Ex Parte Shintani et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201713073222 (P.T.A.B. Feb. 6, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/073,222 03/28/2011 Peter Shintani 201003716.01 7568 36738 7590 02/08/2017 ROrTTT7 fr ASSOPTATRS EXAMINER 750 B STREET CROSS, MICHAEL J SUITE 3120 SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 02/08/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Noelle@rogitz.com eofficeaction @ appcoll.com John@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER SHINTANI, STEPHANE LEJEUNE, ROBERT BLANCHARD, and GRAHAM CLIFT Appeal 2015-0054761 Application 13/073,2222 Technology Center 3600 Before NINA L. MEDLOCK, BRUCE T. WIEDER, and MATTHEW S. METERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 13, 15, 16, and 18—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed September 17, 2014) and Reply Brief (“Reply Br.,” filed April 13, 2015), the Examiner’s Answer (“Ans.,” mailed April 13, 2015), and Final Office Action (“Final Act.,” mailed July 2, 2014). 2 Appellants identify Sony Corp. as the real party in interest (Appeal Br. 2). Appeal 2015-005476 Application 13/073,222 CLAIMED INVENTION Appellants’ claimed invention “relates generally to audio video (AV) devices that are sold with TV tuners and, e.g., demodulators external to the devices but bundled therewith.” (Spec. 1). Claim 13 is the only independent claim on appeal. Claim 13 reproduced below, with minor formatting changes and added bracketed notations, is illustrative of the subject matter on appeal:3 13. Assembly, comprising: [a] shipping container; [b] consumer electronics (CE) device in the shipping container; [c] TV tuner module in the shipping container; and [d] wherein the TV tuner module is not installed in the CE device in the shipping container, the module being disposed in a sealed envelope in the shipping container along with the instructions, the envelop [sic] being pre-addressed with a return address such that a user not wanting the tuner module can simply leave the module in the sealed envelope and return it to the return address without having to address the envelope. REJECTIONS Claims 13, 15, 16, and 18—20 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite. 3 We note that independent claim 13 reproduced above differs from independent claim 13 presented in Appellants’ Claims Appendix (see Appeal Br. 7; Claim App.). The Appendix contains proposed amendments filed at the same time as Appellants’ Appeal Brief but there is no indication in the record that Appellants’ proposed amendments were entered by the Examiner. Thus, the claims reproduced above, and of record, are those filed March 17, 2014. 2 Appeal 2015-005476 Application 13/073,222 Claims 13, 15, 16, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kee (US 7,222,206 B2, iss. May 22, 2007), Sawaki (US 2009/0106038 Al, pub. Apr. 23, 2009), and Sundel (US 2003/0105704 Al, pub. June 5, 2003), and Official Notice. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kee, Sawaki, Sundel, Official Notice, and Doll-Steinberg (US 7,487,129 B2, iss. Feb. 3, 2009). Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kee, Sawaki, Sundel, Official Notice, and Yun (US 2006/0190052 Al, pub. Aug. 24, 2006) ANALYSIS Indefiniteness Independent claim 13 and dependent claims 15, 16, and 18—20 Appellants argue the Examiner’s rejection of independent claim 13 is improper because “[a]n amendment filed September 17, 2014 cured the basis of the lack of antecedence rejection” (Reply Br. 1). However, there is no indication that the claims amendment submitted along with Appellants’ Appeal Brief, filed September 17, 2014, was entered.4 Given that the version of independent claim 13 containing the amended language is not before us on appeal, we sustain the Examiner’s 4 We note the propriety of the Examiner’s refusal to enter the amendment at issue is a petitionable matter under 37 C.F.R. § 1.181 and not within the jurisdiction of the Board. See 37 C.F .R. § 1.127; In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)). 3 Appeal 2015-005476 Application 13/073,222 rejection of independent claim 13 and claims 15, 16, and 18—20 which depend therein. Obviousness Independent claim 13 and dependent claims 15, 16, and 18—20 We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 13 under 35 U.S.C. § 103(a) because the combination of Kee, Sawaki, Sundel, and Official Notice fails to disclose or suggest “providing a TV tuner card in the shipping container with the PC but not installed in the PC,” as required by independent claim 13 (see Appeal Br. 4; see also Reply Br. 1—3). In rejecting claim 13, the Examiner relies on Kee as disclosing a “consumer electronics (CE) device,” “TV tuner module,” and “the TV tuner module is not installed in the CE device” (Ans. 4 (citing Kee, col. 3, 11. 21-23, col. 3,11. 25-32, col. 7,11. 11-12, col. 9,11. 8-10)). In doing so, the Examiner takes the position “that it is obvious that a removable TV tuner module may not be installed in the consumer electronic device” (Ans. 4). The Examiner acknowledges that Kee does not explicitly disclose a “shipping container,” “consumer electronics (CE) device in the shipping container,” and “TV tuner module in the shipping container” (Ans. 5). The Examiner cites Sundel and Sawaki to address these missing elements (id. (citing Sundel 5, 8, 17, 26; Sawaki || 61, 87, Fig. 8). The Examiner takes Official Notice that shipping merchandise with instructions how to use or assemble components as shipped along with return instructions with pre-printed return address label is old and well known, for example external TV tuners (not installed in the electronic 4 Appeal 2015-005476 Application 13/073,222 device) have been readily available for use with electronic devices and if ordered