Ex Parte Weber

Patent Trial and Appeal Board

Mar 7, 2013

10519587 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL WEBER
____________

Appeal 2010-011243
Application 10/519,587
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 17-30. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to “a home network and the
establishment of connections between devices in this network. More
particularly the invention concerns a network of multiple electronic devices,
such as consumer electronic video source and video display devices,
interconnected using for example digital data buses.” (Spec. 1).
Independent claim 17, reproduced below, is representative of the
subject matter on appeal:
17. Sink device for connection to a digital network comprising

means for displaying a user interface for controlling a data
source device connected to the network;

means for controlling network resource allocation and for
automatically establishing, upon selection of a function of the source
by the user through the user interface, a connection between the data
source device and the data sink device, said data sink device
becoming the default destination device for communication with the
data source device; and

said sink device including means for performing playback of
data received from the source device.

REJECTION
The Examiner rejected claims 17-30 under 35 U.S.C. § 103(a) based
upon the combined teachings and suggestions of Lea, et al., "Networking
Home Entertainment Devices with HAVi," Computer, IEEE Computer
Society, Long Beach, CA, vol. 33, no. 9, September 2000, pages 35-43, and
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Gibbs (U.S. Patent No. 6,169,725 B1).

GROUPING OF CLAIMS
Based on Appellant’s arguments, we will decide the appeal on the
basis of representative claim 17. See 37 C.F.R. § 41.37(c)(1)(iv).

PRINCIPLES OF LAW
A claimed invention is unpatentable “if the differences between the
subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” 35 U.S.C. § 103(a).

Contentions
Appellant contends:
Gibbs et al disclose, in column 5, lines 38-40, that an appliance
automatically configures itself and integrates into the network
without user intervention. However, Gibbs et al does not
automatically select a data sink device from which a data
source has been selected. The user must perform such selection.
In Gibbs et al., the appliance automatically configures itself.
Nowhere does Gibbs et al. describe or suggest that the data sink
device becomes the default destination device for
communication with the data source device. It is therefore clear
that even if the structure of Lea et al were to be combined with
the structure of Gibbs et al, the patentability of the invention as
defined by Claim 1 would not be affected.
(App. Br. 10-11, emphasis added).

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The Examiner disagrees:
With regard to Applicant's argument that Lea and Gibbs do not
teach the data sink device becoming the default destination
device for communication with the data source device,
Examiner notes that in the scenario where a only source device
and a sink device are connected together using IEEE 1394
(taught by Lea), they will necessarily be the default source and
sink devices. Examiner further notes that the technique of
automatically setting a default device is well known in the art,
and it would have been obvious to one of ordinary skill to use
the technique in a networking environment to facilitate the
establishment of future connections between devices.
(Ans. 8).

Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
“automatically establishing, upon selection of a function of the source by the
user through the user interface, a connection between the data source device
and the data sink device” and “said data sink device becoming the default
destination device for communication with the data source device,” within
the meaning of claim 17, and the commensurate language of independent
claim 25?
ANALYSIS
Independent Claim 17
Regarding the disputed limitation of “automatically establishing, upon
selection of a function of the source by the user through the user interface, a
connection between the data source device and the data sink device,” we
note that a claimed invention is not patentable if it merely automates a prior
art process. Broadly providing an automatic way to replace a manual
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activity accomplishing the same result is not sufficient to distinguish an
automated process over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA
1958). An improved product in the art is obvious if that “product [is] not
[one] of innovation but of ordinary skill and common sense.” KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Regarding the disputed limitation of “said data sink device becoming
the default destination device for communication with the data source
device” (claim 17), we agree with the Examiner’s legal conclusion of
obviousness. In support, the Examiner finds “in the scenario where a[sic]
only [a] source device and a sink device are connected together using IEEE
1394 (taught by Lea), they will necessarily be the default source and sink
devices.” (Ans. 8). We agree with the Examiner.
Our reviewing court guides that the question of obviousness is "based
on underlying factual determinations including . . . what th[e] prior art
teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383
(Fed. Cir. 2001) (citations omitted, emphasis added). Appellant, who did
not file a Reply Brief, has not addressed this specific reasoning of the
Examiner, let alone demonstrated error by the Examiner, as required to
satisfy their burden on appeal with respect to this ground of rejection.
Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential):
The Examiner has the initial burden to set forth the basis for
any rejection so as to put the patent applicant on notice of the
reasons why the applicant is not entitled to a patent on the claim
scope that he seeks — the so-called “prima facie case.”
. . . An appellant may attempt to overcome an
examiner’s obviousness rejection on appeal to the Board by
submitting arguments and/or evidence to show that the
examiner made an error in either (1) an underlying finding of
fact upon which the final conclusion of obviousness was based,
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or (2) the reasoning used to reach the legal conclusion of
obviousness. Similarly, the applicant may submit evidence of
secondary considerations of non-obviousness. . . .
The panel then reviews the obviousness rejection for
error based upon the issues identified by appellant, and in light
of the arguments and evidence produced thereon.
(Citations omitted.)
Because Appellant has not further rebutted the Examiner’s responsive
arguments by filing a Reply Brief, on this record, we are not persuaded of
error regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness. Therefore, we sustain the rejection of
representative claim 17, and of independent 25, which recites the
aforementioned disputed limitations in commensurate form. The associated
dependent claims (not argued separately) fall with the representative
independent claim (17 or 25) from which they depend. See 37 C.F.R.
§ 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s decision rejecting claims 17-30 under §103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh