Ex Parte Vitito

Patent Trial and Appeal Board

Feb 3, 2016

11153364 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111153,364 06/16/2005
22150 7590 02/05/2016
F. CHAU & ASSOCIATES, LLC
130 WOODBURY ROAD
WOODBURY, NY 11797
FIRST NAMED INVENTOR
Christopher J. Vitito
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8002A-270T (VIT) 8857
EXAMINER
YENKE, BRIAN P
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
02/05/2016 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):
mail@chauiplaw.com
garramone@chauiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. VITITO
Appeal2014-003167
Application 11/153,364
Technology Center 2400
Before ERIC S. FRAHM, JOHN P. PINKERTON, and
CARLL. SILVERMAN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 files this appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 40, 42--48, 50-52, 60, and 65-72, which
constitute all of the claims pending in this application. Claims 41, 49, 53-
59, and 61-64 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Audiovox Corporation as the real party in interest.
App. Br. 1.
Appeal2014-003167
Application 11/153,364
STATEMENT OF THE CASE
Introduction
Appellant's disclosed invention generally relates to an automobile
entertainment system that includes a video system having a video monitor, a
video source, and an expansion slot, as well as a cradle secured within an
automobile. Abstract. 2
Claim 40 is representative and reads as follows:
40. A vehicle entertainment system, comprising:
a video system having a housing including a video
monitor, a DVD player, and an expansion slot shaped and
dimensioned for receiving functional modules, wherein
the video monitor is pivotally mounted within a recess in
a front portion of the housing, the video monitor is configured
to pivot away from the recess in an upward direction to expose
the DVD player, and the DVD player is disposed on a rear
surface of the recess,
the DVD player is accessible while the video monitor is
pivoted away from the recess and concealed while the video
monitor is pivoted into the recess, and
the DVD player comprises a DVD tray pivotally
connected to the rear surface of the recess, the DVD tray is
configured to pivot away from the recess in a downward
direction to expose a DVD receiving portion of the DVD tray,
the DVD tray is configured to have a DVD snapped into and
retained in the DVD receiving portion of the DVD tray while
2 Our Decision refers to the Final Office Action mailed May 30, 2012
("Final Act."), Appellant's Appeal Brief filed Oct. 9, 2013 ("App. Br."), the
Examiner's Answer mailed Oct. 23, 2013 ("Ans."), Appellant's Reply Brief
filed Dec. 19, 2013 ("Reply. Br."), and the original Specification filed June
16, 2005 ("Spec.").
2
Appeal2014-003167
Application 11/153,364
the video monitor is pivoted away from the recess in the
upward direction and while the DVD tray is pivoted away
from the recess in the downward direction, and the DVD player
is configured to play the DVD while the DVD tray is pivoted
into the recess; and
a cradle secured within an automobile,
wherein the cradle is shaped and dimensioned for
selectively receiving and securely holding the video system.
References
Ishii us 5,396,340 Mar. 7, 1995
Iino US D438,853 S Mar. 13, 2001
Tong US 2002/0186329 Al Dec. 12, 2002
Schedivy '695 US 2004/0227695 Al Nov. 18, 2004
Oakley US 6,865,075 B2 Mar. 8, 2005
Sanders US 2006/0109388 Al May 25, 2006
Nagata US 7,280,166 B2 Oct. 9, 2007
Schedivy '275 US 7,440,275 B2 Oct. 21, 2008
Rejections on Appeal
Claims 40-48, 52, 60, and 65-72 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sanders, Nagata, Schedivy '695, Iino,
Ishii, Schedivy '275, and Oakley.
Claims 50 and 51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sanders, Nagata, Schedivy '695, Iino, Ishii, Schedivy
'275, Oakley, and Tong.
3
Appeal2014-003167
Application 11/153,364
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments in the Appeal Brief (App. Br. 8-22) and Reply Brief (Reply Br.
3-5) that the Examiner has erred. We disagree with Appellant's arguments.
Unless otherwise noted, we adopt as our own the findings and reasons set
forth by the Examiner in the Office Action from which this appeal is taken
(Final Act. 12-19) and in the Examiner's Answer in response to Appellant's
Appeal Brief (Ans. 30-40), and we concur with the conclusions reached by
the Examiner. For emphasis, we consider and highlight specific arguments
as presented in the Briefs.
Appellant contends none of the seven cited references, either alone or
in combination, teaches or suggests "the DVD player is disposed on a rear
surface of the video monitor ... the DVD player comprises a DVD tray
pivotally connected to the rear surface of the video monitor, the tray is
configured to pivot away from the rear surface of the video monitor in a
downward direction while the video monitor is pivoted away from the
recess," as recited in claim 60. App. Br. 8-10; Reply Br. 3. Appellant also
contends none of the seven cited references, either alone or in combination,
teach or suggest "the DVD player is disposed on a rear surface of the
recess ... the DVD tray is configured to pivot away from the recess in a
downward direction to expose a DVD receiving portion of the DVD tray," as
recited in claims 40 and 67. App. Br. 10-17. Appellant further argues the
Examiner has not provided any articulated reasoning with rational
underpinning as to why a person of ordinary skill in the art would modify
the cited references to arrive at the specifically claimed configuration of
claims 40, 60, and 67. App. Br. 18-19; Reply Br. 4. Thus, according to
4
Appeal2014-003167
Application 11/153,364
Appellant, the Examiner's rejection under§ 103(a) amounts to an
impermissible hindsight analysis. App. Br. 18-20; Reply Br. 4. Appellant
further argues the extensive combination of Sanders, Nagata, Schedivy '695,
Iino, Ishii, Schedivy '275, and Oakley is improper because it would require a
substantial reconstruction and redesign of the elements in Sanders. App. Br.
21; Reply Br. 4--5.
