Ex Parte Lee

Board of Patent Appeals and Interferences

Feb 23, 2007

10131049 (B.P.A.I. Feb. 23, 2007)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board ___________ UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ___________ Ex parte JI-YOUNG LEE ___________ Appeal 2006-2328 Reissue Application 10/131,049 Patent 6,064,443 ___________ Heard: December 11, 2006 ___________ Decided: February 23, 2007 ___________ Before MARTIN, BARRETT, and LEE, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1, 21, 26, 27, 35, 57, and 58. Original claims 2-20 and new claims 37-56 have been allowed. New claims 22-25, 28-34, and 36 are objected to. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part but enter new grounds of rejection. Appeal 2006-2328 Application 10/131,049 - 2 - REISSUE This application was filed on April 25, 2002, for reissue of U.S. Patent 6,064,443 (hereinafter the '443 patent), issued May 16, 2000, to Ji-Young Lee entitled "Method for Detecting and Separating Vertical and Horizontal Synchronous Signals from Computer System," based on Application 08/880,675, filed June 23, 1997. The '443 patent claims the benefit under 35 U.S.C. § 119 of Republic of Korea application P-96-22949, filed June 21, 1996. The '443 patent is assigned to SamSung Electronics Co., Ltd., Republic of Korea, the real party in interest. BACKGROUND OF THE INVENTION The invention relates to a method and apparatus for detecting and processing vertical and horizontal synchronous signals from a computer. When the vertical and horizontal synchronous signals are missing, "reference" vertical and horizontal synchronous signals are generated in their place. Claim 58 is reproduced below. 58. A display monitor having a video signal processor and a synchronous signal processor, said synchronous signal processor outputting processed vertical and horizontal synchronous signals to said video signal processor so that said video signal processor can process video signals from a computer synchronously with the processed vertical and horizontal synchronous signals, said display monitor comprising: a microcomputer connected to said computer for detecting at least one synchronous signal output from said computer to said display monitor; Appeal 2006-2328 Application 10/131,049 - 3 - said microcomputer generating separate reference horizontal and vertical synchronous signals when at least one synchronous signal is not detected from said computer; said microcomputer determining, when at least one synchronous signal is detected from said computer, whether the detected synchronous signal is a composite synchronous signal including both a horizontal synchronous signal and a vertical synchronous signal; said microcomputer generating separated horizontal and vertical synchronous signals, characterized in that said microcomputer adjusts the polarity of at least one of said separated horizontal synchronous signal and said separated vertical synchronous signal; and said microcomputer providing said separated horizontal and vertical synchronous signals or said separate reference horizontal and vertical synchronous signals to said synchronous signal processor. THE REFERENCES The Examiner relies on the following references: Arai et al. (Arai) 5,021,719 June 4, 1991 Yamagishi JP 63-164676 July 8, 1988 THE REJECTIONS Claims 57 and 58 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Arai. Claims 1, 21, 26, 27, and 35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Arai and Yamagishi. Appeal 2006-2328 Application 10/131,049 - 4 - DISCUSSION Drawing correction In addition to the drawings changes in the Request for Approval of Drawing Changes, we note that in Step S224 of Figure 5A, "GREEK" should be "GREEN." Claim 58 Issues Based on the contentions of Appellant, the issues are whether Arai discloses or would have suggested to one of ordinary skill in the art the following limitations of claim 58: (1) "a microcomputer connected to said computer for detecting at least one synchronous signal output from said computer to said display monitor"; (2) "said microcomputer generating . . . reference . . . vertical synchronous signals when at least one synchronous signal is not detected from said computer"; (3) "said microcomputer providing . . . said . . . reference . . . vertical synchronous signals to said synchronous signal processor"; and (4) a "synchronous signal processor outputting processed vertical and horizontal synchronous signals to said video signal processor." Facts The four underlying factual inquiries of obviousness are: (1) the scope and content of the prior art; (2) the differences between the subject matter of Appeal 2006-2328 Application 10/131,049 - 5 - the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). No evidence of secondary considerations (also called objective evidence of nonobviousness) has been presented. Scope and content of Arai There is no dispute that Arai is within the scope of the prior art; i.e., that it is from analogous art. See In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986) (the reference must either be in the field of the applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535, 218 USPQ 871, 876 (Fed. Cir. 1983) ("The scope of the prior art has been defined as that 'reasonably pertinent to the particular problem with which the inventor was involved'."). Arai discloses a display apparatus (Fig. 1) having a digital automatic tracking (DAT) circuit 2 which outputs horizontal and vertical synchronizing signals, HD1 and VD1, respectively, to deflection circuit elements 3-11 to control the deflection of the cathode ray tube (CRT) 12 (col. 7, l. 60 to col. 8, l. 36). A video signal is fed to the video signal input terminal 14, processed in the video system circuit 13, and outputted to CRT 12 (col. 8, ll. 37-41). DAT 2 contains a synchronizing signal processing circuit 201 (Figs. 2 and 3) which detects one of three peculiar forms of the synchronizing signals: a composite synchronizing signal superimposed on a primary color signal G (Sync on G); a form of composite synchronizing signal (C. Sync); and a form Appeal 2006-2328 Application 10/131,049 - 6 - in which the signals are previously separated into a horizontal synchronizing signal (HS) and a vertical synchronizing signal (VS) (col. 10, ll. 30-41). Circuit 201 separates the horizontal and vertical synchronizing signals and unifies the polarities (col. 8, ll. 59-68). Circuit 201 also contains an H-omission countermeasure circuit 306 for detecting a lack of a horizontal synchronizing signal during a vertical synchronizing signal period and supplying a pseudo-horizontal synchronizing signal (col. 10, ll. 25-29; col. 13, l. 18, to col. 14, l. 17; Figs. 7 and 8). Circuit 201 outputs the separated synchronizing signals to a control processing circuit 206, where "[t]he control processing circuit 206 is constituted by use of, for example, an LSI of a one-chip microcomputer or the like" (col. 9, ll. 6-8). "The control processing circuit 206 judges the respective frequencies of the horizontal and vertical synchronizing signals HD2 and VD2 fed thereto, in accordance with the program stored in the control memory 207" (col. 9, ll. 9-12), and outputs "control data for indicating a display size" (col. 9, ll. 18) and "control data for indicating a display position" (col. 9, ll. 27-28) in addition to the synchronizing signals HD1 and VD1 (Fig. 2). Figure 9 of Arai discloses a second embodiment of the DAT 2. "In FIG. 9, the function of the synchronizing signal processing circuit 201 of the DAT 2 shown in FIG. 2 is executed by software of the control processing circuit 206. FIG. 10 is a flow chart showing the processing flow of the control processing circuit 206." (Col. 14, ll. 32-36.) As previously noted, element 206 is a microcomputer (col. 9, lines 6-8). As shown in Figure 10, Appeal 2006-2328 Application 10/131,049 - 7 - the microcomputer performs synchronization detection in step 1004 and polarity unification in steps 1006 and 1007. Differences In the analysis, we find that Arai teaches "a microcomputer connected to said computer for detecting at least one synchronous signal output from said computer to said display monitor," so the differences between the subject matter of claim 58 and Arai are that Arai does not disclose: (1) "said microcomputer generating . . . reference . . . vertical synchronous signals when at least one synchronous signal is not detected from said computer"; (2) "said microcomputer providing . . . said . . . reference . . . vertical synchronous signals to said synchronous signal processor"; and (3) a "synchronous signal processor outputting processed vertical and horizontal synchronous signals to said video signal processor." Level of ordinary skill in the art The U.S. Patent and Trademark Office (USPTO) has no way to take testimony about the level of ordinary skill in the art. Guessing at the level of education and experience possessed by a person of ordinary skill in the art is meaningless because it says nothing about what the hypothetical person of ordinary skill in the art actually knows. If an express finding is required, the level of ordinary skill in the art is evidenced by the references. See In re Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978) ("the PTO usually must evaluate both the scope and content of the prior art and the level Appeal 2006-2328 Application 10/131,049 - 8 - of ordinary skill solely on the cold words of the literature"); In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (the Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record). However, this too is unhelpful because what is really important is how persons skilled in the art think and what approach to solving a problem immediately comes to mind. This is only important in this case in the rejection of claim 26 and in the new grounds of rejection of claims 57 and 58, which rely on a combination of references. Principles of law A rejection under 35 U.S.C. § 103 must address and account for all elements and limitations of the claim. Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of the reference. In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). "[T]he motivation to combine need not be found in prior art references, but equally can be found 'in the knowledge generally available to one of ordinary skill in the art' . . . ." Cross Med. Prods., Inc., v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1322, 76 USPQ2d 1662, 1684 (Fed. Cir. 2005). However, "determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture." Alza Corp. v. Mylan Labs, Inc., 464 F.3d 1286, 1290, 80 USPQ2d 1001, 1004 (Fed. Cir. 2006). In making a rejection, an examiner may "take notice of facts beyond the record which, while not Appeal 2006-2328 Application 10/131,049 - 9 - generally notorious, are capable of such instant and unquestionable demonstration as to defy dispute." In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (1970). "Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art and the appellant given, in the Patent Office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference." Id.; accord In re Pardo, 684 F.2d 912, 917, 214 USPQ 673, 677 (CCPA 1982). If applicant adequately traverses a factual assertion, the examiner must support the finding with evidence. Manual of Patent Examining Procedure (MPEP) § 2144.03 (8th ed. Rev. 3, Aug. 2005). "To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner's action, which would include stating why the noticed fact is not considered common knowledge or well-known in the art. See 37 CFR 1.111(b)." Id. Analysis Issue (1): Whether Arai discloses or would have suggested to one of ordinary skill in the art "a microcomputer connected to said computer for detecting at least one synchronous signal output from said computer to said display monitor." Rejection and arguments The Examiner notes that The IEEE Standard Dictionary of Electrical and Electronics Terms defines a "microcomputer" as "[a] computer that contains at least one microprocessor as its main computing element." The Appeal 2006-2328 Application 10/131,049 - 10 - Examiner concludes that it would have been obvious, if not inherent, that the DAT (digital automatic tracking) circuit 2 in Figures 1 and 2 of Arai falls within the definition of microcomputer because DAT 2 includes a control processing circuit 206, which is a microcomputer (Final Rejection at 3). The Examiner reasons that the definition of microcomputer does not preclude peripheral processing elements surrounding the microprocessor, such as the synchronizing signal1 processing circuit 201 in Arai which is connected to the control processing circuitry (microcomputer) 206 (id.). Appellant argues that the Examiner errs in finding that DAT 2 is a microcomputer just because it contains a control processing circuit 206 that is a microcomputer (Brief at 6-8). It is argued that Arai discloses that control processing circuit 206 can be an LSI of a one-chip microcomputer and does not suggest that the microcomputer can be made up of more than one chip (id. at 7). It is argued that "[b]oth Arai's microcomputer 206 and the Appellant's microcomputer 30 (Fig. 3) are each a single chip LSI device" (id.), so the DAT 2 in Arai is a circuit containing a microcomputer, not a microcomputer containing a microcomputer (id.). It is argued that "Arai's control processing circuit (microcomputer) 206 fails to perform the various functions of the microcomputer required by the Appellant's claim 58" (id.). It is argued that Figure 6 in the '443 patent does not show all of the components of the microcomputer, which is a common patent practice (id. at 8). 1 Arai uses the term "synchronizing signal" whereas the '443 patent uses the term "synchronous signal." The terms are interchangeable and refer to the same thing. We sometimes use the term "sync signal" for simplicity. Appeal 2006-2328 Application 10/131,049 - 11 - The Examiner repeats the extensive arguments from the Advisory Action as to why DAT 2 is a microcomputer in the same sense as Appellant's microcomputer (Answer at 14-19). The Examiner notes that since Figure 1 of the '443 patent is said to be "Background Art," and not "Prior art," one cannot assume that the patent owner has not drafted the claims to distinguish over the "exemplary" monitor system of Figure 1 (id. at 14-15) which corresponds to Figure 1 of Arai. The Examiner finds that the "microcomputer" structure in Appellant's Figure 6 is not a microcomputer in the conventional sense of the term because it is not based purely in software and uses dedicated circuitry (id. at 15-16). The Examiner concludes that the definition of "microcomputer" does not exclude "peripheral dedicated circuitry which assists in the processing" (id. at 8), and finds that the synchronizing signal processing circuit 201 of Arai is peripheral dedicated circuitry associated with the control processing circuitry (microcomputer) 206 in the same way that the circuitry in Appellant's Figure 6 is peripheral dedicated circuitry associated with a microcomputer, so that DAT 2 is a microcomputer (id. at 16-17). The Examiner states that claim 58 does not recite a one-chip microcomputer, the microcomputer is not defined as a one-chip device, and the disclosure does not appear to show a one-chip microcomputer (id. at 18). Appellant replies that one of ordinary skill in the art would not have taken the Examiner's position that DAT 2 is a microcomputer just because it contains control processing circuit 206 which is a microcomputer (Reply Brief at 9). It is argued that Arai's control processing circuit (microcomputer) Appeal 2006-2328 Application 10/131,049 - 12 - 206 does not perform the functions of detecting synchronous signal outputs and generating reference signals (id.). Appellant argues that Figure 3 of the '443 patent illustrates a single-chip microcomputer and Figure 6 illustrates some of the components of that chip (id. at 19). Issue (1) analysis We find that Arai discloses a "microcomputer connected to said computer for detecting at least one synchronous signal output from said computer to said display monitor," albeit not for the reasons stated by the examiner. Nevertheless, Appellant is responsible for all teachings of Arai. We observe that Appellant argues that the Examiner errs in interpreting Arai's DAT 2 as a microcomputer, but does not actually argue that Arai lacks a "microcomputer connected to said computer." The microcomputer in Arai does not perform all of the claimed functions and these differences are addressed in Issues (2) and (3). First, we explain why we do not agree with the Examiner's reasoning. Claim 58 recites that the microcomputer performs five functions. Figure 6 of the '443 patent shows circuitry, which is described as performing these functions under software control ('443 patent, col. 8, l. 59 to col. 11, l. 25), where one of ordinary skill in the art would recognize that the microprocessor which executes program instructions to control the circuitry is not illustrated for reasons of clarity. We consider only the function of "detecting at least one synchronous signal output from said computer to said display monitor." Arai discloses that the control processing circuit 206 in DAT 2 is a microcomputer Appeal 2006-2328 Application 10/131,049 - 13 - that performs the functions of outputting "control data for indicating a display size" (col. 9, line 18) and "control data for indicating a display position" (col. 9, lines 27-28); the circuit 206 corresponds to the claimed "synchronous signal processor." The synchronizing signal processing circuit 201 in Figure 2 of Arai performs the functions of detecting the peculiar forms of the synchronizing signals (HS, VS; C. Sync; or Sync on G), separating