Ex Parte Murata

Board of Patent Appeals and Interferences

Nov 19, 2007

09933017 (B.P.A.I. Nov. 19, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TORU MURATA
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Appeal 2007-3469
Application 09/933,017
Technology Center 2600
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Decided: November 19, 2007
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Before ANITA PELLMAN GROSS, JEAN R. HOMERE, and
JOHN A. JEFFERY, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 through 12. Claims 15 through 21 and 23 through 26
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Application 09/933,017

have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) to decide
this appeal.1 We affirm.

The Invention
Appellant invented an electronic presentation system that uses an
Ethernet communication cable to transmit both video and control signals
between a remote-controlled projector located in a meeting room and a
personal computer (PC) located in an office. The electronic presentation
system allows the projector to display on a screen an enlarged replica of an
image currently displayed on the personal computer. (Spec. 4.)
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. An electronic presentation system comprising:

Ethernet communication means;

a first image and voice display means connected to said Ethernet
communication means in which display control and communication control
through said Ethernet communication means are controlled by remote
control means; and

a personal computer provided with a second image and voice display
means connected to said Ethernet communication means and different from
said first image and voice display means placed in a position different from
the position placing said first image and voice display means, and input
means;

wherein said remote control means captures display contents
displayed by said personal computer on said second image and voice display
means to display said captured display contents on said first image and voice
display means at the same time, and

1 An Oral Hearing was held on this appeal on November 8, 2007.
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wherein said Ethernet communication means is used to transfer said
display contents, said display control and said communication control.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Miyashita US 5,782,548 Jul. 21, 1998
Yasukawa US 6,437,786 B1 Aug. 20, 2002

The Examiner rejects the claims on appeal as follows:
Claims 1 through 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Miyashita and Yasukawa.
First, Appellant contends2 that the combination of Miyashita and
Yasukawa does not render claims 1 through 12 unpatentable. Particularly,
Appellant contends that the cited references do not teach or suggest an
Ethernet communication means used for transferring display contents,
display control and communication control. (App. Br. 11.) Appellant
further contends that one of ordinary skill in the art would not be motivated
to combine the cited references since the suggested combination would
destroy the manner of operation of Miyashita. (Reply Br. 6.) In response,
the Examiner contends that Miyashita’s disclosure of an image projection
system in combination with Yasukawa’s teaching of using an Ethernet line
to transmit both image contents and control information teaches the
invention. (Answer 14-16.) Additionally, the Examiner contends that the

2 This decision considers only those arguments that Appellant submitted in
the Appeal Brief. Arguments that Appellant could have made but chose not
to make in the Brief are deemed to have been waived. See 37 C.F.R.
§ 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362,
1368 (Fed. Cir. 2004).
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ordinarily skilled artisan would have been motivated to combine the
teachings of Miyashita and Yasukawa to enhance the data transfer speed and
to reduce cabling. (Answer 15.)
ISSUE
The pivotal issue in the appeal before us is as follows: Has Appellant
shown3 that the Examiner failed to establish that the combined disclosures
of Miyashita and Yasukawa render the claimed invention unpatentable under
35 U.S.C. § 103(a)? Particularly, does Miyashita’s disclosure of an image
projection system in combination with Yasukawa’s disclosure of using an
Ethernet cable to transfer both image contents and control information
render the claimed invention unpatentable?
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.

3 In the examination of a patent application, the Examiner bears the initial
burden of showing a prima facie case of unpatentability. In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). When that burden is met, the burden
then shifts to the applicant to rebut. Id.; see also In re Harris, 409 F.3d
1339, 1343-44 (Fed. Cir. 2005) (finding rebuttal evidence unpersuasive). If
the applicant produces rebuttal evidence of adequate weight, the prima facie
case of unpatentability is dissipated. Piasecki, 745 F.2d at 1472. Thereafter,
patentability is determined in view of the entire record. Id. However,
Appellant has the burden on appeal to the Board to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)
(“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

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The Invention
1. Appellant invented an image projection system (Figure 1) including
a remote-controlled projector (3) connected to a PC (2) via an Ethernet
communication line (4). (Spec. 5.)
2. As depicted in Figure 1, upon receiving an infrared signal from the
remote control transmitter (37), the Ethernet communication line (4) is used
to simultaneously transfer both remote control data packets and image data
packets between the PC (2) and the projector (3). (Id. 6-7.)
The Prior Art Relied Upon
3. As shown in Figure 4, Miyashita discloses a remote-controlled
image projection system for projecting an image in a PC (40) in a first
location to a screen (16) in a second location using a projector (10). (Col. 8,
ll. 1-14.)
4. Miyashita discloses that, upon receiving a command from the
remote controller (20), digital data is transmitted between the projector (10)
and the PC (40) via a serial transmission line (RS-232C) (50). The
transmitted digital signals include control information to adjust the sound
volume, to brighten the picture, as well as to advance and reverse each page.
(Col. 8, ll. 2-22, col. 9, ll. 52-60.)4 The digital signals also include operation
signals transmitted wirelessly from the remote controller (20) from the
projector to the PC. (Col. 9, ll. 22-26.)

4 Miyashita discloses transferring control data emitted from the remote
control to the PC via the RS232C line such that control functions can be
performed without interrupting the presentation. (Col. 8, ll. 20-22.)
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5. As shown in Figure 6, Miyashita further discloses a separate
input for transmitting video signals received from the PC (or a video
deck/video camera/video disk player) to the projector. (Col. 7, ll. 1-12.)
6. As depicted in Figure 3, Yasukawa discloses a network
projector system wherein a projector (31) is connected to a server (32) via
Ethernet cable (33). The projector includes a bus (13) for transferring image
data and control signals obtained from the PC via the Ethernet cable.5 (Col.
9, ll. 23-55; col. 10, ll. 13-50; col. 11, ll. 11-33.)

