Ex Parte Reilly

Board of Patent Appeals and Interferences

Jul 29, 2002

08430943 (B.P.A.I. Jul. 29, 2002)

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written for publication and is not binding precedent of the Board.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. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN R. REILLY
_____________
Appeal No. 2000-0187
Application 08/430,943
______________
ON BRIEF
_______________
Before HAIRSTON, RUGGIERO and LEVY, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-21, which are all of the claims pending in the present
application.
The claimed invention relates to a remote computer display
for a portable computing device (PCD) in which a wireless
transmitter built into the PCD sends graphic commands to the
remote display. In order to reduce the data link bandwidth
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Application No. 08/430,943
2
required to transfer images from the PCD to the remote display,
graphic primitives are sent over the data link. The graphic
primitives are generated by a video driver in the PCD which
converts video display requests issued by a software program
executing on the PCD. A wireless receiver connected to the
remote display converts the received signals into digital data
representing the graphic primitives which produces a graphic
image on the remote display.
Claim 1 is illustrative of the invention and reads as
follows:
1. A remote computer display system comprising:
a portable computing device (PCD) having a
wireless transmitter;
a remote video display electrically connected to a
wireless receiver;
the PCD also having a video driver operative to
receive video requests issued by a software program
executing on the PCD and converting the video requests
into graphics primitives which are sent as signals by
the wireless transmitter to the wireless receiver;
the wireless receiver being operative to receive
the signals sent by the wireless transmitter and to
convert the received signals into digital data
representing the graphics primitives and also operative
to send the digital data to a remote display driver;
and
Appeal No. 2000-0187
Application No. 08/430,943
1 In addition, the Examiner relies on Appellant’s admissions as to the
prior art appearing in the “Background of the Invention” beginning at page 1,
line 7 of the specification.
2 The Appeal Brief was filed August 25, 1997 (Paper No. 11). In
response to the Examiner’s Answer dated November 25, 1997, (Paper No. 12), a
Reply Brief was filed December 15, 1997 (Paper No. 13), which was acknowledged
and entered by the Examiner in the communication dated December 13, 2001
(Paper No. 15).
3
the remote display driver is operative to cause
the remote video display to display a video image in
response to the digital data sent by the wireless
receiver.
The Examiner relies on the following prior art references:1
Folger et al. (Folger) 5,337,044 Aug. 09, 1994
Gaskill et al. (Gaskill) 5,440,559 Aug. 08, 1995
(filed Nov. 10, 1993)
Carleton et al. (Carleton) EP 0616448 Sep. 21, 1994
(Published European Patent Application)
Claims 1-21 stand finally rejected under 35 U.S.C. § 103.
As evidence of obviousness, the Examiner offers Appellant’s
admitted prior art in view of Carleton with respect to claims
1-4, 9-12, 17, 20, and 21, adds Folger to the basic combination
with respect to claims 5, 6, 13, 14, 18, and 19, and adds Gaskill
to the basic combination with respect to claims 7, 8, 15, and 16.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs2 and Answer for the
respective details.
Appeal No. 2000-0187
Application No. 08/430,943
4
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection and the evidence of obviousness relied upon by
the Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appellant’s arguments set forth in the Brief along with the
Examiner’s rationale in support of the rejection and arguments in
rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-21. Accordingly, we reverse.
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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
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Application No. 08/430,943
5
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert. denied, 488
U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &Refractories,
Inc.,776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1, 9, 17, and 20, the
Examiner, as the basis for the obviousness rejection, proposes to
modify the disclosure appearing in the “Background of the
Invention” section of the instant application, which the Examiner
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has interpreted as being admitted prior art. According to the
Examiner (Answer, pages 5-7), this “Background” section, which
describes techniques for connecting video displays with larger
dimensions to a portable computing device (PCD), discloses the
claimed invention except that graphic information in the form of
a bitmap is transmitted to a video display, rather than the
transmission of graphic primitives as claimed. To address this
deficiency, the Examiner turns to the Carleton reference which,
in the Examiner’s view, describes the transfer of graphic data in
the form of high level instructions which treat image information
as objects such as rectangles, which the Examiner has likened to
the claimed “graphic primitives.” In the Examiner’s line of
reasoning (id. at 15), the skilled artisan would have been
motivated and found it obvious “... to transfer graphic
primitives instead of bitmaps from the PCD to the remote display
in order to reduce the bandwidth required to transfer display
[sic] the information to a remote computer display by a wireless
link.”
In response, Appellant contends that the Examiner has failed
to set forth a prima facie case of obviousness since proper
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Application No. 08/430,943
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motivation for the proposed combination of the admitted prior art
and Carleton has not been established. In support of this
position, Appellant asserts (Brief, pages 21-23) that the
Examiner has erred in interpreting the extent of what is admitted
prior art appearing in the “Background” section at pages 1-3 of
the specification.
In Appellant’s view, the admitted prior art is limited to
the known cabling and docking techniques for connecting a
portable computing device (PCD) with a remote video display
discussed at page 1, line 17 through page 2, line 5 of the
specification. Appellant further contends that the suggestion of
a wireless link, the recognition of graphical data transmission
problems associated with a wireless connection, and a solution to
overcome such problems (specification, page 2, line 6 through
page 3, line 3) is a result of Appellant’s own work, not any
admission of existence in the prior art.
After careful review of the statements in Appellant’s
specification and the Carleton reference, in light of the
arguments of record, we are in agreement with Appellant’s
position as stated in the Briefs. We find no basis for the
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Application No. 08/430,943
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Examiner’s conclusion that Appellant’s discussion of wireless
links and the recognition of problems with increased bandwidth in
transmitting graphical information over a wireless link is part
of the admitted prior art. To the contrary, we find that the
statements in the specification alleged to be admissions of prior
art by the Examiner, are in fact Appellant’s own analysis of
problems existing in the prior art and a solution to such
problems. These statements, as alluded to by Appellant (Brief,
page 22, are in compliance with suggestions for inclusion in the
“Background of the Invention” portion of a patent application
appearing at section 608.01(c)(2) of the Manual of Patent
Examining Procedure (MPEP).
In view of the above discussion, we find that the Examiner
has provided no prior art disclosure of connecting a portable
computing device (PCD) with a remote video display over a
wireless link, nor any recognition of a need for reduced
bandwidth transmission of graphical information over such
wireless link. In our opinion, any attempt to combine the
teaching of Carleton, which is directed to the connection of
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Application No. 08/430,943
3 Since we find that the Examiner has failed to establish a prima facie
case of obviousness based on the proposed combination of the admitted prior
art and Carleton, the issue of whether Carleton does in fact disclose the
generation of graphic primitives using a video driver is moot.
9
separate computer systems over a wired telephone line, could not
come from any suggestion in the prior art but, rather, only from
Appellant’s own disclosure.3
We have also reviewed the disclosures of the Folger and
Gaskill references applied by the Examiner to address the
recitations of the housing structure of the wireless transmitters
and receivers, respectively, of several dependent claims. We
find nothing, however, in either of these references that would
overcome the innate deficiencies of the teachings of the admitted
prior art and Carleton discussed supra. Accordingly, since the
Examiner has not established a prima facie case of obviousness,
the rejection of independent claims 1, 9, 17, and 20, as well as
claims 2-8, 10-16, 18, 19, and 21 dependent thereon, is not
sustained.
Appeal No. 2000-0187
Application No. 08/430,943
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In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 103 of any of the claims on appeal. Therefore, the decision of
the Examiner rejecting claims 1-21 is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
jfr/vsh
Appeal No. 2000-0187
Application No. 08/430,943
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HEWLETT PACKARD COMPANY
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