them into horizontal and vertical synchronizing signals, and unifying the polarities (col. 8, lines 59-68). As shown in Arai's Figures 2, 3, 4A, and 5, these functions are performed by specialized circuitry, which is not controlled in any way by the microcomputer 206. While a microcomputer can have circuitry in addition to the microprocessor that executes stored program instructions, if the circuitry is not controlled by the microcomputer (as it is in Appellant's Figure 6) it is not reasonable to say that the microcomputer performs the functions. Thus, we agree with Appellant that the Examiner's interpretation of DAT 2 in Figure 2 as a microcomputer is unreasonable. Nevertheless, although not noted by the Examiner or by Appellant, Figure 9 of Arai discloses a second embodiment of DAT 2 where the microcomputer 206 performs the function of "detecting at least one synchronous signal output from said computer to said display monitor." "In FIG. 9, the function of the synchronizing signal processing circuit 201 of the DAT 2 shown in FIG. 2 is executed by software of the control processing circuit 206. FIG. 10 is a flow chart showing the processing flow of the control processing circuit 206." (Col. 14, ll. 32-36.) Element 206 is a Appeal 2006-2328 Application 10/131,049 - 14 - microcomputer (col. 9, ll. 6-8). As shown in Figure 10, the microcomputer performs synchronization detection in step 1004 and polarity unification in steps 1006 and 1007. Thus, it can be seen that the "Background Art" in Figure 1 of the '443 patent corresponds to Arai's Figure 2 wherein detection and separation of vertical and horizontal synchronizing signals is performed by specialized hardware and output to a microcomputer, and Figure 3 in the '443 patent corresponds to Arai's Figures 9 and 10 wherein detection, separation, and polarity adjustment of the synchronizing signals are performed by a microcomputer. As to Appellant's argument that the microcomputer circuitry is contained on a single chip, we agree with the Examiner that this is not claimed and that the definition of microcomputer does not require a single-chip device. We further agree with the Examiner that the '443 patent, unlike Arai, does not disclose or suggest that the microcomputer is a single-chip device. The circuitry of Figure 6 of the '443 patent can be part of a microcomputer without it being on the same chip as the microprocessor which controls the microcomputer. We further question whether the specialized hardware circuitry in Figure 6 would logically be put on the same chip as the microprocessor that executes program instructions. We find that Arai expressly discloses the limitation of Issue 1. Appeal 2006-2328 Application 10/131,049 - 15 - Issue (2): Whether Arai discloses or would have suggested to one of ordinary skill in the art "said microcomputer generating . . . reference . . . vertical synchronous signals when at least one synchronous signal is not detected from said computer." and Issue (3): Whether Arai discloses or would have suggested to one of ordinary skill in the art "said microcomputer providing . . . said . . . reference . . . vertical synchronous signals to said synchronous signal processor." Rejection and arguments The Examiner found that Arai generates separate "reference" horizontal and vertical synchronous signals "when at least one synchronous signal is not detected" because H-omission countermeasure circuit 306 replaces missing horizontal synchronous signals (Final Rejection at 4). In the Advisory Action, the Examiner, apparently realizing that Arai does not disclose generating "reference vertical" synchronous signals when horizontal synchronous signals are missing, found that it was notoriously well known to use video sync countdown circuitry to generate replacement synchronous signals when incoming sync signals were missing and/or corrupted by noise, and concluded that it would have been obvious to modify Arai to include vertical countdown circuitry to protect the vertical signal from noise and/or corruption (Advisory Action at 7). Appellant argues that the H-omission countermeasure circuit 306 in Arai generates only a pseudo-horizontal synchronizing signal and fails to Appeal 2006-2328 Application 10/131,049 - 16 - teach "said microcomputer generating . . . reference . . . vertical synchronous signals when at least one synchronous signal is not detected from said computer" (Brief at 8) and, therefore, also fails to teach "said microcomputer providing . . . said . . . reference . . . vertical synchronous signals to said synchronous signal processor" as required by claim 58 (Reply Brief at 14). It is argued that the Examiner's reasoning in the Advisory Action that it was notoriously well known in the art to provide reference horizontal and vertical synchronizing signals is untenable because no art was applied and the Final Rejection is based only on Arai (Brief at 9). The Examiner repeats that the synchronizing signal processing circuit 201 continues to generate separated horizontal (HD2) and vertical (VD2) synchronizing signals even when the horizontal synchronizing signal input is not detected (Answer at 10), which implies that the Examiner finds HD2 and VD2 to be reference horizontal and vertical sync signals. The Examiner repeats the Advisory Action reasoning that it would have been obvious to modify Arai to include vertical countdown circuitry to protect the vertical signal from noise and/or corruption (Answer at 19-21). Appellant replies that Arai does not check the inputted synchronous signals to detect the absence of inputted horizontal synchronous signals, but only detects a missing horizontal synchronous signal HD2' (Reply Brief at 12-13). Appellant also replies that Arai is not concerned with omission of the vertical synchronizing signal VD2 (id. at 15). It is argued that Arai makes no mention of noise as a reason for the omitted horizontal synchronizing Appeal 2006-2328 Application 10/131,049 - 17 - signal and, in fact, provides no reason for the omitted horizontal synchronizing signal (id. at 16). It is argued that one of ordinary skill in the art would not have concluded that noise would affect horizontal and vertical sync signals output from a compute to a display, and that the Examiner has provided no evidence that synchronizing signals from a computer are subject to corruption by noise so as to motivate one of ordinary skill in the art to include vertical countdown circuitry to generate reference vertical synchronizing signals (id. at 16-17). Issues (2) and (3) analysis As a matter of claim interpretation, we interpret "reference horizontal and vertical synchronous signals" to mean "substitutes or replacements" for missing horizontal and vertical synchronous signals. This is consistent with the Examiner's interpretation of "reference" signals as "replacement" signals for missing signals (Answer at 19-21). The circuit 306 in Arai only generates reference horizontal synchronizing signals when the horizontal synchronizing signals are missing during a vertical synchronizing signal portion of the signal and does not also generate reference vertical synchronizing signals. The Examiner errs in finding that Arai teaches generating reference vertical synchronous signals. The Examiner apparently recognized the deficiency in Arai and belatedly attempted to address the missing limitations by finding in the Advisory Action that it was notoriously well known to utilize countdown circuits to generate replacement reference synchronizing signals when the Appeal 2006-2328 Application 10/131,049 - 18 - incoming separated sync signals were missing or corrupted, and then concluding that it would have been obvious to provide such a countdown circuit. Appellant challenges the Examiner's finding by stating that no art was applied2 and denying that there was any noise problem to solve. "Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art . . . ." Ahlert, 424 F.2d at 1091, 165 USPQ at 420. If properly challenged, the examiner must provide evidence. MPEP § 2144.03. The Examiner's finding of motivation is not supported by evidence and cannot be sustained. In addition, the Examiner's finding that reference horizontal synchronizing signals are produced because of missing signals due to noise and/or corruption is incorrect and, thus, the conclusion that one skilled in the art would have been motivated to modify Arai to include vertical countdown circuitry to protect the vertical signal from noise and/or corruption is also 2 A traverse of a finding of Official Notice requires more than just a statement that the fact is not shown in a reference. A "traverse" is "[a] formal denial of a factual allegation in the opposing party's pleading," Black's Law Dictionary (7th ed. 1999). That is, a traverse is similar to answering the factual allegations in a complaint in a civil action. Cf. Fed. R. Civ. P. 8(b) ("A party shall . . . admit or deny the averments upon which the adverse party relies. If a party is without knowledge or information sufficient to form a belief as to the truth of an averment, the party shall so state and this has the effect of a denial."). An applicant may traverse a finding of Official Notice by simply averring that "those of ordinary skill in the art were not aware of [the fact]" or that "applicant is without any knowledge or information as to whether those of ordinary skill in the art were aware of [the fact]." Appeal 2006-2328 Application 10/131,049 - 19 - incorrect. A composite synchronizing signal has a horizontal synchronizing signal that determines the number of horizontal lines that make up the display and a vertical synchronizing signal that determines the frequency at which the display is refreshed. The composite synchronizing signal may vary. For example, it may have continuous horizontal pulses when providing a vertical pulse or it may omit horizontal pulses when providing a vertical pulse. See, e.g., U.S. Patent 5,631,709, col. 1, ll. 14-39. The purpose of the H-omission countermeasure circuit 306 in Arai is to supply horizontal pulses when they are omitted during the vertical pulse as part of the composite encoding scheme, not because the horizontal pulses are missing due to noise or corruption. See Arai, Figure 8. Since the horizontal synchronizing signals are omitted on purpose in Arai, and are not missing due to noise and/or corruption, there is no suggestion to provide vertical synchronous signals that are missing due to noise and/or corruption, as stated by the Examiner. For the reasons stated above, Arai does not teach or suggest to one skilled in the art the limitations of Issues 2 and 3. Issue (4): Whether Arai discloses or would have suggested to one of ordinary skill in the art a "synchronous signal processor outputting processed vertical and horizontal synchronous signals to said video signal processor." Rejection and arguments The Examiner found that connection of the processed vertical and horizontal synchronizing signals to the video system circuit 13 in Arai would Appeal 2006-2328 Application 10/131,049 - 20 - have been conventional and concludes, therefore, that it would have been provided (Final Rejection at 5). Appellant notes that the Examiner refers to elements 3-11 as the "synchronous signal processor," but argues that "[b]esides the fact that Arai clearly discloses a synchronous signal processor as element 201 of DAT 2 in Fig. 2, claim 58 requires that the synchronous signal processor output processed vertical and horizontal synchronous signals to a video signal processor [as recited in the preamble]" (Brief at 10). It is argued that the video system circuit 13 and CRT 12, which the Examiner finds to correspond to a video signal processor, do not receive processed vertical and horizontal synchronous signals from any of elements 3-11 (id.). It is argued that the Examiner's statement that video system circuit 13 "would have had to been provided with the processed video sync signal for controlling such things as blanking" (Final Rejection at 5) is based on supposition and there is no showing that elements 3-11 provide processed video sync signals to video system circuit 13 (Brief at 11). The Examiner maintains the following position (Answer at 11): [O]ne would have understood the fact that the video processing circuitry (13) of Arai et al is conventional in design and thus would have had to have been provided with processed video sync signals for controlling such things as video blanking; i.e. in the same manner that the "synchronous signal processor" (5) of the current patent provides it to [video signal processor] element (2) of the ['443] patent . . . . Appeal 2006-2328 Application 10/131,049 - 21 - The Examiner alternatively finds that the CRT 12 in Arai is a "video signal processor" which is driven by the processed synchronous signals from elements 3-11 (id. at 22). Appellant replies that CRT 12 does not process video signals from a computer synchronously with the processed vertical and horizontal synchronous signals and is not a video signal processor (Reply Brief at 18). Issue (4) analysis The preamble of claim 58 recites: "A display monitor having a video signal processor and a synchronous signal processor, said synchronous signal processor outputting processed vertical and horizontal synchronous signals to said video signal processor so that said video signal processor can process video signals from a computer synchronously with the processed vertical and horizontal synchronous signals, said display monitor comprising . . . ." Because the display monitor includes both a video signal processor and a synchronous signal processor, the structural relationship between the synchronous signal processor and the video signal processor in the preamble is a positive claim limitation rather than a mere statement of intended use. Although the Examiner finds that elements 3-11 in Arai correspond to the synchronous signal processor, we find that control processing circuit 206 in Arai is a better fit because 206 takes horizontal and vertical synchronous signals from synchronizing signal processing circuit 201 and outputs data indicating a display size (Arai, col. 9, ll. 17-20) and a display position (Arai, col. 9, ll. 27-35) corresponding to the functions of Appellant's synchronous Appeal 2006-2328 Application 10/131,049 - 22 - signal processor ('443 patent, col. 3, ll. 54-58). Arai discloses that element 206 is connected to the deflection circuit and coil elements 3-11 just as Appellant's synchronous signal processor 5 is connected to deflection coil 7 in the "Background Art" of Figure 1. Appellant's suggestion that Arai discloses a synchronous signal processor as element 201 fails to consider the functions of the processor; the fact that the names sound similar is irrelevant. Arai does not disclose that elements 3-11 (which the Examiner finds to correspond to the synchronous signal processor) or element 206 (which we find to be the synchronous signal processor) are connected to the video system circuit 13, which corresponds to the claimed "video signal processor." The Examiner reasons that it would have been conventional to provide the video system circuit 13 with processed synchronous signals in the same manner that video signal processor 2 is provided with signals from the synchronous signal processor 5 in the "Background Art" of Figure 1 of the '443 patent. Appellant challenges the finding that the connection would have been conventional as based on supposition. "Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art . . . ." Ahlert, 424 F.2d at 1091, 165 USPQ at 420. We cannot accept the Examiner's obviousness reasoning without evidence. Since the Examiner concludes that the "Background Art" of Figure 1 of the '443 patent is not prior art, the Examiner can not rely on it as evidence of what was conventional. Arai does not disclose that the processed synchronous signals are output to the video Appeal 2006-2328 Application 10/131,049 - 23 - system circuit 13 and this does not appear to be an inherent characteristic of the system. The Examiner's statement that the CRT 12 in Arai can be the claimed "video signal processor" is without merit because, among other things, the CRT does not perform any "processing." We find that Arai does not disclose or suggest to one skilled in the art the limitation of Issue (4). Conclusion We find Arai does not disclose or suggest to one of ordinary skill in the art the limitations of: (1) "said microcomputer generating . . . reference . . . vertical synchronous signals when at least one synchronous signal is not detected from said computer"; (2) "said microcomputer providing . . . said separate horizontal and vertical synchronous signals to said synchronous signal processor"; and (3) "said synchronous signal processor outputting processed vertical and horizontal synchronous signals to said video signal processor." The Examiner has failed to provide evidence of motivation for making these modifications. The rejection of claim 58 is reversed. Claim 57 Issue Based on Appellant's contentions, the sole issue is whether Arai discloses or suggests to one of ordinary skill in the art the limitation "if said at least one input synchronous signal is not received, generating separate reference . . . vertical synchronous signals." Appeal 2006-2328 Application 10/131,049 - 24 - Of course, if Arai does not generate reference vertical synchronous signals, it cannot meet the step of "outputting the separate reference . . . vertical synchronous signals," but this issue is not separately argued. Facts The scope and content of Arai and the level of ordinary skill in the art are discussed in connection with claim 58. The differences between Arai and the subject matter of claim 57 are that Arai does not disclose the step of "if said at least one input synchronous signal is not received, generating separate reference . . . vertical synchronous signals" and, consequently, does not disclose "outputting the separate reference . . . vertical synchronous signals." Principles of law The principles of law are discussed in connection with claim 58. Rejection and arguments The Examiner found that Arai's synchronizing signal processing circuit 301 "generates reference" vertical and horizontal synchronizing signals VD3 and HD3 from a Sync on G input when no synchronizing signals are received on VS or C. Sync/HS inputs (Final Rejection at 5). This is a different interpretation of Arai than used for claim 58. In the Advisory Action, the Examiner apparently realized that Arai did not disclose generating a "reference vertical" synchronous signal. As with claim 58, the Examiner Appeal 2006-2328 Application 10/131,049 - 25 - found that it was well known to use video sync countdown circuitry to generate replacement synchronizing signals when incoming sync signals were missing and/or corrupted by noise, and concluded that it would have been obvious to modify Arai to include vertical countdown circuitry to protect the vertical signal from noise and/or corruption (Advisory Action at 7). Appellant argues (Brief at 12) that Arai fails to teach "generating . . . reference . . . vertical synchronous signals." The Examiner repeats the reasoning from the Final Rejection that the synchronizing signal detection circuit 302 performs the step of "determining whether at least one input synchronous signal is received" and synchronous separation circuit 301 performs the step of "generating separate reference horizontal and vertical synchronous signals" if at least one input synchronous signal is not received (Answer at 11). The Examiner also repeats the reasoning from the Advisory Action that it would have been obvious to modify Arai to include vertical countdown circuitry so as to protect the vertical signal from noise and/or corruption (id. at 19-21). Appellant replies that Arai does not teach generating reference vertical synchronous signals (Reply Brief at 19). It is argued that claim 57 recites "determining whether at least one input synchronous signal is received" and "if said at least one input synchronous signal is not received, generating separate reference horizontal and vertical synchronous signals," and Arai does not generate a control signal based on a determination of a missing input synchronous signal (id. at 20). Appeal 2006-2328 Application 10/131,049 - 26 - Analysis The Examiner's reasoning from the Advisory Action that it would have been obvious to modify Arai to include vertical countdown circuitry is not persuasive because the Examiner has provided no evidence to support the finding that generating replacement synchronizing signals was well known, as discussed in connection with claim 58. The Examiner interprets the step of "generating separate reference horizontal and vertical synchronous signals" to read on selecting horizontal and vertical synchronous signals from the Sync on G input when they are missing from the VS or C. Sync/HS inputs. This interpretation is unreasonable. We interpret "generating separate reference horizontal and vertical synchronous signals" to require "generating" in the sense of creating a replacement signal, not just selecting existing synchronous signals. See In re Scroggie, 170 Fed. Appx. 132, 135 (Fed. Cir. 2006) (nonprecedential) ("The term 'generating page data' means that the page data is 'generated,' not merely selected.'"). Moreover, there is no guarantee that there will be synchronizing signals present at the Sync on G input when they are missing from the VS or C. Sync/HS inputs, whereas "generated" signals will be. The Examiner errs in finding that Arai teaches generating vertical reference signals and providing such signals to a synchronous signal processor. Accordingly, we find that Arai does not disclose or suggest to one of ordinary skill in the art the steps of "if said at least one input synchronous signal is not received, generating separate reference . . . vertical synchronous Appeal 2006-2328 Application 10/131,049 - 27 - signals" and "outputting the separate reference . . . vertical synchronous signals." The rejection of claim 57 is reversed. Claims 26, 1, 21, 27, and 35 Claims 1, 21, 27, and 35 are grouped to stand or fall together with claim 26 (Reply Brief at 6). Issue Based on Appellant's contentions, the issue is whether Yamagishi would have motivated one of ordinary skill in the art to modify the microcomputer in Arai to perform the claimed function of "generating reference vertical and horizontal synchronous signals when no input is received from said vertical synchronous signal terminal, said horizontal/composite synchronous signal terminal and said synchronous-on-green terminal of said computer." Facts Scope and content of the references Arai The scope and content of Arai are discussed in connection with the rejection of claim 58. Yamagishi Yamagishi discloses a circuit that switches from a selected synchronizing signal, Input Sync or EXT. (External) Sync, to a replacement Appeal 2006-2328 Application 10/131,049 - 28 - internal synchronizing signal INT. (Internal) Sync when the selected Input Sync or EXT. Sync signal is missing. This allows the circuits in the next stages to operate and execute image processing when synchronizing signals are missing. In Figure 1, if the synchronization selection switch SW 1 selects the Input Sync signal, a switching circuit 2 outputs the Input Sync unless a signal absence detection circuit 3 detects that the synchronizing signal is missing, in which case a control 5 switches switching circuit 2 to output the INT. Sync signal. Similarly, if the synchronization selection switch SW 1 selects EXT. Sync, a switching circuit 2 outputs the EXT. Sync signal unless a signal absence detection circuit 4 detects that the synchronizing signal is missing, in which case a control 5 switches switching circuit 2 to output the INT. Sync signal. "[W]hen the selected synchronous signal is missing, there is detection of this fact, and by replacing the selected synchronous signals with an internal synchronous signal, it is possible to continue from the next stage's circuits, while preventing a halt to the operations" (near the end of the translation, under "Effect of the Invention"). Yamagishi discloses substituting internally generated sync signals for missing sync signals, which is highly pertinent to the problem faced by the inventor of the '443 patent. Thus, Yamagishi is within the scope of the prior art that must be considered in determining patentability. Differences The difference between the subject matter of claim 26 and Arai is that Arai does not disclose "generating reference vertical and horizontal Appeal 2006-2328 Application 10/131,049 - 29 - synchronous signals when no input is received from said vertical synchronous signal terminal, said horizontal/composite synchronous signal terminal and said synchronous-on-green terminal of said computer." We note that claim 26 recites generating reference vertical and horizontal synchronous signals "when no input is received from said [terminals]," that is, when neither vertical nor horizontal synchronous signals are received. By comparison, claims 57 and 58 recite generating reference vertical and horizontal synchronous signals "if said at least one input synchronous signal is not received" (claim 57) or "when at least one synchronous signal is not detected from said computer" (claim 58), which allows for not receiving a horizontal synchronous signal while receiving a vertical synchronous signal. Level of ordinary skill in the art The level of ordinary skill in the art is evidenced by the references, as noted in the findings regarding the rejection of claim 58. In particular, Yamagishi teaches that persons of ordinary skill in the art of detecting and processing of synchronizing signals knew that synchronizing signals could be missing and that the solution was to replace them with internally generated "reference" synchronizing signals so that later circuitry stages would operate. One of ordinary skill in the art is presumed to have sufficient skill to be apply the teachings of Yamagishi in situations where synchronizing signals may be missing. Skill in the art is presumed. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). Appeal 2006-2328 Application 10/131,049 - 30 - Rejection and arguments The Examiner found that Yamagishi teaches that it was known to switch to internally generated sync signals when no external sync signals were being received (Final Rejection at 6). The Examiner concludes that it would have been obvious to modify Arai to switch to internally generated horizontal and vertical sync signals when the sync signals are not detected for the advantages cited by Yamagishi, i.e., it would have ensured that the later circuitry stages would continue to operate properly (id.). Appellant argues that Arai fails to teach a "microcomputer generating reference vertical and horizontal synchronous signals when no input is received from said vertical synchronous signal terminal, said horizontal/composite synchronous terminal and said synchronous-on-green terminal of said computer" (Brief at 12). It is argued that Arai is concerned with a missing horizontal synchronizing signal omitted in a period in which the vertical synchronizing signal VD2 is present, not with a missing vertical synchronizing signal (id. at 12 and 13). It is argued that nothing in Yamagishi motivates one of ordinary skill in the art to detect a missing vertical synchronizing signal in Arai and to provide extra sync detection in Arai (id. at 13). It is argued that the Examiner has used hindsight to suggest checking for when no sync input is received, but one of ordinary skill in the art would have looked only to what the applied art would have fairly suggested (id.). The Examiner's Answer repeats the reasoning from the Advisory Action that generating "reference" sync signals for missing sync signals was Appeal 2006-2328 Application 10/131,049 - 31 - well known in the art as evidenced by Yamagishi. The Examiner concludes "that it would have been an obvious choice of design to have replaced the missing separated sync signals in Arai et al. using the technique which was disclosed in Yamagishi in place of the 'countdown' method used in Arai et al. (the modification representing noting [sic, nothing] more than the substitution of one known alternative for another)" (Answer at 21). Appellant's Reply Brief mostly repeats the arguments in the Appeal Brief. One new argument is that since Arai is only concerned with a missing horizontal synchronizing signal omitted in a period in which the vertical synchronizing signal VD2 is present, Arai teaches away from the claimed invention (Reply Brief at 21). Another new argument is that if no input was received from the signal terminals, one of ordinary skill in the art "would have considered that the computer was not providing a video signal to the display monitor and thus there would be no reason to believe there is a need to generate[] reference vertical and horizontal sync signals" (id. at 23), which apparently refers back to the following argument made with respect to claim 58 (id. at 15-16): One of ordinary skill in the art . . . would have understood that if both the horizontal and vertical signals are not detected at the input 1, then it is unlikely that the computer is supplying a video signal to the display. In such a case there would not appear to be any need to generate both a reference horizontal synchronous signal and reference vertical synchronous signal. If both horizontal and vertical sync signals are not input from the computer, generation of both a reference horizontal Appeal 2006-2328 Application 10/131,049 - 32 - synchronous signal and reference vertical synchronous signal would be a waste of energy if there is no video signal to be displayed. Analysis We find that Arai discloses "a microcomputer connected to a vertical synchronous signal terminal, a horizontal/composite synchronous signal terminal and a synchronous-on-green terminal of said computer to detect inputs of said horizontal and vertical synchronous signals from said computer," as recited in claim 26, as discussed in connection with the "microcomputer" limitation of claim 58. Arai does not teach that the microcomputer generates "reference horizontal and vertical synchronous signals when no input is received from [the three input terminals]." Yamagishi provides a general teaching of supplying a replacement "reference" synchronizing signal (INT. Sync) when a selected synchronizing signal (Input Sync or EXT. Sync) is detected as missing for the advantage of allowing subsequent circuit stages to continue to operate. One of ordinary skill in the art would have been motivated to look to the art containing Yamagishi to solve the problem of missing sync signals. See Cross v. Medtronic, 424 F.3d at 1322, 76 USPQ2d at 1684-85 ("Evidence that a person of ordinary skill in the art recognized the same problem to be solved as the inventor and suggested a solution is, at the least, probative of a person of ordinary skill in the art's willingness to search the prior art in the same field for a suggestion on how to solve that problem."). One of ordinary skill in the art would have been motivated to apply Yamagishi's solution of generating a Appeal 2006-2328 Application 10/131,049 - 33 - replacement sync signal where the problem of missing input sync signals may occur for the described advantage in Yamagishi of allowing subsequent circuit stages to operate without halting. Thus, one of ordinary skill in the art would have been motivated to modify Arai to provide for the microcomputer generating replacement reference vertical and horizontal synchronous signals when such sync signals were detected as missing. This is separate problem from the problem solved by the H-omission countermeasure circuit. It is true that Arai does not describe the problem of missing horizontal and vertical synchronous signals from the computer, but obviousness is judged through the eyes of the hypothetical person of ordinary skill in the art who has constructive knowledge of all references in an inventor's field of endeavor or reasonably pertinent to the problem facing the inventor. Here, Yamagishi teaches that the inventor's problem of missing input sync signals was known in the art and teaches the solution of generating replacement reference sync signals. One of ordinary skill in the video art had sufficient skill to recognize that synchronizing signals can be missing in Arai and would have been motivated apply the teachings of Yamagishi to Arai to overcome the problem of missing sync signals. Motivation is found in the teachings of Yamagishi and in the knowledge of persons of ordinary skill in the art. Appellant's argument that one skilled in the art would have understood that if both the horizontal and vertical synchronizing signals are not detected in Arai, then it is unlikely that the computer is supplying a video signal, and that there would be no motivation to generate reference horizontal and Appeal 2006-2328 Application 10/131,049 - 34 - vertical synchronizing signals if there is no video signal, is not persuasive. While we agree with Appellant that one skilled in the art would have understood Arai's failure to detect horizontal and vertical sync signals makes it unlikely that the computer is supplying a video signal, that supports rather than undercuts the case for obviousness. The recognition that there is a chance that the computer might be providing a video signal even in the absence of detected horizontal and vertical sync signals would have provided ample motivation, in light of Yamagishi, to modify Arai so as to generate reference horizontal and vertical sync signals in the absence of detected horizontal and vertical sync signals. The '443 patent itself does not explain why reference synchronous signals are generated if no synchronous signals are detected at any of the inputs. In addition, Yamagishi teaches supplying reference synchronizing signals when the input synchronizing signals are missing so that the next circuitry stages can continue to operate. The fact that Arai is only concerned with a missing horizontal sync signal omitted in a period in which the vertical synchronizing signal VD2 is present does not teach away from the claimed invention, as argued. A reference "teaches away" when it states that something cannot be done. See In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994). Arai does not mention the problem of missing horizontal and vertical synchronous signals and so does not suggest that generating replacement signals will not work. The problem of missing horizontal and vertical synchronous signals from the computer is a separate problem from the Appeal 2006-2328 Application 10/131,049 - 35 - problem solved by the H-omission countermeasure circuit of horizontal synchronous signals missing during the vertical synchronizing signal of a composite signal. The solution to the problem of missing synchronizing signals is taught by Yamagishi. The Examiner's reasoning that it would have been an obvious matter of design choice to replace missing synchronous signals in Arai using the technique in Yamagishi in place of the "countdown" method in Arai is not necessary to or relied upon in this decision because claim 58 does not recite any specific method of generating replacement synchronous signals. For the reasons stated above, we conclude that Yamagishi would have motivated one of ordinary skill in