Ex Parte ParkDownload PDFBoard of Patent Appeals and InterferencesApr 27, 200909793717 (B.P.A.I. Apr. 27, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KWANG-YOUN PARK ____________ Appeal 2009-1432 Application 09/793,717 Technology Center 2600 ____________ Decided:1 April 28, 2009 ____________ Before JOSEPH F. RUGGIERO, CARLA KRIVAK, and KARL D. EASTHOM, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of claims 1-38, which are all of the pending claims. An oral hearing on this appeal was conducted on April, 23, 2009. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the Brief (filed November 28, 2007), the Answer (mailed February 6, 2008), and the Reply Brief (filed April 1, 2008) 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). Appellant’s Invention Appellant’s invention relates to the interconnection, by a single cable connector, of a reproduction apparatus and a monitor apparatus, the cable connector carrying an image and/or an audio signal, a first control signal, and a power signal between the reproduction apparatus and the monitor apparatus. The monitor apparatus includes a controller which generates the first control signal and a second control signal to control, respectively, the reproduction apparatus and an output unit in the monitor apparatus. The output unit in the monitor apparatus outputs the image and/or audio signal from the reproduction apparatus as a visual and/or auditory signal in response to the second control signal. A power unit in the monitor apparatus Appeal 2009-1432 Application 09/793,717 receives the power signal from the reproduction apparatus and supplies power to each component of the monitor apparatus. According to Appellant, the above-described arrangement permits the monitor apparatus to be driven through the reproduction apparatus, and vice versa, using a single remote controller. (See generally Spec. ¶¶ [0004]-[0006]). Claim 1 is illustrative of the invention and is reproduced as follows: 1. A monitor apparatus connected to a reproduction apparatus, the monitor apparatus comprising: a connector allowing transmission of an image and/or audio signal, a first control signal between the reproduction apparatus and the monitor apparatus, and a power signal transmitted from the reproduction apparatus; a manipulation key input unit receiving a manipulation key signal; a remote controller sensor receiving a remote controller sensor signal; and a processing unit in the monitor apparatus selectively receiving the manipulation key signal and the sensor signal and generating therefrom the first control signal controlling the reproduction apparatus and a second control signal controlling the monitor apparatus to provide the audio and/or image signal from the reproduction apparatus as a visual and/or auditory signal. The Examiner’s Rejections The Examiner’s Answer cites the following references: Kim US 5,262,903 Nov. 16, 1993 Sugiyama US 5,815,631 Sep. 29, 1998 3 Appeal 2009-1432 Application 09/793,717 Huh US 5,856,852 Jan. 5, 1999 Park US 6,650,359 B1 Nov. 18, 2003 (filed Mar. 2, 1999) Claims 1, 4-7, 10-13, 17-22, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Huh in view of Kim. Claims 2, 3, 8, 9, 14-16, 23, 29, and 33-38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Huh in view of Kim, and further in view of Sugiyama. Claims 24-26 and 30-32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Huh in view of Kim, and further in view of Park. ISSUES Under 35 U.S.C. § 103(a), with respect to appealed claims 1-38, would one of ordinary skill in the art at the time of the invention have found it obvious to combine Huh with Kim, and additionally with Sugiyama and Park to render the claimed invention unpatentable? The pivotal issues before us are whether Appellant has demonstrated that the Examiner erred in (i) interpreting the disclosure of Huh as teaching that the SS1 - SS3 selection signals provided to the control section 17 of the TV monitor are image and/or audio signals from the VCR which are output, in response to a control signal, as a visual and/or auditory signal, and (ii) determining the obviousness to the skilled artisan of combining the TV monitor and reproduction apparatus teachings of Huh and the power signal teachings of Kim, as well as the further addition of the auxiliary reproduction apparatus teachings of Sugiyama and the vehicle power supply teachings of Park. 4 Appeal 2009-1432 Application 09/793,717 FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence: 1. Huh discloses (Figs. 2A and 3A, col. 5, ll. 41-54) a system including a television (TV) and a Video Cassette Recorder (VCR), each of which includes respective controlling sections 4 and 6 for enabling the provision of programmed recording information to the VCR from the TV. 2. Huh further discloses (Figs. 2A-2B; col. 5, ll. 31-40) an interface section 7 for enabling bilateral communication between the VCR and the TV. 3. Huh also discloses (col. 5, ll. 46-61 and col. 9, ll. 53-55) the provision of selection signals SS1 - SS3 to the controlling section 4 of the TV from a key input 8 or a remote controller 9 of the VCR or from a key input 10 or remote controller 11 of the TV. 4. The SS1 - SS3 signals are described by Huh (col. 8, ll. 14-49 and col. 10, ll. 53-65) as selection signals which inform the control section 4 of the TV which of the detected teletext data received from antenna (ANT1) is appropriate for the particular capability functions of the VCR. 5. Kim discloses (Fig. 2; col. 1, ll. 20-27 and 43-56) a system for programming the recoding of a video cassette recorder (VCR) that does not include a tuner. The programming is performed through a TV connected to the VCR with power being supplied to the TV from the VCR. 6. Sugiyama discloses (Fig. 1; col. 3, ll. 11-47) an audio video (AV) system which includes a TV receiver 1 and four video tape recorders 5 Appeal 2009-1432 Application 09/793,717 (VTRs) 2-5. The TV receiver 1 receives input signals from and outputs signals to the VTRs through operation of an output selector 24. 7. Park discloses (Figs 1, 12, and 13; col. 5, ll. 25-34) a recoding apparatus for a vehicle in which power is supplied to the power jacks of the recording apparatus as a result of the operation of the vehicle engine 81. The recording results may be supplied to the video input jacks of a video cassette recorder (VCR) or directly to a TV. PRINCIPLES OF LAW 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) (stating that 35 U.S.C. § 103 leads to three basic factual inquiries: the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the art). “[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. 