Ex Parte Lee

Board of Patent Appeals and Interferences

May 2, 2003

09086312 (B.P.A.I. May. 2, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JI-YOUNG LEE
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Appeal No. 2002-1996
Application No. 09/086,312
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HEARD: Apr. 2, 2003
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Before RUGGIERO, BARRY, and LEVY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1, 2, 5-8, 11, and 12. The appellant appeals
therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue on appeal controls an image on a multi-synchronization
mode display. With such a display, the horizontal and vertical position values and the
horizontal and vertical size values of an image displayed thereon vary with the mode of
synchronization. (Paper No. 8 at 2.) The display sets a reference value according to a
specific mode to correspond to each synchronization mode and stores it as shown in
Appeal No. 2002-1996 Page 2
Application No. 09/086,312
Table 1 of the appellant's specification. (Id.) More specifically, the Table shows that
the horizontal and vertical positions and horizontal and vertical sizes are set to perform
image control suitable for each mode when the display is fabricated. (Spec. at 2.) The
appellant asserts that, in such a display, errors in the fabrication of its cathode ray tube
impede correct execution of image control. (Id.)
To solve this problem, the appellant explains, his multi-synchronization mode
display allows a reference value to vary in a narrow, predetermined range. (Id.) When
the display is fabricated, data for controlling the size of an image are stored in a
memory, and the image is controlled automatically using the stored data. (Id. at 15.)
A further understanding of the invention can be achieved by reading the following
claims.
1. A method of controlling an image parameter of an image
displayed on a multi-synchronization display, said image parameter being
one of increase vertical size of image, decrease vertical size of image,
increase horizontal size of image, decrease horizontal size of image,
move image up, move image down, move image to right, and move image
to left, said method comprising the steps of:
(a) determining whether there is an image parameter input from a
user for controlling an image parameter of the image;
(b) setting a variable range of a reference value determined when
the display was fabricated, upon it being determined that there is no
image parameter input from the user;
Appeal No. 2002-1996 Page 3
Application No. 09/086,312
(c) upon the variable range being set, determining whether the user
has operated a control key for changing an image parameter of the
displayed image; and
(d) upon it being determined that the user has operated the control
key, increasing or decreasing image parameter data according to the
image parameter input by the user;
wherein all of said determining steps are carried out entirely by
software means in a programmed microcomputer; and
wherein the step (d) of increasing or decreasing image parameter
data comprises the steps of:
(d1) upon it being determined that the user has operated the
control key for increasing the image parameter data, determining
whether the increased image parameter data is greater than or
equal to a predetermined maximum value of the variable range;
(d2) if the increased image parameter data is not greater
than or equal to the predetermined maximum value of the variable
range, increasing the image parameter data according to the image
parameter input from the user;
(d3) upon it being determined that the user has operated the
control key for decreasing the image parameter data, determining
whether the decreased image parameter data is less than or equal
to a predetermined minimum value of the variable range; and
(d4) if the decreased image parameter data is not less than
or equal to the predetermined minimum value of the variable range,
decreasing the image parameter data according to the image
parameter input from the user.
5. A method of controlling an image parameter of an image
displayed on a multi-synchronization display, said image parameter being
one of increase vertical size of image, decrease vertical size of image,
increase horizontal size of image, decrease horizontal size of image,
Appeal No. 2002-1996 Page 4
Application No. 09/086,312
move image up, move image down, move image to right, and move image
to left, said method comprising the steps of:
(a) determining whether there is an image parameter input from a
user for controlling an image parameter of the image;
(b) setting a variable range of a reference value determined when
the display was fabricated, upon it being determined that there is no
image parameter input from the user;
(c) upon the variable range being set, determining whether the user
has operated a control key for changing an image parameter of the
displayed image; and
(d) upon it being determined that the user has operated the control
key, increasing or decreasing image parameter data according to the
