Ex parte Shimizu et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08101673 (B.P.A.I. Jun. 29, 1998)

Application for patent filed August 4, 1993. 1
According to appellants, this application is a continuation of
Application 07/729,647, filed July 15, 1991, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 49
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YOSHIKAZU SHIMIZU and SATOMI NAKAGAWA
__________
Appeal No. 96-2547
Application 08/101,6731
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON, and JERRY SMITH, Administrative
Patent Judges.
THOMAS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appeal No. 96-2547
Application 08/101,673
2
Appellants request reconsideration under 37 CFR §
1.197(a) of our decision rendered on May 26, 1998, affirming
the rejection of claims 1 to 6 under 35 U.S.C. § 103. In the
light of the most recent amendments to this rule effective
December 1997, we treat this request for reconsideration as a
request for rehearing.
At the outset, we note appellants request only
reconsideration of our affirmance of the rejection of claims 4
and 5. Appellants do not request reconsideration of our
affirmance of the rejection of claims 1 to 3 and 6. As such,
the affirmance of these claims is not contested. Appellants
also state at page 1 of the request that no other
reconsideration is requested at the present time. The above
noted rule does not permit a reconsideration or rehearing to
be requested at any other time. Only one request is
permitted.
That portion of our original opinion relating to the
affirmance of claims 1 to 6 on appeal begins at page 6 through
the end of the earlier decision. More specifically, the
discussion of claims 4 and 5 begins at page 10 where we
Appeal No. 96-2547
Application 08/101,673
3
indicated that claims 4 and 5 have been treated together by us
since appellants have argued them together in the principal
Brief on appeal and two Reply Briefs "despite the grouping at
page 3 of the principal Brief on appeal that they are
separately grouped." Appellants’ separate urging at page 4 of
the request for rehearing implying that we consider the
patentability of claim 5 as distinguished from claim 4 is
presented in an untimely manner. Any arguments directed to
claim 5 should have been presented before the decision was
rendered on May 26, 1998.
In accordance with the discussion at pages 2 and 3 of
appellants' request, it appears that appellants and this panel
are in some agreement as to the normal operation at page 13 of
JVC for purposes of the actual storing operation of JVC's CSRP
preset system. As generally expressed in our original
opinion, it is our understanding that once the user firstly
presets the various sound output circuit states, and then
secondly presses the memory button when it is flashing, at
least some data is stored as to those states but the complete
CSRP preset storage function available to the user in JVC is
Appeal No. 96-2547
Application 08/101,673
4
not completed until the user then further thirdly associates
this prestored information of the particular chosen output
circuits desired with the particular source input device or
circuit within five seconds. The implication is clear to the
reader that the data already preset by the user and then
stored by the actuation of the memory key during its blinking
state would be erased if the source device was not then
selected within the five second interval.
Appellants have offered no evidence other than their own
attorney argument at page 3 of the request for rehearing that
the ordinary skilled designer would not have designed JVC in
the manner we understand it and inferred from the teachings
expressed at page 13 of JVC. Thus, we do not agree with
appellants' assertion that the artisan would only store data
in memory at the third stop, that is when and if the source
key were depressed. We simply do not agree with this view
because the memory key is expressly taught to be pressed after
the preset output signal circuits have been selected by the
user. Though not explicitly stated in JVC, but indicated in
our earlier opinion, it appears that two storing operations
Appeal No. 96-2547
Application 08/101,673
5
must occur in JVC, the second of which is the association of
the prestored preset data with a source device. This has been
expressed in different words in our discussion between pages
10 and 12 of our original opinion. Thus, we strongly disagree
with appellants' assertion at the bottom of page 3 of the
request for rehearing that appellants' interpretation of the
operation of JVC is the only "plausible" interpretation. Our
view is just as plausible.
Without losing sight of the forest for the trees, it must
be emphasized that we affirmed the examiner's rejection of
claims 1 to 6 in light of appellants' prior art Figure 4 and
its attendant discussion in the specification as filed in view
of JVC. We attempted to emphasize this in the paragraph
bridging pages 7 and 8 of our original opinion. At the top of
page 8 of our original opinion, we indicated that the
combinability of appellants' prior art Figure 4 with JVC
"obviously would have overcome the disadvantages of prior art
Figure 4's circuit noted at the bottom of page 3 of
appellants' specification." What is generally indicated there
is that prior art Figure 4 permitted the user’s selection of a
Appeal No. 96-2547
Application 08/101,673
6
sound source and the selection of a sound output circuit
"individually, without mutual relationship" as indicated at
lines 18 through 22. This appears to have been a known
disadvantage of the prior art in addition to the subsequent
statement that the user must make two selections when a source
is changed.
The order in which selection of appellants' prior art
Figure 4 was to have been undertaken by the user is not
specified. Apparently, it would have obviously occurred such
that the user could have selected the sound source first and
then selected the sound output circuit or the user could
simply have selected manually the sound output circuit and
then the particular sound source desired. In any event,
still, two individual selections would have had to have been
made.
JVC obviates this double selection as expressed by the
examiner's rejection by the use of CSRP preset capability
which links in its overall teaching sound outputs circuits
first and then a particular source device. Claim 1 on appeal
relates only to reading operations and claim 4 relates to
Appeal No. 96-2547
Application 08/101,673
7
storing operations. On the other hand, appellants' claimed
version of the order in which storing operations occur is
overall in a different order than that expressed by JVC alone.
Appellants' disclosed invention would first select the sound
signal source, store this identifying data in the memory and
then permit the user to select the sound output circuit, the
data selection of which is stored in memory and also enabling
the automatic selection of the particular sound output
circuits as well. We see no patentable distinction whether
the user starts from the source device to store data ending
with the selection of the sound output circuit or starting
with the selection of the particular sound output circuit
desired, storing it and then choosing a particular source
device as in JVC. In the context of the particulars of claim
4 on appeal, we see no patentable distinction within the
context of the collective teachings of appellants' prior art
Figure 4, its associated discussion in the specification in
view of JVC's teachings. The actuation of the memory key at
page 13 of JVC appears to us to enter data into the memory as
well as operate to "select" a particular sound output circuit
Appeal No. 96-2547
Application 08/101,673
8
within 35 U.S.C. § 103. We see no patentable distinction
between this operation of JVC and a contemporaneous storing
operation occurring when a particular sound output circuit is
selected, as claim 4 may be interpreted to state.
We have granted appellants' request to the extent that we
have reconsidered our decision of May 26, 1998, but we deny
the request with respect to making any changes therein.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 96-2547
Application 08/101,673
9
JERRY SMITH )
Administrative Patent Judge )
Appeal No. 96-2547
Application 08/101,673
10
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