6 Appeal 2009-1432 Application 09/793,717 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ANALYSIS I. THE OBVIOUSNESS REJECTION OF CLAIMS 1, 4-7, 10- 13, 17-22, 27, AND 28 BASED ON THE COMBINATION OF HUH AND KIM. With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of appealed independent claims 1, 7, 17, 21, and 27 based on the combination of Huh and Kim, Appellant initially asserts that the Examiner has failed to set forth a prima facie case of obviousness since a proper basis for the proposed combination of references has not been established. In particular, according to Appellant (App. Br. 19-22; Reply Br. 6-7), a skilled artisan would not have found it obvious to modify the TV monitor and VCR reproduction apparatus system of Huh by adding the feature of supplying power to the TV monitor from the VCR reproduction apparatus. In Appellant’s view (id.), the Examiner’s proffered rationale for making the proposed combination of Huh and Kim, i.e., to save manufacturing costs (Ans. 4 and 21), is not supported by any disclosure in the cited references or by any valid line of reasoning set forth by the Examiner. We agree with Appellant. It is apparent from the disclosure of Kim that any saving in manufacturing cost is provided by not including a tuner in the VCR reproduction apparatus. As disclosed by Kim (col. 1, ll. 20-27), one result of absence of a tuner in the VCR of Kim is the need to use the tuner in the TV to program the VCR. While Kim discloses (col. 43-56) that a power signal is provided to the TV from the VCR to turn on the TV for 7 Appeal 2009-1432 Application 09/793,717 VCR programming purposes, we do not find that the ordinarily skilled artisan would take from this disclosure any suggestion that manufacturing costs could be saved by supplying power to a TV from a VCR. To the contrary, we find that, at best, Kim provides a teaching or suggestion to the ordinarily skilled artisan of saving the manufacturing cost of a VCR by not including a tuner. As argued by Appellant (App. Br. 20; Reply Br. 6-7), however, since the programmed recording system disclosed by Huh includes a tuner in both the TV and the VCR, the removal of the tuner from Huh’s VCR would render Huh unsatisfactory for its intended purpose. See In re Gordon, 733 F.2d 900, 902. We also agree with Appellant’s further assertion (id.) that, if the tuner in the VCR of Huh were to be removed, Huh would not be able to record a broadcast signal received through the VCR’s antenna ANT1 in accordance with a tuning control signal provided from the VCR controller 25. We further find that even assuming, arguendo, that the Examiner provided a proper basis for combining the disclosure of Huh and Kim, the resulting combination would not satisfy all of the claimed features present in each of the independent claims 1, 7, 17, 21, and 27. We agree with Appellant (App. Br. 25, 26, and 28; Reply Br. 4-5), that the SS1 - SS3 signals provided to the control section 17 of the TV monitor of Huh are not audio and/or image signals provided from the VCR as claimed but, rather, are merely selection signals which detect the appropriate received programming teletext data in accordance with the capability functions of the VCR. (See FFs 3-4). Even further, there is no indication from the disclosure of Huh that the SS1 - SS3 selection signals provided to the control section 17 of the 8 Appeal 2009-1432 Application 09/793,717 TV monitor are image and/or audio signals from the VCR which are output, in response to a control signal, as a visual and/or auditory signal as claimed. In view of the above discussion, we are of the opinion that the applied prior art references, even if combined, do not support the obviousness rejection. We, therefore, do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of independent claims 1, 7, 17, 21, and 27, nor of claims 4-6, 10- 13, 18-20, 22, and 28 dependent thereon. II. THE OBVIOUSNESS REJECTION OF CLAIMS 2, 3, 8, 9, 14-16, 23, 29, AND 33-38 BASED ON THE COMBINATION OF HUH, KIM, AND SUGIYAMA. We do not sustain this rejection as well. The Examiner has applied the Sugiyama reference to the combination of Huh and Kim to address the claimed feature of including in the TV monitor an auxiliary reproduction apparatus that outputs an auxiliary image and/or audio signal. We find nothing, however, in the disclosure of Sugiyama which overcomes the innate deficiencies of the Huh and Kim references discussed supra. We also agree with Appellant (App. Br. 29-30) that, while Sugiyama discloses (col. 3, ll. 11-47) that a TV monitor receives signals from and outputs signals to a plurality of VTR reproduction devices, there is no teaching that the TV monitor includes an auxiliary reproduction apparatus which outputs an image and/or audio signal separate from a first-recited image and/or audio signal as claimed. 9 Appeal 2009-1432 Application 09/793,717 III. THE OBVIOUSNESS REJECTION OF CLAIMS 24-26 and 30-32 BASED ON THE COMBINATION OF HUH, KIM, AND PARK. This rejection is also not sustained. The Examiner has applied the Park reference to the combination of Huh and Kim to address the claimed feature of supplying direct current (DC) power to the reproduction apparatus from a DC power source provided by a vehicle. As with the previously discussed Sugiyama reference, however, we find nothing in the disclosure of Park which overcomes the deficiency of the Examiner’s proposed combination of the Huh and Kim references. We note that, while Park broadly suggests (Figs. 12-13; col. 5, l. 31-34) the viewing of recorded visual data through connection to a TV monitor, there is no disclosure of any details of the TV monitor controller that would correspond to those specifically set forth in the appealed claims. CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that Appellant has shown the Examiner erred in rejecting claims 1-38 for obviousness under 35 U.S.C. § 103(a). 10 Appeal 2009-1432 Application 09/793,717 DECISION The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-38, all of the appealed claims, is reversed. REVERSED ELD STAAS & HALSEY LLP SUITE 700 1201 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 11 Copy with citationCopy as parenthetical citation