PRINCIPLES OF LAW
OBVIOUSNESS
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

5 Transferred data includes image data and image controlling data exchanged
between a specified server and the projector. (Col. 2, ll. 57-60.)
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248 [(1850)].” KSR, 127 S. Ct. at 1739 (citing Graham
v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after
Graham [that] illustrate this doctrine.” Id. at 1739. “In United States v.
Adams, … [t]he Court recognized that when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
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yield a predictable result.” Id. at 1740. “Sakraida and Anderson’s-Black
Rock are illustrative – a court must ask whether the improvement is more
that the predictable use of prior art elements according to their established
function.” Id. at 1740.
The Supreme Court stated that:
Following these principles may be more difficult in other cases
than it is here because the claimed subject matter may involve
more than the simple substitution of one known element for
another or the mere application of a known technique to a piece
of prior art ready for the improvement.
Id. The Court explained,
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.

Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id., citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”). However, “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.” Id.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a mechanical device for actuating a phonograph to
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play back sounds associated with a letter in a word on a puzzle piece with
(2) an electronic, processor-driven device capable of playing the sound
associated with a first letter of a word in a book. Leapfrog Enterprises, Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(“[a]ccommodating a prior art mechanical device that accomplishes [a
desired] goal to modern electronics would have been reasonably obvious to
one of ordinary skill in designing children’s learning devices”). In reaching
that conclusion, the Federal Circuit recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Id. at 1161 (citing KSR, 127 S. Ct. 1727,
1739 (2007)) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). The Federal Circuit relied in part on the fact that Leapfrog had
presented no evidence that the inclusion of a reader in the combined device
was “uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Id. at 1162 (citing KSR,
127 S. Ct. at 1740-41 (2007)).

ANALYSIS
We begin our analysis by noting that independent claims 1 and 7
recite an Ethernet communication means for transferring (1) display
contents, (2) display control, and (3) communication control. (App. Br.,
Claim Appendix.) We find that the combined disclosures of Miyashita and
Yasukawa reasonably teach this limitation.
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As detailed in the Findings of Fact section above, we have found that
Miyashita, similarly to the claimed invention, discloses an image projection
system having a remote controlled projector that transmits image and
communication control data to the PC via a communication line. (Findings
3 and 4.) We have also found that Miyashita discloses a separate input for
transferring image contents data between the PC and the projector. (Finding
5.) Additionally, we have found that Yasukawa discloses an Ethernet line
for transferring both image contents and control data between a computer
and a projector. (Finding 6.) Therefore, we find that one of ordinary skill
would have readily recognized that Miyashita’s apparatus, taken in
combination with Yasukawa’s disclosure, would have predictably resulted in
a remote-controlled image projection system that uses a single Ethernet line
as the primary medium for transmitting image content, image control, and
communication control data between a projector and a PC.6 We agree with
the Examiner that the ordinarily skilled artisan would have recognized that a
particular benefit resulting from this proffered combination is that the
amount of cables needed for the ensuing system to function would
predictably be reduced.

6 [I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). The Supreme
Court has held that in analyzing the obviousness of combining elements, a
court need not find specific teachings, but rather may consider "the
background knowledge possessed by a person having ordinary skill in the
art" and "the inferences and creative steps that a person of ordinary skill in
the art would employ." See KSR Int’l, at 1740-41. To be nonobvious, an
improvement must be "more than the predictable use of prior art elements
according to their established functions." Id. at 1740.

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Appellant’s argument that such reduction in cabling teaches away
from Miyashita’s system is not persuasive.7 As set forth in the Findings of
Fact section above, we have found that the Miyashita patent is primarily
concerned with allowing users to remotely control data transmitted between
the PC and the projector without interrupting the presentation.8 As noted
above, the proffered combination of Miyashita and Yasukawa would provide
the benefit of using a single Ethernet line to transmit both image data and
control data. We further note that the resulting Miyasawa-Yasukawa system
would still be able to remotely control data transmitted between the PC and
the computer without interrupting the presentation. Additionally, we note
that the resulting system would further be able to transmit image control,
image content, and transmission control data via the single Ethernet cable
while preserving the other video input(s) for additional display possibilities.
It follows that the Examiner did not err in rejecting independent claims 1and
7 as being unpatentable over the combination of Miyashita and Yasukawa.
Appellant did not provide separate arguments with respect to the
rejection of claims 2 through 6 and 8 through 12. Therefore, we select
independent claim 1 as being representative of the cited claims. Claims 2
through 12 consequently fall together with representative claim 1. See In re
Young, 927 F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R.
§ 41.37(c)(1)(vii).

7 Appellant alleges that in Miyashita, using more cables is beneficial and
more suitable since it provides increased functionality for the projector, such
as additional display possibilities. Further, Miyashita uses dual lines to
allow the control of data while the presentation is ongoing. (Reply Br. 6.)
8 See supra note 3.
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CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
failed to establish that the combined disclosures of Miyashita and Yasukwa
render claims 1 through 12 unpatentable under 35 U.S.C. § 103(a).

DECISION
We have affirmed the Examiner’s decision rejecting claims 1 through
12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

clj

SUGHRUE, MION, ZINN, MACPEAK & SEAS
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WASHINGTON, DC 20037

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