We are not persuaded by Appellant's arguments that the Examiner has
erred. The Examiner finds, and we agree, the combination of references
teaches or suggests the limitations at issue of the embodiment of claim 60
and the embodiment of claims 40 and 67. Ans. 30-39 (See, e.g., Ans. 32:
"The [E]xaminer notes the combination of references read on both
claims/embodiments as claimed.") Contrary to Appellant's argument, the
Examiner has considered all the limitations of claim 60 and has expressly
noted the differences in claim 60 and claim 40 in finding the disputed
limitations are taught by the cited references. See Ans. 30-32.
The Examiner finds Schedivy '695 teaches a base unit coupled to a
headrest support structure 102, wherein the base unit comprises a media
player and a display 306 mounted in a door pivotally connected to the base
by a hinge 304 using a slot-type 302 DVD implementation. See Ans. 32
(Schedivy '695, Figs. 3A, 3B, Abstract). The Examiner also finds there are
known displays with a clam-shell type loading DVD device, as shown in
Schedivy '275 (Fig. IA), Iino (Fig. 2), and Ishii (Fig. IB). Ans. 33-37.
Although, the Examiner finds these clam-shell DVD references "do not
contemplate the mounting of such on a vehicle headrest," the Examiner finds
"given the art of record the features of mounting the clamshell type DVD
with display as claimed would have been obvious to one of ordinary skill in
5
Appeal2014-003167
Application 11/153,364
the art at the time of the invention, mainly to provide access to the user to
load/remove a DVD." Ans. 38-39. We agree with the Examiner's findings.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417. Moreover, the Supreme Court has made clear
that, when considering obviousness, "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." See KSR, 550 U.S. at 418. Here,
we agree with the Examiner, "[a]s clear from the prior art of record, there
are a multitude of ways to include a DVD slot or tray with a display whether
on the same plane, different planes, behind the display, in front of the display
etc ... all these techniques/measures provide expected results." Ans. 39.
We further agree with the Examiner "the features of being pivotally
connected to the recess [as in claims 40 and 67] or housing [as in claim 60]
both provide expected results ... thus being obvious modifications." Id.
Appellant has not provided persuasive evidence or argument to support a
conclusion that the combination of a video monitor pivotally mounted to a
headrest with a clam-shell type DVD device mounted in the recess of the
headrest, as recited in claims 40 and 67, or on the rear surface of the
monitor, as recited in claim 60, is not simply "the predictable use of prior art
elements according to their established functions." See KSR, 550 U.S. at
417.
6
Appeal2014-003167
Application 11/153,364
Regarding the Examiner's rationale for combining the references, we
agree with the Examiner that, "given the art of record the feature of
mounting the clamshell type DVD with display as claimed would have been
obvious ... mainly to provide access to the user to load/remove a DVD"
(see Ans. 39) and that this constitutes articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness. See
KSR, 550 U.S. at 418. Furthermore, we disagree with Appellant's argument
the Examiner based his conclusion of obviousness on impermissible
hindsight. As explained in In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971 ):
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
Here, we find that the Examiner's conclusion of obviousness is only
based on the cited references and the knowledge within the level of ordinary
skill in the art at the time of Appellant's invention and does not include
knowledge gleaned only from Appellant's disclosure. See Ans. 39, para. c.
Moreover, Appellant has not demonstrated that the Examiner's proffered
combination of references would have been "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
7
Appeal2014-003167
Application 11/153,364
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
We also are not persuaded by Appellant's argument that the
combination of six references with Sanders would require substantial
reconstruction and redesign of the elements of Sanders. App. Br. 21; Reply
Br. 4--5. First, this argument is overstated and does not accurately
characterize the Examiner's rejection. As the Examiner explains, once the
"'expansion slot (slot loading DVD)" of the original claims was removed,
and Appellant pursued claims directed to the '"clamshell' type"
embodiments, the rejection focused on Schedivy '695, which is concerned
with "mounting of such DVD/display on the headrest," and the obviousness
of modifying Schedivy '695 with a clam-shell type DVD device, as taught in
any of Schedivy '275, Iino, and Ishii. See Ans. 39--40. Second, Appellant's
argument is speculative and not supported by persuasive evidence or
argument. Furthermore, it is premised on the bodily incorporation of
multiple references into Sanders, which is not the test for obviousness. See
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review."); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The "test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference ... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.").
Moreover, "[a] reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
8
Appeal2014-003167
Application 11/153,364
describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted).
Based upon the Examiner's findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art to teach or suggest the disputed limitations
of claims 40, 60, and 67, nor do we find error in the Examiner's resulting
legal conclusion of obviousness. Accordingly, we sustain the Examiner's
rejection of claims 44, 60, and 67. We also sustain the Examiner's rejection
of dependent claims 9-23, which are not separately argued. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 40, 42--48, 50-52,
60, and 65-72 under 35 U.S.C. § 103(a).
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
9