May Patents Ltd.

Patent Trials and Appeals Board

Aug 11, 2020

2019002199 (P.T.A.B. Aug. 11, 2020)

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.
15/253,915 09/01/2016 Yehuda BINDER BINDER-004-US24 7902
131926 7590 08/11/2020
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
WOO, STELLA L
ART UNIT PAPER NUMBER
2652
MAIL DATE DELIVERY MODE
08/11/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YEHUDA BINDER

Appeal 2019-002199
Application 15/253,915
Technology Center 2600
____________

Before ADAM J. PYONIN, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–45. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as May Patents
Ltd. Appeal Br. 2.
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STATEMENT OF THE CASE

Appellant’s invention generally relates to “a method, device and
system for obtaining information from a remote location to an information
device.” Spec. 1. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A device for obtaining, storing and displaying digital video data
from a first remote information server via the Internet over a Local
Area Network (LAN), said device comprising:

a LAN connector for connecting to the LAN;

a LAN transceiver coupled to said LAN connector for
bidirectional packet-based digital data communication with another
LAN transceiver of the same type over the LAN;

a first memory coupled to said LAN transceiver for storing
digital video data received by said LAN transceiver;

a video display for visually presenting information, said display
being coupled to said first memory for displaying the digital video
data stored in the first memory; and

a single enclosure housing said LAN connector, said LAN
transceiver, said first memory and said display, said single enclosure
having dimensions and an appearance of a conventional flat, wall-
mountable framed picture,

wherein said device is addressable in the LAN, and said device
is operative for communicating via the LAN with the first remote
information server via the Internet for receiving digital video data
from the first remote information server, and for storing and
displaying digital video data obtained from the first remote
information server.

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REJECTIONS
Claims 1–45 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 1–4, 10, 13, and 15–37 stand rejected under pre-AIA
35 U.S.C. § 102(e) as anticipated by Bell et al. (US 2004/0044785 A1;
published Mar. 4, 2001) (“Bell ’785”).
Claims 5–8 and 45 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over the combination of Bell ’785 and Fong (US
2003/0095152 A1; published May 22, 2003).
Claims 9, 11, and 12 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bell ’785 and Bell et al. (US
2004/0044723 A1; published Mar. 4, 2004) (“Bell ’723”).
Claims 38–42 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Bell ’785 and Curtiss et al. (US
7,110,789 B1; issued Sept. 19, 2006) (“Curtiss”).
Claims 43 and 44 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Bell ’785 and Yamada et al. (US
2004/0100460 A1; published May 27, 2004) (“Yamada”).

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ANALYSIS

35 U.S.C. § 112 ¶ 1 Rejections2

In addition to arguments specific to particular limitations, Appellant
makes two general arguments with respect to the written description
rejections. First, Appellant argues that the Examiner did not make similar
rejections in previous office actions in a different application having the
same priority date and specification. E.g., Appeal Br. 9–38.3 Second,
Appellant argues the prior art rejections are based on less written description
support. E.g., id.; Reply Br. 4–5.
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to

2 In the Answer, the Examiner withdrew lack of written description
rejections with respect to “LAN” (claims 1, 3, 6, 16, 32) and “television
channels” (claim 10). Ans. 4, 8.
3 Appellant also argues the Examiner is showing bias toward the applicant
and/or applications, and requests that “the Board clearly opine[] and
provide[] a clear position of the Office regarding this prosecution pattern.”
Reply Br. 3. The Board’s role is to review the rejections on the record. See
35 U.S.C. § 6(b) (“The Patent Trial and Appeal Board shall-(1) on written
appeal of an applicant, review adverse decisions of examiners upon
applications for patents pursuant to section 134(a)”). Whether the Examiner
is showing bias toward the applicant and/or applications is a petitionable
matter, and we do not address it in our opinion. See 37 C.F.R. § 1.181(a)
(“Petition may be taken to the Director: (1) From any action or requirement
of any examiner in the ex parte prosecution of an application ... which is not
subject to appeal to the Patent Trial and Appeal Board or to the court”);
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 1201
(Ninth Edition, Revision 08.2017 (rev. Jan. 2018)) (“The line of demarcation
between appealable matters for the Board and petitionable matters for the
Director of the U.S. Patent and Trademark Office (Director) should be
carefully observed.”).
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those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id.; see also AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285, 1298 (Fed. Cir. 2014) (“The essence of the written
description requirement is that a patent applicant, as part of the bargain with
the public, must describe his or her invention so that the public will know
what it is and that he or she has truly made the claimed invention.”);
Examining Computer-Implemented Functional Claim Limitations for
Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61, 62 (Jan. 7, 2019).
“[W]hile the description requirement does not demand any particular form
of disclosure, or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Ariad, 598 F.3d at 1352 (citation omitted).
Because the test for written description has no bearing on the
Examiner’s handling of other applications, or on the disclosure in the
references cited in the prior art rejections, we do not find Appellant’s general
arguments to be persuasive as to Examiner error. We now turn to each of
Appellant’s more specific arguments.4

4 The current application is related to and has the same specification as
application 12/358,551, which was the subject of Appeal No. 2016-000622,
mailed on February 2, 2017. In that case, the Examiner made similar written
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“digital video data” - Claims 1, 4, 11, 12
Claim 1 recites that the claimed device is operative for receiving,
storing, and displaying “digital video data.” Appeal Br., Claims App’x 63.
Claims 4, 11, and 12 depend from claim 1 and include further limitations
involving the recited “digital video data.” Id. at 64.
The Examiner finds that the Specification does not describe that the
received data is digital video content, and therefore the claims lack written
description as to the claimed “digital video data.” Final Act. 5 (citing Spec.
Fig. 6A (displaying text), 12:18–30); see Ans. 5.
Appellant contends that “[d]isplaying received video content by a
video display” is described at various parts of the Specification. Appeal Br.
20–21 (citing Spec. 1:20–26, 5:26–6:4, 16:5–19, 22:1–18). Appellant argues
the Specification describes the “information” received to “clearly include
video and digital video,” and “does not in any way exclude any video.” Id.
at 20.
Appellant’s arguments are not persuasive. The examples of
“information” provided in the Specification appear to refer to textual
information, as opposed to digital video data, which is consistent with the
disclosure in the Specification that “the size of the information content to be
downloaded in a single communication session is limited.” E.g., Spec.
11:1–19; Fig. 6A. Moreover, Appellant does not direct us to any disclosure
in the Specification of digital video being received, stored, or displayed on
the video display of the device, as recited in the claim. Rather, Appellant