the art to modify the microcomputer in Arai to perform the claimed function of "generating reference vertical and horizontal synchronous signals when no input is received from said vertical synchronous signal terminal, said horizontal/composite synchronous signal terminal and said synchronous-on-green terminal of said computer." Thus, the combination of Arai and Yamagishi establishes a prima facie case of obviousness as to claim 26. Since claims 1, 21, 27, and 35 are grouped to stand or fall together with claim 26, the rejection of claims 1, 21, 26, 27, and 35 is sustained. Appeal 2006-2328 Application 10/131,049 - 36 - NEW GROUNDS OF REJECTION Claim 57 is rejected under 35 U.S.C. § 103(a) as unpatentable over Arai and Yamagishi. Claim 58 is rejected under 35 U.S.C. § 103(a) as unpatentable over Arai, Yamagishi, and the presumed prior art of Figure 1 of the '443 patent. Claim 57 The Graham. findings regarding the scope and content of Arai and Yamagishi and the level of ordinary skill in the art are discussed in connection with the rejections of claims 58 and 26. We find that the differences between Arai and the subject matter of claim 57 are that Arai does not disclose the step of "if said at least one input synchronous signal is not received, generating separate reference horizontal and vertical synchronous signals" and, so, does not disclose the step of "outputting the separate reference horizontal and vertical synchronous signals or the separated horizontal and vertical synchronous signals." For simplicity, we assume that claim 57 requires generating reference horizontal and vertical synchronous signals if no input horizontal and vertical synchronous signals are received, although the "one input synchronous signal" language is broad enough to read on not receiving only one of the vertical or horizontal synchronous signals. Yamagishi provides a general teaching of supplying a replacement "reference" synchronizing signal (INT. Sync) when a selected synchronizing signal (Input Sync or EXT. Sync) is detected as missing for the advantage of allowing subsequent circuit stages to continue to operate. One of ordinary Appeal 2006-2328 Application 10/131,049 - 37 - skill in the art would have been motivated to apply Yamagishi's solution of generating a replacement sync signal to any situation where the problem of missing input sync signals may occur for the described advantage in Yamagishi of allowing subsequent circuit stages to operate without halting. Thus, one of ordinary skill in the art would have been motivated to modify Arai to provide for generating replacement reference vertical and horizontal synchronous signals when reference vertical and horizontal synchronous signals were detected as missing. Persons of ordinary skill in the video circuitry art had sufficient skill to recognize that synchronizing signals can be missing in Arai and would have been motivated apply the teachings of Yamagishi to Arai to overcome the problem of missing sync signals. Motivation is found in the teachings of Yamagishi and in the knowledge of persons of ordinary skill in the art. Claim 58 Figures 1 and 2A-2C are presumed to be admitted prior art Appellant has amended Figures 1 and 2A-2C to label them "Background Art" in the Request for Approval of Drawing Changes in the reissue. The Examiner concludes that Figure 1 is not "prior art" because Appellant identifies it as "background art" (e.g., Answer at 5, 14). Appellant is silent about this statement in the Reply Brief. However, it is not clear to us what is legally meant by "background art." At the oral argument, we asked counsel for Appellant what was meant by "background art." As we understand his answer, the subject matter of the figures is not prior art Appeal 2006-2328 Application 10/131,049 - 38 - because it was not published. We noted to counsel that something can be admitted prior art even if has not been published, and that something known to the inventor can qualify as prior art under 35 U.S.C. §§ 102(f)/103(a). We requested that counsel submit a paper within a week clarifying the nature of the subject matter of Figures 1 and 2A-2C. In a paper received by facsimile on December 15, 2006, counsel noted that the original correspondence between the firm and the Korean firm representing Appellant had been destroyed to make room for storing the patented files. It was noted that an inquiry had been sent to the client, and that he was waiting for a reply. In the meantime, it was noted, the issue of whether figures labeled "background art" or termed "conventional" constitute "prior art" had arisen in several applications and had been resolved by way of petitions granted by the Office. It is argued that no section of § 102 disqualifies a patent application if the subject matter was based on what anyone else in the foreign country may or may not have known. It is also argued that § 102(f) does not concern itself with the knowledge "of another" regarding the subject mater sought to be patented. It is argued that "whether Figs, 1-2C constitute 'Prior Art' hinges only on an inquiry of whether or not the subject matter of Figs. 1-2C was published in this or a foreign country, or was known or used by others in this country." We have not heard anything more from counsel, so we decide the case on the information before us. The term "prior art" as used in 35 U.S.C. § 103 refers at least to the statutory material named in 35 U.S.C. § 102. Riverwood Intern. Corp. v. R.A. Appeal 2006-2328 Application 10/131,049 - 39 - Jones & Co., Inc., 324 F.3d 1346, 1354 , 66 USPQ2d 1331, 1337 (Fed. Cir. 2003). Valid prior art may be created by the admissions of the parties even absent a statutory basis in § 102. Id. 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. Id. The USPTO has long held that derivation of an invention from the work of another can be applied as § 102(f) prior art in a rejection based on §§ 102(f)/103. See Ex parte Andresen, 212 USPQ 100, 102-103 (Bd. Pat. App. 1981) (prior to 1984 amendment to § 103); Ex parte Yoshino, 227 USPQ 52, 54 (Bd. Pat. App. & Int. 1985) ("The amendment to section 103 in the 1984 Act implicitly provides that prior art can exist by virtue of subsection 102(f); i.e. subject matter which an applicant did not invent may have the status of prior art as to him. Manifestly, that which is prior art under subsection 102(f) can be used alone or in combination with other prior art to support a rejection under § 103."). It is now clear that § 102(f) is a prior art provision for purposes of § 103 and § 102(f) does not refer to public activity. See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir. 1997) ("We therefore hold that subject 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. See generally 2 Chisum, Patents § 5.03[3][d] "Derivation from Another-- Section 102(f)." Of course, § 103(c) permits applicants to disqualify subject Appeal 2006-2328 Application 10/131,049 - 40 - matter which qualifies as prior art only under one of more of §§ 102(e), (f), and (g) if the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment, but presumably applicants would disclose that the subject matter is not prior art by virtue of this exception. Lastly, § 103 considers the knowledge of those of ordinary skill in the art even if it is not technically prior art under a provision of § 102. Since applicants are under a duty to disclose information material to patentability, 37 C.F.R. § 1.56, it is presumed that applicants will disclose if they are aware of information that is within the knowledge of those of ordinary skill in the art. The issue is whether applicants can be required to admit or deny that the subject matter is "prior art." It is a common problem in the USPTO that applicants describe or label subject matter as "background art," or "related art," or as "conventional," but do not "admit" that it is "prior art." That is the situation in this case. The Examiner presumed that the figures labeled "Background Art" were not "Prior Art" because Appellant did not use that exact terminology. Although terms like "background art" (or "related art" or "conventional" or some other term) suggest an admission that the subject matter is "prior art" to the applicant, the admission is not clear. If subject matter designated "background art" (or some other term) is "prior art" or is evidence of knowledge of the level of skill in the art, it is manifestly highly relevant to the issue of patentability. In our opinion, it is in the public interest for the USPTO to require applicants to admit or deny that the subject matter is Appeal 2006-2328 Application 10/131,049 - 41 - "prior art." Applicants should not have the option saying that they are without knowledge of whether it is "prior art" because they alone have the necessary information to make the prior art determination. Applicants should not be able to hide behind vague and legally imprecise characterizations such as "background art," or "related art," or "conventional art," or other terms. The USPTO should not be required to presume that subject matter labeled "background art" (or some other term) is not "prior art." The three petition decisions cited by Appellant, while evidently intended to persuade us that Appellant is not required to make an admissions as to what is prior art, point out the problem faced by the USPTO. In each case, an applicant petitioned from an examiner's requirement for the applicant to label figures described as "conventional" to be designated "prior art." The petitions were granted stating that there was no requirement for an applicant to label figures as "prior art" where there is no express admission in the specification, and that the examiners' requirements that the figures be designated "prior art" were incorrect and were withdrawn. Two of the petition decisions stated that whether the subject matter of the figures is prior art is an appealable issue, but do not explain how the examiner would raise such an issue in a rejection. There is no indication that the applicants denied that the figures were prior art: they evidently relied solely on the argument that the characterization of "conventional" was not an express admission. The USPTO is, of course, entitled to rely on applicant's duty of disclosure under Rule 56 to presume that any subject matter not expressly designated "prior Appeal 2006-2328 Application 10/131,049 - 42 - art" has been carefully evaluated by applicant and determined not to be prior art or evidence of the level of knowledge of those of ordinary skill in the art. But, where terms such as "background art," or "related art," or "conventional" are used, which raise the question of whether subject matter is, in fact, "prior art," the USPTO should be permitted to presume that it is "prior art" absent an express denial by the applicant. If not, applicants may dodge the essence of Rule 56 by providing information as "background art" to ostensibly comply with Rule 56 and yet the examiner would remain unable to apply the information as prior art. The '443 patent does not expressly admit that that the figures now labeled "Background Art" are "Prior Art." The patent refers to Figure 1 as illustrating the construction of an exemplary monitor and Figures 2A-2C as waveform diagrams from the computer system in Figure 1 (col. 2, lines 33-36). Figure 3 is stated to show "the construction of a monitor in accordance with the present invention" (col. 3, line 66 to col. 4, line 1), which suggests that the invention of Figure 3 is an improvement on the subject matter of Figure 1, i.e., that the inventor knew of the subject matter of Figure 1 when making his invention, and that it is prior art to the inventor or, at least, evidence of the level of ordinary skill in the art. Counsel's answer at the oral argument demonstrated an imprecise understanding of what is meant by "prior art." Moreover, Appellant's response that "whether Figs, 1-2C constitute 'Prior Art' hinges only on an inquiry of whether or not the subject matter of Figs. 1-2C was published in this or a foreign country, or was known Appeal 2006-2328 Application 10/131,049 - 43 - or used by others in this country" (Response of Dec. 15, 2006) fails to recognize that subject matter actually known to an inventor may be "prior art" under §§ 102(f)/103 even though it is not published or known or used by others in this country, and that it may constitute evidence of knowledge of those of ordinary skill in the art. We have no confidence that the label of "Background Art" indicates information which is not "Prior Art." Therefore, we presume that the figures labeled "Background Art" are "Prior Art." Appellant can overcome this presumption by an affidavit or declaration of the inventor addressing the legal tests for "prior art" and evidence of knowledge of the level of skill in the art; arguments of counsel will not be persuasive. In particular, however, the question is whether outputting processed vertical and horizontal synchronous signals from a synchronous signal processor to a video signal processor, as shown in Figure 1 is "prior art" and the affidavit or declaration should specifically address whether this feature is "prior art." The rejection The Graham findings regarding the scope and content of Arai and Yamagishi, and the level of ordinary skill in the art are discussed in connection with the Examiner's rejections of claims 58 and 26. The presumed prior art of Figure 1 of the '443 patent discloses a synchronous signal processor 5 which outputs processed vertical and horizontal synchronous signals to a video signal processor 2 and to a deflection coil 7 mounted to a CRT 6. Appeal 2006-2328 Application 10/131,049 - 44 - The differences between the subject matter of claim 58 and Arai are that Arai does not disclose: (1) "said microcomputer generating separate reference horizontal vertical synchronous signals when at least one synchronous signal is not detected from said computer"; (2) "said microcomputer providing said separated horizontal and vertical synchronous signals or said separate reference horizontal and vertical synchronous signals to said synchronous signal processor"; and (3) a "synchronous signal processor outputting processed vertical and horizontal synchronous signals to said video signal processor." For simplicity, we assume that claim 58 requires generating reference horizontal and vertical synchronous signals if no input horizontal and vertical synchronous signals are received, although the "one input synchronous signal" language is broad enough to read on not receiving only one of the vertical or horizontal synchronous signals. Yamagishi provides a general teaching of supplying a replacement "reference" synchronizing signal (INT. Sync) when a selected synchronizing signal (Input Sync or EXT. Sync) is detected as missing for the advantage of allowing subsequent circuit stages to continue to operate. One of ordinary skill in the art would have been motivated to apply Yamagishi's solution of generating a replacement sync signal to any situation where the problem of missing input sync signals may occur for the described advantage in Yamagishi of allowing subsequent circuit stages to operate without halting. Thus, one of ordinary skill in the art would have been motivated to modify the microcomputer in Arai to provide for generating replacement reference Appeal 2006-2328 Application 10/131,049 - 45 - vertical and horizontal synchronous signals when such synchronous signals were detected as missing. Persons of ordinary skill in the video circuitry art had sufficient skill to recognize that synchronizing signals can be missing in Arai and would have been motivated apply the teachings of Yamagishi to Arai to overcome the problem of missing sync signals. Motivation is found in the teachings of Yamagishi and in the knowledge of persons of ordinary skill in the art. This addresses differences (1) and (2). The presumed art of Figure 1 of the '443 patent discloses that it was known in the video art to output processed vertical and horizontal synchronous signals from a synchronous signal processor to a video signal processor. One of ordinary skill in the video art would have been motivated to output the processed vertical and horizontal synchronous signals VD1 and HD1 to the video system circuit 13 in Arai in view of the teaching of Figure 1 in the '443 patent. The motivation derives from the express teachings of Figure 1 of the '443 patent because one of ordinary skill in the art would have been motivated to do what had been done in the past. CONCLUSION The rejection of claims 57 and 58 is reversed. The rejection of claims 1, 21, 26, 27 and 35 is sustained. New grounds of rejection are entered as to claims 57 and 58. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Appeal 2006-2328 Application 10/131,049 - 46 - Regarding any affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides: (a)(1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. . . . 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE 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 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. . . . Should the Appellant elect to prosecute further before the Primary Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If the Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. Appeal 2006-2328 Application 10/131,049 - 47 - 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) (2004). AFFIRMED-IN-PART JOHN C. MARTIN ) Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT LEE E. BARRETT ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) JAMESON LEE ) Administrative Patent Judge ) LEB/lp Appeal 2006-2328 Application 10/131,049 - 48 - ROBERT E. BUSHNELL 1522 K STREET NW SUITE 300 WASHINGTON, DC 20005-1202