Ex Parte Park

Board of Patent Appeals and Interferences

Apr 27, 2009

09793717 (B.P.A.I. Apr. 27, 2009)

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
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Decided:1 April 28, 2009
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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
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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
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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.
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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
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(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.

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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
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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
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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.

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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).

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DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-38, all of the
appealed claims, is reversed.

REVERSED

ELD

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