description rejections as here. We affirmed those rejections. Here,
Appellant makes many similar arguments as in the previous appeal, which
we do not find persuasive for similar reasons as set forth in that Decision.
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cites to portions of the Specification that describe (1) background
information; (2) analog video display; or (3) the device using some other
appliance’s display to display the content, such as a personal computer
screen or television set. E.g., Spec. 1:20–26, 5:26–6:4, 16:5–19.
Accordingly, we are not persuaded the Examiner erred, and we agree with
the Examiner’s findings. See Final Act. 5; Ans. 6.
“second memory storing a digital address” – Claim 3
Claim 3 depends from claim 1 and recites “a second memory storing a
digital address uniquely identifying said device in the LAN.” Appeal Br.,
Claims App’x 63.
The Examiner finds the Specification describes memory 11, but does
not describe a second memory storing a digital address. Final Act. 5.
Appellant contends “[t]he Action seems to admit that a memory that
stores a digital address is properly disclosed, but that a separate second
memory is not disclosed. However, the claim does not disclose that the two
memories are in different enclosures or any other physical arrangement,
rendering the rejection moot.” Appeal Br. 23.
Appellant’s arguments do not persuasively address the Examiner’s
rejection. The Examiner’s rejection is not based on “the two memories are
in different enclosures or any other physical arrangement” (id.), but that the
Specification does not describe a second memory storing a digital address,
as claimed. Appellant does not direct our attention to any disclosure in the
Specification that describes the claimed “second memory for storing a
digital address . . . .” To comply with the written description requirement,
the Specification must show the inventor had possession of the full scope of
the claim. See, e.g., LizardTech Inc. v. Earth Resource Mapping Inc., 424
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F.3d 1336, 1345 (Fed. Cir. 2005); MPEP § 2163.05. Accordingly, we are
not persuaded the Examiner erred, and we agree with the Examiner’s
findings. Final Act. 5; Ans. 6.
“display is coupled to said first memory via a composite video interface” –
Claim 9
Claim 9 depends from claim 8 and recites “wherein said display is
coupled to said first memory via a composite video interface, and the
composite video interface is one of a PAL and a NTSC interface.” Appeal
Br., Claims App’x 64.
The Examiner finds “within the information device, the internal
display 13 is coupled to memory 11 via a control unit 14, not a composite
video interface (for example, see Figure 1). A composite video interface
(adapter) is used when connecting the device to an external display device
(page 5, line 27 – page 6, line 2).” Final Act. 6.
Appellant argues that the passage cited by the Examiner “is NOT in
any way limited to an external display. This paragraph clearly discloses
INTERNAL display as claimed.” Appeal Br. 25–26.
The pertinent portion of the Specification states:
The information received from the remote location is stored in
the info memory 11, and displayed to the user by display means
13. The display means 13 may be alpha-numeric only or
analog video display, and may use technologies such as LCD
(Liquid Crystal Display), FED (Field Emission Display[)], or
CRT (Cathode Ray Tube). The memory may be volatile or
non-volatile type, such as Flash, DRAM and RAM. In many
cases, an adaptor (not shown) is required in order to connect the
analog display to digital data device. For example, the adaptor
may convert to composite video (PAL, NTSC) or S-Video or
HDTV signal.
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Spec. 5:27–6:2. Appellant’s arguments do not persuasively address the
claim language. The claim language requires “a single enclosure housing
. . . said first memory and said display” (claim 1) and the “display is coupled
to said first memory via a composite video interface” (claim 9). Although
the beginning of the cited portion of the Specification describes an internal
display 13, the description of the composite video interface seems to suggest
that an adaptor is used to connect an external analog display to the digital
data device (e.g., device 10). See Spec. 5:29–6:1 (“to connect the analog
display to digital data device” (emphasis added)). The only other times a
video adapter is mentioned in the Specification suggest that “video adapter
111 for connecting to an external video display” can be used “alternatively”
to “built in display means 13.” See id. at 21:5–7, 16:9–11. Claim 1 (from
which claim 9 ultimately depends) recites a device with a single enclosure
that includes a display, not a connection to an external display. Appellant
asserts in a conclusory fashion that the cited paragraph “clearly discloses
INTERNAL display as claimed,” Appeal Br. 26, yet fails to adequately
address whether and why the Specification discloses using an adaptor for an
internal display rather than an external display. We, therefore, are not
persuaded the Examiner erred and agree with the Examiner’s findings. Final
Act. 6; Ans. 7.
“High Definition” – Claims 11, 12
Claim 11 depends from claim 1 and recites “wherein said device is
further operative to receive and display High Definition (HD) video, and said
video display is operative to display High Definition (HD) video.” Appeal
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Br., Claims App’x 64. Claim 12 depends on claim 11 and recites “wherein
the High Definition (HD) video is High Definition Television (HDTV).” Id.
The Examiner finds “the specification does not describe the integrated
display as being an HDTV display, but rather an analog display (page 5, lines
27–29), and specifically describes the requirement of an adapter when
connecting to an HDTV display in order to provide conversion to HDTV
signals (page 5, line 30–page 6, line 2).” Final Act. 6.
Appellant argues the cited passage is not limited to an external display,
and explicitly mentions an LCD display which is known to be a digital display.
Appeal Br. 28.
Appellant’s arguments are not persuasive. The pertinent portion of
the Specification is set forth above. See Spec. 5:27–6:2. The only mention
of “high definition” or HDTV in the Specification is with respect to use of
an adaptor to convert an HDTV signal. Spec. 5:30–6:2. As discussed
above, the adaptor described in the Specification refers to connecting the
device to an external analog display. See id. at 5:30–6:2 (“In many cases, an
adaptor (not shown) is required in order to connect the analog display to
digital data device. For example, the adaptor may convert. . . HDTV
signal.”); id. at 16:9–11 (“The information device 110 shown in the figure
does not comprise any display means 13, but rather only employ a video
adapter 111, connectable to any external video monitor”); id. at 21:5–6
(“The [information] device 170 shown comprises video adapter 111 for
connecting to an external video display.”). However, claim 1 recites a
device with a single enclosure that includes a display, not a connection to an
external display. Therefore, we are not persuaded the Examiner erred and
agree with the Examiner’s findings. Final Act. 6; Ans. 8.
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“rechargeable battery” – Claim 15
Claim 15 depends from claim 1 and recites “[t]he device . . . further
comprising a battery, and wherein said device is operative to be at least in
part powered from said battery, and said battery is a primary or rechargeable
battery.” Appeal Br., Claims App’x 65. From claim 1, the device must also
comprise “a LAN connector” and “a LAN transceiver” for communicating
via the Local Area Network (LAN).
The Examiner finds that in the description of the invention in the
Specification, “the embodiment which uses a rechargeable battery involves
connection with a dial-up telephone line, not with a LAN. Power is
extracted from the telephone line during an off-hook condition in order to
charge the rechargeable battery (page 14, lines 1–32).” Final Act. 6–7.
Appellant argues that “battery powering is described with respect to
[a] cordless telephone” and the Specification also “generally discloses
powering by batteries, not limited to [a] specific embodiment.” Appeal Br.
29 (citing Spec. 23:20–22,5 2:28–29, 14:2–3).
We are not persuaded by Appellant’s citations. Although the cited
portions of the Specification generally describe a device powered by
batteries, we agree with the Examiner (Ans. 9) that the cited portions of the
Specification do not sufficiently show possession of the embodiment which
uses a rechargeable battery with a LAN, rather than a telephone line. See
Spec. 2:28–29 (discussing “batteries” but not “rechargeable”), 14:2–3
(same), 13:20–22 (discussing a “rechargeable battery” but only in the

5 The text at “23:20–22” is unrelated to batteries. We assume that is a typo
that was intended to be “13:20–22.”
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context of a “[c]ordless telephone”). Appellant has not provided a citation to
any portion of the Specification sufficiently addressing the Examiner’s
findings. Accordingly, we are not persuaded the Examiner erred and agree
with the Examiner’s findings. Final Act. 6–7; Ans. 9.
“firmware”- Claims 16, 19
Claim 16 depends from claim 1 and recites “further comprising
firmware and a processor for executing said firmware, said processor being
coupled to control at least said LAN transceiver and said video display.”
Appeal Br., Claims App’x 65. Claim 19 recites “[t]he device according to
claim 16, wherein said firmware includes at least part of a web client for
communication with, and accessing information stored in, the remote
information server.” Id.
The Examiner finds “‘firmware’ is not described in the original
disclosure.” Final Act. 7.
Appellant argues “[t]he term ‘firmware’ is known in the art for a
software that is not frequently or easily updated (‘firm’), and is typically
stored in a non-volatile memory to be used as part of embedded computer
system. The specifications explicitly disclose[] that non-volatile memory
may be used (page 6 line 19).” Appeal Br. 30. Appellant further argues that
“the disclosure clearly discloses a controller, such as a processor, that
implements flow chart by software, that may further be updated, and the
term ‘software’ is explicitly disclosed in page 9, lines 18–23, and page 19,
lines 28–32.” Id. at 31.
We are not persuaded by Appellant’s arguments. Appellant provides
no evidence or technical reasoning to support the assertion that the claimed
use of firmware—e.g., “firmware includ[ing] at least part of a web client”—
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was so well known and routine in the art that it may be omitted from the
Specification. See Appeal Br. 30. Such response to the Examiner’s
rejection is insufficient to show error. Further, the Specification generally
describes that “[t]he memory may be volatile or non-volatile type, such as
Flash, DRAM and RAM.” Spec. 5:29–30. The Specification also mentions
the term “software,” e.g., “the information device 10 client software is based
on a common web browser such as Microsoft Internet Explorer” and “adding
the information device 120 functionality to an existing design of a telephone
set 132 may only require software update in order to execute at least part of
flow chart 60.” Spec. 9:21–22, 19:28–30. We are not persuaded the mere
mention of non-volatile memory and/or software sufficiently indicates
Appellant was in possession of the claimed use of “firmware.” See Ans. 10.
Accordingly, we are not persuaded the Examiner erred and we agree with
the Examiner’s findings. Final Act. 7; Ans. 10.
“store and play digital audio data”- Claim 34
Claim 34 depends from claim 1 and recites “wherein said device is
further operative to store and play digital audio data.” Appeal Br., Claims
App’x 67.
The Examiner finds “there is no description of such storing and
playing of digital audio data being performed by the information device.”
Final Act. 7. The Examiner finds the only mention of the term “audio” is in
connection with the use of an ordinary cordless base phone unit that carries
full duplex/telephony, for the purpose of eliminating the need for a
connecting cable to the telephone outlet. Ans. 11.
Appellant argues “[t]elephony, known for audio communication, is
described throughout the present application.” Appeal Br. 33. Appellant
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argues “the term ‘audio’ is explicitly mentioned at page, 18, line 8. Further,
video is known to include audio, and the paragraph at page 1, lines 22–26,
clearly states that the information may include a weather forecast displayed
on a television set, clearly indicating video content.” Id. at 33. Appellant
also relies on page 5, line 26 though page 6, line 2 and page 28, lines 6–8 of
the Specification to support that “audio” does not lack written description.
Id. at 34.
We agree with the Examiner that the identified disclosure does not
sufficiently indicate possession of a device operative to store and play digital
audio data. See Ans. 11. The portions of the Specification relied upon by
Appellant do not describe storing and playing digital audio data. Rather,
they refer to displaying data on a screen or other display. E.g., Spec. 1:24–
26 (“in order to get the weather forecast via the television the user is
required to turn on the television set, select a weather channel and watch
until the relevant information appears on the screen”) (emphasis added); id.
at 5:26–6:2 (“information received from the remote location is stored in the
info memory 11, and is displayed to the user by display means 13”)
(emphasis added); id. at 28:5–8 (“[T]he display means oriented towards
displaying images requires high quality, high resolution and large screens.
In contrast, the information transported as part of the present invention may
be of any type, such as simple text data requiring relatively small, low-
resolution display means.”); id. at Fig. 6a (depicting weather forecast
information displayed as text data). The word “audio” appears only at page
13, lines 8 and 16 of the Specification and refers to transmitting audio
signals in a telephone handset, not storing digital audio data. Accordingly,
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we are not persuaded the Examiner erred, and agree with the Examiner’s
findings. Final Act. 7; Ans. 11.
“connected unit” – Claims 35–42
Claim 35 depends from claim 1 and recites “wherein: said device is
further operative to receive and display information from a connected unit;
said device further comprises a second connector coupled to said first
memory for connecting said first memory to the unit; and said device is
operative to receive digital data comprising information from the unit and to
display the information on said video display.” Appeal Br., Claims App’x
67. Claims 36–42 further depend from claim 35. Id. at 68. For example
claim 40 recites that “wherein the unit is a handheld unit; and said device is
further adapted to mechanically dock, supply power to, and communicate
with the handheld unit.” Id.
The Examiner finds the disclosure does not describe the recited
subject matter. Final Act. 7. Specifically, the Examiner finds:
On page 19, line 11 – page 20, line 8, the specification
describes coupling with a handheld unit, but these embodiments
(depicted in Figs. 13–15b) do not include the device coupling to
a LAN or the Internet. Rather, the handheld unit itself provides
the sole communication means via its built-in cellular modem,
wireless modem or wired network connection (page 19, lines
11–16), which conflicts with the LAN transceiver in parent
claim 1. As to claims 35–37, information is received from the
remote information server 32 (page 2, lines 4–12), not from a
locally connected handheld unit. Therefore, the specification
fails to describe the information device receiving information
from or transmitting information to the connected unit.

Final Act. 7–8.
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Appellant argues “[t]he LAN connection (in contrast to Wireless LAN
WLAN) is clearly a wired connection using a wired LAN transceiver, hence
supported in the specification according to the Action itself.” Appeal Br. 34.
Appellant further relies on page 20, lines 6–8, “Furthermore, multiple
devices may be employed either independently or in combination, as
shown in FIG. 15b describing an information device 155 and both a PDA
151 and cellular telephone set 132. (Emphasis added).” Id. at 35.
Appellant contends “the specification clearly supports using multiple
attachable devices to the information device, supports using multiple
communication devices, and further means, and protocols.” Id.
Appellant’s arguments are not persuasive. In addition to the
recitations in claim 1 requiring the device comprises a LAN connector for
connecting to the LAN and a LAN transceiver housed in a single enclosure
with the first memory and display, claim 35 requires that the device “receive
and display information from the connected unit.” As Appellant points out,
the Specification describes that the device may connect to other devices,
such as a PDA and cellular telephone set. See Appeal Br. 35. However,
these embodiments do not describe that the single enclosure device is
connecting to the LAN via a LAN connector and a LAN transceiver housed
in the single enclosure; they either describe (1) that the device uses a cellular
telephone service (as opposed to a LAN) to connect to the information
provider or (2) the connected unit’s (e.g., the PDA) built-in communication
means (cellular modem, wireless modem or wired network connection) are
used as the communication means. Spec. 18:25–20:8. Accordingly, we are
not persuaded the Examiner erred and we agree with the Examiner’s
findings. Final Act. 7–8; Ans. 12.
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“serial digital data stream” – Claim 37
Claim 37 depends from claim 36 and recites “wherein communication
with the unit via said connector is carried out using a serial digital data
stream.” Appeal Br., Claims App’x 67.
The Examiner finds “the specification describes the use of a serial bus
for coupling between components within the information device (page 6,
lines 16-19), not between the information device and a connected unit.”
Final Act. 8 (emphasis added); Ans. 13.
Appellant contends page 6, line 19 of the Specification states
“coupling to the other components may be serial or shared bus type.”
Appeal Br. 37.
Appellant’s arguments are not persuasive. We agree with the
Examiner that the serial bus cited in the Specification lacks any description
that it may be used to communicate with the external connected unit; rather,
the cited disclosure appears to refer to the components internal to the device.
See Ans. 13 (citing Spec. 6:19). Accordingly, we are not persuaded the
Examiner erred and we agree with the Examiners findings. Final Act. 8;
Ans. 13.
For the foregoing reasons, we sustain the Examiner’s 35 U.S.C.
§ 112, ¶ 1 rejection of claims 1, 3, 4, 9, 11, 12, 15, 16, 19, and 34–42. We
also sustain the Examiner’s 35 U.S.C. § 112, ¶ 1 rejection of dependent
claims 2, 5–8, 10, 13, 14, 17, 18, 20–33, and 43–44 by virtue of their
dependence on one of the foregoing claims.
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35 U.S.C. § 102 Rejections
Claim 1
Appellant contends that the Examiner combines two distinct
embodiments from Bell ’785 in the anticipation rejections. Appeal Br. 38.
Specifically, Appellant argues there are two distinct entities described in
Bell ’785, and the Examiner relies on the features of both to disclose the
claimed device: (1) processor-based device 40, which connects to both the
local area network 64 and the WAN and (2) peripheral devices such as
Digital Picture Frame 66, Digital Appliance 67, and other devices 68, which
are connected only to local network 64, and are different from the primary
device 40. Id. at 38–39.
We do not find this argument persuasive. The Examiner relies on Bell
’785’s processor-based device 20/40 to disclose the claimed device. E.g.,
Final Act. 8. Bell ’785 discloses various examples of processor-based
devices or computing devices, including digital picture frames, and further
discloses that these devices can access a network, such as the Internet:
Many other types of processor-based devices or computing
devices 20 may be used to implement one or more embodiments
of the present invention. These include any devices that can
access a network, such as the Internet, that contains sources of
information arranged in a tag-based language or structure, such
as HTML. Such devices may take the form of a computer (e.g.,
desktop, laptop, handheld, etc.), a wireless communications
device (e.g., cellular phone, 2-way pager, etc.), a digital picture
frame, a personal entertainment device (e.g. a radio), audio-
visual equipment, a personal digital assistant, Internet
appliance, electronic book, and the like.