image parameter input by the user;
wherein all of said determining steps are carried out entirely by
software means in a programmed microcomputer; and
wherein the step (a) of determining whether there is an image
parameter input from the user comprises the steps of:
(a1) reading the reference value;
(a2) determining whether the user has operated the control
key; and
(a3) upon it being determined that the user has operated the
control key, comparing the image parameter input from the user
with predetermined minimum and maximum values for the image
parameter, and selectively increasing or decreasing the image
parameter input according to the comparison result.
Appeal No. 2002-1996 Page 5
Application No. 09/086,312
Claims 1, 2, 5-8, 11, and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by U.S. Patent No. 5,579,029 ("Arai") or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Arai.
OPINION
Rather than reiterate the positions of the examiner or the appellant in toto, we
address the main point of contention therebetween. The examiner asserts, "[i]n
column 3, lines 14-28, Arai et al. discloses setting of display parameters at the factory
before shipping." (Examiner's Answer at 6.) The appellant argues, "Arai et al. '029
does not disclose or suggest such a method or apparatus wherein a variable range of a
reference value is determined when the display is fabricated in the factory, and wherein
that variable range is then set in the second step or function performed by the method
and apparatus, respectively." (Appeal Br. at 8.)
We begin with the anticipation rejection. "A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or inherently described,
in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing Structural Rubber Prods. Co. v.
Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed. Cir. 1984); Connell
v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983);
Appeal No. 2002-1996 Page 6
Application No. 09/086,312
1We advise the examiner to copy his rejections into his examiner’s answers
rather than merely referring to a “rejection . . . set forth in prior Office Action. . . .”
(Examiner’s Answer at 3.)
Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771, 218 USPQ 781, 789 (Fed. Cir.
1983)). "[T]here is no anticipation 'unless all of the same elements are found in exactly
the same situation and united in the same way . . . in a single prior art reference.'"
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894, 221 USPQ 669, 673
(Fed. Cir. 1984) (citing Kalman, 713 F.2d at 771, 218 USPQ at 789).
Here, although the examiner purports to apply only one reference, he relies on
teachings of multiple inventions mentioned in Arai. Often the examiner relies on
descriptions of the invention shown in Figure 6 of Arai. (Final Rejection1 at 2;
Examiner's Answer at 4-5.) Specifically, the reference calls this invention "the third
embodiment of the invention." Col. 5, ll. 17-18.
To support his aforementioned assertion, however, the examiner relies on a
passage of Arai describing "the above conventional technique. . . ." Col. 3, l. 14. This
conventional technique is not described as part of Arai's invention. To the contrary, it
"is a technique disclosed in JP-U-64-4491." Col. 1, ll. 32-33. The examiner's reliance
Appeal No. 2002-1996 Page 7
Application No. 09/086,312
2The examiner also cites Figure 9 of Arai, (Final Rejection at 2), which "show[s]
the fifth embodiment of the invention." Col. 5, ll. 23-24.
on the teachings of both Arai's third embodiment and those of JP-U-64-44912 evidence
that neither of these inventions, by itself, discloses all the claimed elements in exactly
the same situation and united in the same way. Such a failure "negates anticipation."
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed.
Cir. 1986). Therefore, we reverse the anticipation rejection.
We turn to the obviousness rejection. "[T]o establish obviousness based on a
combination of the elements disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the specific combination that was
made by the applicants." In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000) (citing In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). "[T]he factual inquiry whether to combine references must be thorough and
searching." McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d
1001, 1008 (Fed. Cir. 2001).
Here, the examiner fails to allege, let alone show evidence of, the desirability of
combining elements of Arai's third embodiment and elements of JP-U-64-4491. We will
Appeal No. 2002-1996 Page 8
Application No. 09/086,312
not "resort to speculation," In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), about such desirability. Therefore, we reverse the obviousness rejection.
CONCLUSION
In summary, the rejections of claims 1, 2, 5-8, 11, and 12 under § 102(b) and
under § 103(a) are reversed.
Appeal No. 2002-1996 Page 9
Application No. 09/086,312
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2002-1996 Page 10
Application No. 09/086,312
ROBERT E BUSHNELL
ATTORNEY AT LAW
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