Ex Parte Yang

Board of Patent Appeals and Interferences

Apr 4, 2012

10412591 (B.P.A.I. Apr. 4, 2012)

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.
10/412,591 04/14/2003 Tai-Her Yang GIAN 127 9410
7590 04/05/2012
RABIN & BERDO, P.C.
Suite 500
1101 14th Street, N.W.
Washington, DC 20005
EXAMINER
PRABHAKHER, PRITHAM DAVID
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
04/05/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________

Ex parte TAI-HER YANG
______________

Appeal 2010-002939
Application 10/412,591
Technology Center 2600
______________

Before DEBRA K. STEPHENS, ERIC S. FRAHM, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-15, 19, 23, and 24, all the claims pending in this application.
Claims 16-18 and 20-22 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

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Application 10/412,591

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Introduction
Appellant’s application is directed to a combined or standalone hand
held A/V camera system that allows combined or standalone operation. The
system is comprised of a main unit, an A/V output unit and a hand-held A/V
camera unit. Each unit is separately provided a portable battery source, and
a wired or wireless transmission device when each unit is in standalone
operation mode. (See Specification, Abstract.)

STATEMENT OF THE CASE
Claim 12 is exemplary, with disputed limitations in italics:
12. An A/V camera system with different operating
modes that can be selected, comprising:
first and second units that are movable with respect to
one another when a standalone operating mode is selected and
that are joined with one another when a combined operating
mode is selected, each of the units comprising a respective
transmission device means for communicating with the other
unit,
wherein the first unit further comprises a camera, first
battery means for supplying power to the first unit, and a first
case for holding the camera, the first battery means, and the
transmission device means of the first unit,
wherein the second unit further comprises another
component, second battery means for supplying power to the
second unit, and a second case for holding the another
component, the second battery means, and the transmission
device means of the second unit,
wherein the transmission device means communicate via
radio waves when the standalone operating mode is selected,
and by conductors that connect the units when the combined
operating mode is selected.

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The Examiner’s Rejections
The Examiner’s Answer cites the following references:
Jaggers US 7,076,270 July 11, 2006
Takahashi US 7,123,935 October 17, 2006
Kayanuma US 7,167,206 January 23, 2007

1. Claims 12-15, 19, 23, and 24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jaggers in view of Takahashi.
2. Claims 1-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jaggers in view of Takahashi and further in view of
Kayanuma.

Grouping of Claims
Based on Appellant’s arguments, we will decide the appeal on the
basis of claims 1, 12, and 19. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

Issue 1
35 U.S.C. § 103(a): Claims 12-15, 19, 23, and 24
Appellant asserts the invention is not obvious over Jaggers and
Takahashi. Specifically, Appellant argues that Jaggers teaches that I/O
devices (including the camera in Jaggers’ Figure 3) communicate with the
docking station 175, which in turn communicates with the WCD (wireless
communication device) 105 (App. Br. 9). Thus, Appellant asserts that if the
camera in Jaggers’ Figure 3 were equipped with a wireless transmission and
receiving device, it could communicate directly with Jaggers’ wireless
communication device 105 and the docking station 175 would become
unnecessary (Id.). Further, Appellant contends that Jaggers does not teach or
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specifically disclose the WCD 105 communicates with the camera when not
connected to the docking station. Instead, Appellant argues the docking
station of the Jaggers reference is the focal point of its invention (Id.).
Appellant further contends that an ordinarily skilled person would have no
incentive to modify what the reference discloses by permitting the camera to
communicate directly with Jaggers’ wireless communication device 105
(Id.).

35 U.S.C. § 103(a): Claims 1-11
Appellant asserts that claim 1 recites “‘a hand held AJV camera unit’
with a ‘further casing’ that contains ‘an A/V camera structural device ... and
mechanism,’ along with other elements.” (App. Br. 11). Appellant further
asserts that these other elements include a wireless transmission and
receiving device (Id.). Appellant also asserts that the camera shown in
Figure 3 of Jaggers is connected to the docking station by a cable, rather
than communicating by wireless transmission (Id.). Specifically, Appellant
asserts that even though Takahashi discloses a camera that communicates by
radio, one of ordinarily skilled person would not have had an incentive to
install a wireless transmission and receiving device in Jaggers’ camera. (Id.
at 12). Appellant further asserts that if Jaggers’ camera were equipped with
a wireless transmission and receiving device, it could communicate directly
with Jaggers’ wireless communication device 105 and the docking station
175 would be unnecessary (Id.). Appellant lastly asserts that an ordinarily
skilled person who wanted to improve Jaggers’ docking station arrangement
in some way would certainly want to retain the docking station itself, and the
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ordinarily skilled person would not have selected the Jaggers reference as
the starting point for seeking an improvement. (Id.).

Issue 1: Has the Examiner erred in finding
A. the combination of Jaggers and Takahashi would have taught or
suggested:
(i) “the transmission device means communicate via radio
waves” as recited in claim 12,
(ii) “the transmission device means comprises means for
communicating via radio waves” as recited in claim 19, or
(iii) “a transmission and receiving device by means of RF
electromagnetic wave or infrared is used to engage in wireless
transmission” as recited in claim 1; and
B. a skilled artisan would have been motivated to combine the
teachings and suggestions of Takahashi?