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Bell ’785 ¶ 30 (emphasis added); see also Bell ’785 ¶ 29 (“Computing
device 20 may be or include a personal computer 24 or any other processor-
based device.”).
Appellant contends Bell ’785 does not disclose “obtaining, storing and
displaying digital video data from a first remote information server via the
Internet over a LAN,” as recited in claim 1. Appeal Br. 39. Specifically,
Appellant argues that Bell ’785 “is directed to two different and distinct
connections,” one “for locally communicating with client devices such as
DPF 66,” and “an additional distinct connection to WAN / Internet 65, for
communication with a remote server.” Id. at 41 (emphasis omitted).
Appellant’s arguments are not persuasive. Rather, we agree with the
Examiner that Bell ’785 discloses that a remote resource on the Internet can
be accessed to retrieve digital picture data which is received across a LAN to
a digital picture frame device. See Ans. 14–15; Final Act. 8. For example,
paragraph 88 of Bell ’785 provides an example of a digital picture frame as
the computing device, and describes “a Webcam feed application for a
[digital picture frame] could access the Webcam every 5 minutes and send
the data across the LAN to the [digital picture frame].” See also Bell ’785
¶ 56 (“Processor-based device 40 can operate in a networked environment
using physical and/or logical connections to local network 64 and/or wide
area network (WAN) 65. The connections to these networks can be wired
and/or wireless”); ¶ 72 (“a user runs an application on his or her computing
device” and “embodiments of the invention can work with information
residing on any type of remote resource on any type of network, including a
LAN, or a WAN such as the Internet”); claim 20 (“wherein the resource is
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one of the Internet, an intranet, a wide area network, a local memory store,
and a local area network”).
Appellant further argues that Bell ’785 does not disclose a “LAN
connector for connecting to the LAN,” as recited in claim 1. Appeal Br. 41.
Specifically, Appellant argues that Bell ’785 does not disclose a
“connector.” Id. at 42.
Appellant’s arguments are not persuasive. Bell ’785 discloses that
“[p]rocessor-based device 40 can operate in a networked environment using
physical and/or logical connections to local network 64 and/or wide area
network (WAN) 65. The connections to these networks can be wired and/or
wireless.” Bell ’785 ¶ 56. Bell ’785 also states “embodiments of the
invention can work with information residing on any type of remote resource
on any type of network, including a LAN, or a WAN such as the Internet.”
Id. ¶ 72. We agree with the Examiner that this discloses the claimed “LAN
connector.” Final Act. 8; Ans. 15.
Appellant further argues that Bell ’785 does not disclose a “LAN
transceiver coupled to said LAN connector for bi-directional packet-based
digital data communication with another LAN transceiver of the same type
over the LAN,” as recited in claim 1. Appeal Br. 42–43. Specifically,
Appellant argues that Bell ’785 does not disclose a “LAN transceiver.” Id.
at 43.
Appellant’s arguments are not persuasive. In addition to the
disclosure in paragraph 56, as cited above, Bell ’785 discloses that the
processor-based device transmits and receives digital data over the Internet
via a wired connection. See Bell ’785 ¶ 31 (“[A] device user can send a
search request 31 for a Web object to a remote resource (not shown) coupled
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to the network. The remote resource can be . . . a computing device or
server on a local area network . . . the Internet . . . or any other network.”);
¶¶ 40–44. We agree with the Examiner that this discloses the claimed “LAN
transceiver.” Final Act. 9; Ans. 15. See In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009) (“the reference need not satisfy an ipsissimis verbis test”).
Appellant argues Bell ’785 does not disclose “a first memory coupled
to said LAN transceiver for storing digital video data received by said LAN
transceiver,” as recited in claim 1. Appeal Br. 44. Appellant argues the
various types of memory in Bell ’785 are not coupled to a LAN transceiver
as recited in the claim. Id. Appellant also argues that Bell ’785 is silent as
to the type of content that is stored in memory, as well as to storing received
information from the transceiver. Id. at 44–45.
Appellant’s arguments are not persuasive. Bell ’785 discloses a
“machine or processor-based device 40 having a system bus 42.” Bell ’785
¶ 51. The “[s]ystem bus 42 provides communication links among the
various components of the processor-based device 40.” Id. Attached to the
bus are “memory 50,” “modem 52,” “network interface unit 54,” or “other
suitable devices 58.” Id. ¶ 52. Bell ’785 discloses that “memory . . . can
comprise various stored objects 35 . . . [O]ne or more objects 35 can be
stored in any suitable type of memory 34 . . . in order that they can be
displayed on the computing device’s display.” Id. ¶ 48; see also id. ¶ 107
(“the object, and any associated object(s), can be stored directly on the
computing device of the requesting user”). Bell ’785 also discloses that
“[t]he objects may be of many different types,” including “frames, sub-
frames, images or series of images, video, and sounds.” Id. ¶ 26. Bell ’785
discloses that such objects may be retrieved from a source on the Internet
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and are received over a LAN. E.g., id. ¶¶ 40, 44–48, 88. We agree with the
Examiner that Bell ’785 discloses the claimed “first memory coupled to said
LAN transceiver for storing digital video data received by said LAN
transceiver.” Final Act. 9; Ans. 16.
Appellant argues Bell ’785 does not disclose “said device is
addressable in the LAN,” as recited in claim 1. Appeal Br. 45–46.
Appellant argues that “at the time of the Bell ’785, many devices were
addressable by a connected device, where the address was assigned by a
service provider (ISP).” Id. at 46.
The Examiner finds that “Bell ’785 discloses the device 40 having the
network interface unit 54 (para. 0052) and operating in a local network 65
(para. 0056–0057, 0072, 0088). The examiner submits that a LAN network
interface unit inherently comprises a MAC address stored in a ROM of the
NIC at the time of manufacture in order to receive data addressed to it.”
Ans. 16. In support, the Examiner cites to paragraphs 29 and 30 of Angelo.6
Id.
In response, Appellant argues that “the device described in the Angelo
reference is a ‘desktop computer’ having a NIC for connecting to a LAN,
and the NIC contains the MAC address. The NIC is clearly an optional
added card.” Reply Br. 10. Appellant contends “while the Angelo reference
may teach an embodiment where a NIC comprises a MAC address, the
Angelo reference in general, and the cited package in particular, fails to
teach that such a feature is inherent or necessary.” Id.; see also Appeal Br.
46.

