Ex Parte YangDownload PDFBoard of Patent Appeals and InterferencesApr 4, 201210412591 (B.P.A.I. Apr. 4, 2012) 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. 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. Appeal 2010-002939 Application 10/412,591 2 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. Appeal 2010-002939 Application 10/412,591 3 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 Appeal 2010-002939 Application 10/412,591 4 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 Appeal 2010-002939 Application 10/412,591 5 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 Appeal 2010-002939 Application 10/412,591 6 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 Appeal 2010-002939 Application 10/412,591 7 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.). Appeal 2010-002939 Application 10/412,591 8 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. Appeal 2010-002939 Application 10/412,591 9 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”). Appeal 2010-002939 Application 10/412,591 10 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 msc Copy with citationCopy as parenthetical citation