omitted). The Examiner finds: At least, one in ordinary skill in the art at the time of invention would understand that collecting status reports of multiple DVI ports at one time from a system is more efficient and less time consuming than collecting status report of each DVI port individually one by one (less requests through the system, thus less processing overhead). Ans. 8–9. The U.S. Supreme Court has held 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). The Court further instructs that: [o]ften it will be necessary for a court to look to interrelated teachings of multiple patents; . . . and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. Additionally, the Court instructs that: [r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can Appeal 2012-005859 Application 11/589,909 5 take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. (citation and internal quotation marks omitted). We find that the ordinarily skilled artisan, being a creative individual would have been able to fit the teachings of AAPA and Iwamura (including established knowledge in the art) together like pieces of a puzzle to predictably result in the disputed limitations. In particular, we agree with the Examiner that the proffered combination of AAPA and Iwamura would predictably result in collecting status reports of multiple DVI ports at one time from a system would be more efficient thereby reducing the diagnostic process time. Ans. 8–9. In our view, such a statement suffices as an articulated reason with a rational underpinning to support the proffered combination. As noted above, the case law allows the Examiner to look to the state of the prior art, including the knowledge of the ordinarily skilled artisan to arrive at such a reason for combining the known elements of the prior art. Consequently, the Examiner’s reliance upon widely available knowledge in order to arrive at an articulated reason with a rational underpinning to support the proffered combination is proper. We have considered Appellants’ Reply Brief but find it unpersuasive to rebut the Examiner’s responses. We find the weight of the evidence supports the Examiner’s ultimate legal conclusion of obviousness, and therefore sustain the Examiner’s rejection of claims 1 and 11. Dependent claims 2, 5–10, 12, and 15–20, not separately argued, fall with claims 1 and 11, respectively. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-005859 Application 11/589,909 6 IV. CONCLUSION The Examiner has not erred in rejecting claims 1, 2, 5–12, and 15–20 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 1, 2, 5–12, and 15–20. 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 msc Copy with citationCopy as parenthetical citation