with an electronic device, such as a personal computer or a monitor, are shipped as two items in one package with instructions and return labels for each (see: http://www.tomshardware.com/forum/227296-33-extemal- tuner and http://www.technostarrv.com/hardware/Dl-tuner-card- buying-guide/). (Ans. 5). Subsequently, the Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of invention to combine the teachings of Key and Sundel to explicitly provide for an electronic device and a TV tuner module, not installed in the electronic device, in a shipping container, the module being disposed in a sealed envelope in the shipping container along with the instmctions, the envelop[e] being pre-addressed with a return address such that a user not wanting the tuner module can simply leave the module in the sealed envelope and return it to the return address without having to address the envelope, motivation being to let the consumer return the TV tuner module without cost, should the consumer decide not to use the TV tuner module. (Id. at 5—6). Kee is directed “to an electronic device having a removable module that can be used either as a part of the electronic device or by itself in a stand-alone manner” (Kee, col. 1,11. 18—20). More particularly, Kee discloses “an electronic processor-based device, such as a portable personal computer, that is adapted to physically and electrically receive a module that provides the device with additional functionality” such as a “TV tuner” (id. at col. 3,11. 21—33; see also id. at col. 9,11. 8—10). Kee further discloses that “the module is also functional apart from the electronic device and thus usable in a stand-alone manner” (id. at col. 3,11. 33—36). 5 Appeal 2015-005476 Application 13/073,222 Sawaki is directed “to an information system for providing a support service to a customer” regarding “a BTO (Build To Order) product” (Sawaki 1, 7). More particularly, Sawaki discloses [a] support server [that] facilitates specifying the components building up the product and one or more individually sale- enabled components from the identifying information unique to the product with respect to the product owned by the customer when the customer makes a request for the support by use of a user terminal. {Id. 121; see also id. 1 87). In this regard, Sawaki discloses 1C tag 51 is stored with the PC unique identifying information as the unique-to-the-product identifying information stored when manufacturing the personal computer and with the model name of the personal computer. Further, the 1C tag 51 is stored, when manufacturing the personal computer, with the component identifying information such as the product name, the model name and the serial number in order to manage the composition when selling one or more individually sale-enabled components (the components for fabricating the BTO-based personal computer such as the parts of the CPU etc and the option parts of the TV tuner card etc) of the personal computer 5 (see FIG. 2). {Id. 1 61). Sundel is directed to a system “for facilitating a shipment of a package of items from a Sender to a Recipient through one of a multitude of shipping mechanisms” (Sundel 12; see also id. 1 8). Sundel discloses that “[t]he term ‘package’ as used herein refers to a shipped container and its contents. The term ‘item’ as used herein refers to individual products in a package. A package can be a box, crate, carton or a plurality of the same banded together as a single entity” {id. 1 5). Sundel also discloses “a shipment data tracking system and method in which each item in an order can be tracked 6 Appeal 2015-005476 Application 13/073,222 individually, regardless of the physical package in which it is shipped” {id. 117). We have reviewed the cited portions of Kee, Sawaki, and Sundel in light of the Examiner’s Official Notice. We fail to see, and the Examiner does not adequately explain, how it would have been “obvious that a removable TV tuner module may not be installed in the consumer electronic device” (Ans. 4) based on Kee’s disclosure of “a portable personal computer, that is adapted to physically and electrically receive a module that provides the device with additional functionality” such as a “TV tuner” (Kee, col. 3,11. 21—33; see also id. at col. 9,11. 8—10) alone, or in combination with Sawaki, Sundel, and Official Notice. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”). We also note that Sawaki is directed to “Build To Order” products, i.e., “unique personal computer 5 including the options and the parts selected by the user” Sawaki 11,7, 65) which would, as Appellants point out, “lead[] one away from including the TV tuner card separately in the container with the PC” because the tuner card would either “be installed in the PC or not at manufacture” (Appeal Br. 4). Thus, we agree with Appellants that “modifying Kee to include all of the subject matter admittedly missing from Kee is a classic example of hindsight” (Appeal Br. 3). And the Examiner provides no adequate articulated reasoning with rational underpinning to modify the cited references to meet this claim limitation without the use of 7 Appeal 2015-005476 Application 13/073,222 impermissible hindsight. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections 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.”). In view of the foregoing, we do not sustain the Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner’s rejections of claims 15, 16, and 18—20, which depend therefrom. DECISION The Examiner’s rejection of claims 13, 15, 16, and 18—20 under 35 U.S.C. § 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite is affirmed. The Examiner’s rejections of claims 13, 15, 16, and 18—20 under 35 U.S.C. § 103(a) are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation