Ex Parte Lin

Board of Patent Appeals and Interferences

Sep 9, 2008

10180743 (B.P.A.I. Sep. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte I-JONG LIN
____________

Appeal 2008-3154
Application 10/180,743
Technology Center 2800
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Decided: September 9, 2008
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO,
and SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-3 and 5-34. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
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Appellant’s invention relates to the detection of a light point projected
on a computer controlled displayed image. The light point is projected at the
displayed image while a notification signal indicating that the light point is
being projected is simultaneously transmitted to a controller. The
detectability of the light point is increased by the adjustment of at least one
of the image capture and display parameters by the controller within a
predetermined time after receipt of the notification signal (Spec. ¶ 0009).
Claim 1 is illustrative of the invention and reads as follows:
1. A system including a computer system for controlling and
generating image data for displaying an image, the system comprising:

a device for projecting a light point at the displayed image while at
essentially the same time transmitting a notification signal indicating
the light point is being projected;

a controller for adjusting at least one of image capture and image
display parameters so as to increase detectability of the projected light
point upon the displayed image for a predetermined interval of time
after receipt of the notification signal;

a device for capturing image data including the displayed image and
the projected point upon the displayed image within the
predetermined time interval;

a analyzer for detecting the projected point within the captured image
data dependent on the adjusted parameters.
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The Examiner’s Answer cites the following prior art references:
Hasegawa US 2002/0015137 A1 Feb. 7, 2002
Kitazawa US 6,454,419 B2 Sep. 24, 2002
(filed Mar. 19, 2001)
Chen US 6,803,907 B2 Oct. 12, 2004
(filed Oct. 4, 2001)

Claims 1-3, 5-7, 9-14, 16-22, and 25-30 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Chen.
Claims 8, 15, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen in view of Hasegawa.1
Claims 31-34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Kitazawa.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C. § 102(e), does Chen have a disclosure which
anticipates the invention set forth in claims 1-3, 5-7, 9-14,
16-22, and 25-30?

1 Although Appellant did not include dependent claim 23 in the claims
appendix (App. Br. 22), we have treated claim 23 as a rejected claim since it
is included in the body of the Examiner’s rejection in both the Office action
mailed September 22, 2005 (page 6) as well as the Examiner’s Answer
(page 7).
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(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 8,
15, 23, and 24, would one of ordinary skill in the art at the time
of the invention have found it obvious to combine Chen with
Hasegawa to render the claimed invention unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claims 31-
34, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Chen with
Kitazawa to render the claimed invention unpatentable?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
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of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
“‘. . . .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 take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.”

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(e) REJECTION

Claims 1-3, 5-7, 9, and 27-30

With respect to the 35 U.S.C. § 102(e) rejection of independent claims
1 and 27 based on the teachings of Chen, the Examiner indicates (Ans. 3-4)
how the various limitations are read on the disclosure of Chen. In particular,
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the Examiner directs attention to the illustration in Figure 2 of Chen as well
as the accompanying description beginning at column 3, line 43 of Chen.
Appellant’s arguments in response assert that the Examiner has not shown
how each of the claimed features is present in the disclosure of Chen so as to
establish a prima facie case of anticipation.
After reviewing the Chen reference in light of the arguments of
record, we are in general agreement with Appellant’s position as stated in
the Briefs. At the outset, however, we note that we do not agree with
Appellant’s contention that the Examiner erred in interpreting the Chen
reference as providing a disclosure of transmitting a notification signal
indicating that a light point is being projected at a displayed image.
According to Appellant (App. Br. 16-17; Reply Br. 2-3), the transmission of
the control signal by the cursor button set 330 in the beam pen 30 of Chen,
which the Examiner likens to the claimed “notification signal,” occurs only
“randomly and at the whim of the user,” and not at essentially the same time
that the beam point is being projected as presently claimed.
Aside from the fact that the claim language “essentially the same
time” is relative terminology, as pointed out by the Examiner (Ans. 10), we
agree with the Examiner that the language of independent claims 1 and 27
requires only that, at some point during the projection of the light point at
the displayed image in Chen, a notification signal is simultaneously
transmitted. As explained by the Examiner (id.), this takes place when the
user presses the mouse cursor button 330 of the beam pen 30 while the light
point is projected on to the display screen 20.
We do agree with Appellant, however, that the Examiner erred in
finding that the Chen reference discloses the adjustment of image display
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parameters to increase the detectability of the projected light spot as set forth
in each of independent claims 1 and 27. In addressing this claimed feature,
the Examiner has taken the position (Ans. 4 and 11) that, since the notebook
computer CPU in Chen is not aware of the projected light spot until the
notification signal is sent from the beam pen, the CPU’s detectability of the
light point will be increased once it receives the notification signal and then
functions to adjust parameters of the displayed image.
We do not find, however, any basis in the disclosure of Chen to
support the Examiner’s position. Contrary to the Examiner’s contention,
Chen discloses that the notebook computer CPU is aware of the position of
the light point at all times since it is the CPU 110 that operates to move the
cursor to the detected light point position (Chen, col. 3, ll. 25-31). In other
words, since the CPU 110 is aware of the position of the light point before
the notification signal is sent, it does not function to increase detectability of
the light point “for a predetermined interval of time after receipt of the
notification signal” as claimed.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Chen, we do not sustain the Examiner’s 35
U.S.C. § 102(e) rejection of appealed independent claims 1 and 27, nor of
claims 2, 3, 5-7, 9, and 28-30 dependent thereon.

Claims 10-14, 16-22, 25, and 26
Although we found Appellant’s arguments persuasive in convincing
us of error in the Examiner’s 35 U.S.C. § 102(e) rejection of claims 1-3, 5-7,
9, and 27-30, we reach the opposite conclusion with respect to the rejection
of independent claims 10 and 18, and their respective dependent claims 11-
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14, 16, 17, 19-22, 25, and 26. We note that, unlike previously discussed
independent claims 1 and 27, independent claims 10 and 18 include no
limitations directed to the increasing of projected light point detectability by
adjusting display parameters. In fact, independent claims 10 and 18 merely
require the transmission of a light signal projection notification signal
simultaneously with the projection of the light point on a computer
controlled displayed image.
We refer to our earlier discussion in which we found that the
Examiner did not error in finding that, during the projection of the light
point at the displayed image in Chen, a notification signal is simultaneously
transmitted by a user pressing the mouse cursor button 330 of the beam pen
30 while the light point is projected onto the display screen 20. Although
Appellant argues (Reply Br. 2-3) that the Examiner’s position is in error
since Chen never refers to the signal transmitted by the beam pen 30 to the
notebook computer as a “notification” signal, we would point out that
anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831,
832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l Trade
Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory
reference . . . need not duplicate word for word what is in the claims."
Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir.
1991).
We further find to be without merit Appellant’s attempt to draw a
distinction between the claimed notification signal and the control signal
transmitted by the beam pen 30 of Chen. According to Appellant (Reply Br.
3), a notification signal is one which informs a controller of a particular
event such as the projection of a light point. In our view, however, this is
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precisely what occurs in Chen, i.e., the transmitted beam pen control signal
is a notification signal since it is informative of the light point projection,
without which projection no control signal would be transmitted.
For all of the above reasons, since all of the claim limitations are
present in the disclosure of Chen, we sustain the Examiner’s 35 U.S.C.
§ 102(e) rejection of appealed independent claims 10 and 18, as well as
dependent claims 11-14, 16, 17, 19-22, 25, and 26 not separately argued by
Appellant.

35 U.S.C. § 103(a) REJECTIONS
The rejection of dependent claims 8, 15, 23, and 24 based on Chen in
view of Hasegawa

The rejection of claim 8 is not sustained. The Examiner has added
the teachings of Hasegawa to Chen to address the infrared signal feature of
dependent claim 8. Although we find no error in the Examiner’s articulated
basis (Ans. 6) for combining Hasegawa and Chen, we find nothing in the
disclosure of Hasegawa which overcomes the innate deficiencies of Chen in
disclosing the claimed invention as set forth in base claim 1.
We do sustain the rejection of dependent claims 15, 23, and 24.
Appellant has provided no separate arguments for the patentability of these
claims but, rather, has relied upon arguments previously made with respect
to independent base claims 10 and 18, which arguments we found to be
unpersuasive as discussed supra.

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The rejection of dependent claims 31-34 based on Chen in view of Kitazawa

This rejection is not sustained. The Examiner has added the teachings
of Kitazawa to Chen to address the image resolution features of dependent
claim 31-34. As with the previously discussed rejection based on the
combination of Chen and Hasegawa, although we find no error in the
Examiner’s articulated basis (Ans. 7-8) for combining Kitazawa and Chen,
we find nothing in the disclosure of Kitazawa which overcomes the innate
deficiencies of Chen in disclosing the claimed invention as set forth in base
independent claim 27.

CONCLUSION
In summary, with respect to the Examiner’s 35 U.S.C. § 102(e)
rejections of appealed claims 1-3, 5-7, 9-14, 16-22, and 25-30, we have not
sustained the rejection of claims 1-3, 5-7, 9, and 27-30, but have sustained
the rejection of claims 10-14, 16-22, 25, and 26. With respect to the
Examiner’s 35 U.S.C. § 103(a) rejections of appealed claims 8, 15, 23, 24,
and 31-34, we have not sustained the rejections of claims 8 and 31-34, but
have sustained the rejection of claims 15, 23, and 24. Accordingly, the
Examiner’s decision rejecting appealed claims 1-3 and 5-34 is affirmed-in-
part.
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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)(effective
September 13, 2004).

AFFIRMED-IN-PART

KIS

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