ANALYSIS
We agree with and adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellant’s Appeal Brief. We provide the following for additional support
and emphasis.
We agree with the Examiner (Answer, page 25, lines 4-10) that the
combination of Jaggers and Takahashi teaches or suggests communication
via radio waves. We find that Figures 1(b) and 3 of Jaggers disclose a
wireless communication device. (See also Ans. 3-4). We further agree that
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Takahashi discloses a camera that communicates with a communication
device via radio waves (Ans. 5; see also Figure 2 of Takahashi). Further, the
Examiner has concluded “[i]t would have been obvious to one of ordinary
skill in the art at the time of the invention to have [Jaggers’] WCD
communicate with [Takahashi’s] camera wirelessly via radio waves because
this increases the portability of the system in relation to sharing multimedia
images.” (Ans. 25 (underlining omitted)). We concur with this conclusion.
Thus, the Examiner has articulated a reason with some rational
underpinning to support the legal conclusion of obviousness. See KSR Int’l
v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citations omitted).
Appellant has not persuaded us of error in this reasoning. We further
find one of ordinary skill in the art would have been motivated to combine
the two references.
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more
efficient. . . . [T]he proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable
of combining the prior art references.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
The Examiner has set forth why an ordinary skilled artisan would
have been motivated to combine the teachings of Jaggers and Takahashi.
Appellant has not presented any persuasive evidence or argument that the
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ordinary artisan would not have possessed the knowledge and skills
rendering him capable of combining the prior art references.
Accordingly, we find
A. the combination of Jaggers and Takahashi would have taught or
suggested:
(i) “the transmission device means communicate via radio
waves” as recited in claim 12,
(ii) “the transmission device means comprises means for
communicating via radio waves” as recited in claim 19, or
(iii) “a transmission and receiving device by means of RF
electromagnetic wave or infrared is used to engage in wireless
transmission” as recited in claim 1; and
B. one of ordinary skill in the art would have been motivated to
combine the teachings of Jaggers and Takahashi.

Issue 2
Appellant also argues that Jaggers’ wireless communication device
105 and the I/O devices 195 are not “joined with one another” even though
they are both connected by USB cables to the docking station 175 (App. Br.
9-10). Specifically, Appellant argues that if Jaggers’ wireless
communication device 105 and the 110 devices 195 are both not connected
to docking station 175, they cannot communicate at all and thus would not
have a standalone “operating mode.” (Id. at 10). Appellant further argues
that Jaggers’ arrangement must be connected as shown in Figure 1(b) of the
reference in order to operate, and this cannot be characterized as both a
“standalone operating mode” and a “combined operating mode” (Id.).
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Issue 2: Has the Examiner erred in finding the combination of Jaggers
and Takahashi would have taught or suggested (i) “standalone mode” and
(ii) joined/combined as recited in:
(a) claim 1 (standalone operation mode, combined operating mode);
(b) claim 12 (“first and second units that are movable with respect to
one another when a standalone operating mode is selected and that are
joined with one another when a combined operating mode is selected”); and
(c) claim 19 (“first, second, and third units that are movable with
respect to one another when a standalone operating mode is selected and that
are joined with one another when a combined operating mode is selected”)?

ANALYSIS
We agree with and adopt the Examiner’s findings and conclusions
(Answer, page 23, line 10 to page 24, line 11) as our own. We provide the
following for additional support and emphasis.
The Examiner finds the terms “standalone operating mode” may be
interpreted as a mode in which the devices can function on their own before
being connected to the docking station. (Ans. 23). The Examiner then
concluded it would have been obvious to one of ordinary skill in the art to be
aware that a camera (I/O Device) and Wireless Communication Device
(WCD 105) could function on their own without being connected to the
docking station to allow independent functioning and increased portability
(Id.). Thus, the Examiner has articulated a reason with some rational
underpinning to support the legal conclusion of obviousness. See KSR, 550
U.S. at 418. Appellant has not persuaded us of error in this reasoning.
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Further, we are further not persuaded by Appellant’s argument that
Jaggers’ wireless communication device 105 and his I/O devices 195 are not
“joined with one another” (App. Br. 10). The Examiner finds that:
[I]n the combined[/joined] mode (mode in which the devices
are connected together via the docking station 195 and the USB
Hub 193 and USB Connector 197), each of the units comprise a
respective transmission device means (via the connection of the
USB Hub 193 and USB Connector 197) for communicating
with the other unit (Figure 1 B and Column 4, Line 10 Column
5, Line 62).

(Ans. 24). We agree with the Examiner. The Examiner also concluded that,
as is evidenced from Figure 1 B, the two devices are joined with one another
and communicate with one another (Id.). We agree with and adopt the
Examiner’s finding that the USB Hub 193 simply functions as the bridge or
a part that enables the joining together two devices (Id.).
Therefore, the Examiner did not err in finding the combination of
Jaggers and Takahashi would have taught or suggested (i) “standalone
mode” and (ii) joined/combined as recited in:
(a) claim 1 (standalone operation mode, combined operating mode);
(b) claim 12 (“first and second units that are movable with respect to
one another when a standalone operating mode is selected and that are
joined with one another when a combined operating mode is selected”); and
(c) claim 19 (“first, second, and third units that are movable with
respect to one another when a standalone operating mode is selected and that
are joined with one another when a combined operating mode is selected”).

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CONCLUSIONS OF LAW
Accordingly, the Examiner did not err in finding the combination of
Jaggers and Takahashi would have taught or suggested the invention as
recited in claims 12 and 19 or that the combination of Jaggers, Takahashi,
and Kayanuma would have taught or suggested the invention as recited in
claim 1. As to dependent claims 2-11, 13-15, 23, and 24, Appellant has not
presented any substantive arguments with respect to these claims and thus,
these claims fall with their respective independent claims.
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims12-15, 19, 23, and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Jaggers in view of Takahashi, and rejecting claims
1-11 under 35 U.S.C. § 103(a) as being unpatentable over Jaggers in view of
Takahashi and further in view of Kayanuma.

DECISION
We affirm the Examiner’s decision rejecting claims 1-15, 19, 23, and
24 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)(1)(iv) (2011).

AFFIRMED

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