6 US 2004/0002877 A1 (published Jan. 1, 2004).
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We are not persuaded by Appellant’s arguments. Appellant cites to
page 17, lines 16–22 of the Specification as describing this limitation.
Appeal Br. 4. This portion of the Specification states:
In alternative embodiments, the information 10 device transmits
its identification as part of the communication session, during
the start session step 64. The identification may consist of: a.
A unique identification code (‘address’), associated with a
single information device 10. Such mechanism may be based
on the popular and standard IP/Ethernet MAC/IP address
structure, or may be of a proprietary nature. Similarly, a user
name, password and other personalization techniques known in
the art may be used.

Spec. 17:16–22.
An additional reference may be used to show a characteristic not
expressly discussed in the anticipating reference is an inherent characteristic.
Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
“Such evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.” Id. However, inherency
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient. [Citations omitted.] If, however,
the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the
performance of the questioned function, it seems to be well
settled that the disclosure should be regarded as sufficient.

Id. at 1269 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). The
Federal Circuit explained that “[t]his modest flexibility in the rule . . .
accommodates situations where the common knowledge of technologists is
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not recorded in the reference; that is, where technological facts are known to
those in the field of the invention, albeit not known to judges.” Id.
When relying on the theory of inherency, the USPTO has the initial
burden of providing a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent characteristic
reasonably flows from the teachings of the applied prior art. See In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986). Once the USPTO establishes a prima
facie case of anticipation based on inherency, the burden shifts to the
applicant to prove that the prior art does not possess the characteristic at
issue. Id.
The portions of the Angelo reference relied upon the Examiner
describe “an identifying number known as the media access control address
(or ‘MAC address’) 123.” Angelo ¶ 29. Angelo goes on to discuss the
MAC address is “used to uniquely identify the NIC 122 in a networked
computing environment.” Id. Angelo states that “[a]ll computers in a given
network must have unique MAC addresses or the likely result is that neither
will function correctly on the network. This is true because each computer
on the network must have a unique MAC address to correctly receive data
addressed to it.” Id. ¶ 30 (emphasis added).
Appellant does not provide any citation or reasoning supporting its
argument that Angelo’s NIC is an optional added card. To the contrary,
Angelo teaches using the unique MAC address of a NIC as a verification
tool for warranty service. See Angelo ¶ 32. Moreover, Bell ’785 clearly
shows a network interface unit 54 attached to system bus 42 of the machine
or processor-based device 40. Bell ’785 ¶¶ 51–52. We find the Examiner
has sufficiently shown via the disclosure in Angelo that the network
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interface unit of Bell ’785 inherently is addressable so that it can correctly
receive the data addressed to it. Bell ’785 is directed to retrieving network
information, so it is reasonable, in light of the disclosure in Bell ’785, that
the machine or processor-based device must be able to correctly receive the
data that it requests from the remote server, and would necessarily do so
through the use of an address as described in Angelo. Appellant has not
persuasively argued that Bell ’785’s processor-based device is not
addressable in the LAN. We, therefore, agree with the Examiner that the
disclosure discloses the claimed device is “addressable in the LAN.” Final
Act. 9; Ans. 16.
Appellant further argues that Bell ’785 does not disclose a “video
display,” as recited in claim 1. Appeal Br. 46.
Appellant’s arguments are not persuasive. We agree with the
Examiner that Bell ’785 discloses the claimed “video display.” Final Act. 9;
Ans. 17. For example, Bell ’785 explicitly discloses a video display. E.g.,
Bell ’785 ¶ 26 (“a displayed Web page may comprise a plurality of
objects”); ¶ 30 (“computer,” “digital picture frame”); ¶ 48 (objects “can be
displayed on the computing device’s display”); ¶ 52 (“display 46”); ¶ 106
(“the object, and any associated object(s), are displayed or rendered on the
computing device”).
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 102, and therefore, sustain the Examiner’s
rejection.
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Claim 2
Claim 2 depends from claim 1 and recites “automatically and
periodically communicating with the first remote information server at all
times when said device is in operation.” Appeal Br., Claims App’x 63.
The Examiner relies on paragraphs 68, 69, 76, 83–93, 97, and 102 of
Bell ’785 to disclose the limitations in claim 2. Final Act. 9; Ans. 17–18.
According to Appellant, the citations relied upon by the Examiner
only teach “periodically locally retrieving and displaying, and fails to teach
any automatic and periodic external communication in general.” Appeal
Br. 48.
Appellant’s arguments are not persuasive. Bell ’785 explicitly
describes automatically and periodically retrieving an HTML object from a
remote server:
FIG. 9 is a flow diagram illustrating a method to automatically
retrieve an HTML object at a desired time interval, in
accordance with one or more embodiments of the present
invention. This method, or a similar embodiment, can be used
by a user’s computing device to retrieve and, if desired, display
or otherwise render a desired HTML page object. Object
retrieval may occur whenever requested by the calling device.
It can occur periodically on a regular basis, or it can occur only
once or sporadically.

Bell ’785 ¶ 93. Bell ’785 further discloses that “the current
instantiation of the object” is downloaded to the calling device. Bell
’785 ¶ 97; see also Bell ’785 ¶¶ 94, 102. Accordingly, we agree with
the Examiner’s findings and conclusions. See Ans. 17–18. We,
therefore, sustain the Examiner’s 35 U.S.C. § 102 rejection of claim 2.
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Claim 3
Claim 3 depends from claim 1 and recites a “second memory for
storing a digital address uniquely identifying said device in the LAN.”
Appeal Br., Claims App’x 63.
The Examiner finds “in order to function as a node on the Internet, an
IP address is required and stored . . . additionally, processor-based device is
coupled to a local network 64 and/or Internet 65 . . . via a network interface
unit 54 . . . which inherently stores a unique MAC address.” Final Act. 10
(citing Bell ’785 ¶¶ 50, 52, 56, 58). The Examiner also relies on Angelo, as
discussed above with respect to claim 1. Ans. 18–19.
Appellant contends “at the time of the invention, addresses in general
(such as IP or MAC address) have not been inherent, and many times the
addressing was assigned by the connection (such as in dial-up modem, or . . .
directly to other devices . . . [)], thus there is no need for any addressing
mechanism.” Appeal Br. 49. Appellant further argues the Examiner has not
provided evidence establishing that Bell ’785 inherently discloses this
feature. Id. at 50.
We are not persuaded by Appellant’s arguments for the same reasons
as discussed above with respect to claim 1. We also note that Appellant has
not explained how Appellant’s asserted addressing scheme (“addressing was
assigned by the connection”) would work without storing the assigned
address in a memory of the device. Appeal Br. 49. Appellant presents the
same arguments for dependent claims 32 and 33, which we find
unpersuasive for the same reasons. Appeal Br. 49–50. Accordingly, we
sustain the Examiner’s 35 U.S.C. § 102 rejections of claims 3, 32, and 33.
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Claim 4
Claim 4 depends from claim 1 and recites “wherein said device is
operative to send the digital address and a request for information, and to
obtain and display digital video data from the first remote information server
in response to the sent request for information.” Appeal Br., Claims App’x
64.
The Examiner relies on paragraph 40 of Bell ’765 and states “an
HTTP request message inherently includes a source IP address.” Final Act.
10. The Examiner also finds that “an HTTP request transmitted by a
sending device to a web server necessarily includes a source IP address,
whether it is static or assigned by a service provider, in order for the server
to know where to send the response message” and relies on Squire.7 Ans.
19–20.
Appellant argues “while HTTP at the time of Bell ’785 invention
request MAY include a source IP address, such IP address may not relate to
the sending device but assigned by a service provider (such as ISP) and
associated with a specific connection (such as dial up port connection).”
Appeal Br. 50–51. Appellant further argues the Examiner has not provided
evidence establishing that Bell ’785 inherently discloses this feature, or that
Squire teaches that such a feature is inherent. Id. at 51; Reply Br. 11.
We are persuaded by Appellant’s arguments. Bell ’765 describes the
use of HTTP Web protocol to format and transmit objects, which Squire
describes as “well-known.” Bell ’765 ¶ 40; Squire, 6:31. However, Squire
describes that a “HTTP is a request/response protocol that is typically used

7 US 7,080,158 B1 (issued July 18, 2006).
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in conjunction with the Transmission Control Protocol (TCP) and the
Internet Protocol (IP).” Squire, 6:25–27 (emphasis added). Given this
disclosure in Squire, we agree with Appellant that the Examiner has not
sufficiently shown that Bell ’785 inherently discloses the limitations in claim
4, although this limitation may well be obvious under § 103. Accordingly,
we do not sustain the Examiner’s 35 U.S.C. § 102 rejection of claim 4.
Claim 10
Claim 10 depends from claim 1 and recites “wherein said device is
further operative to receive and play television channels.” Appeal Br.,
Claims App’x 64.
The Examiner relies on paragraphs 30, 57, and 70 of Bell ’765 to
disclose the limitations in claim 10. Final Act. 10; Ans. 20. Paragraph 57 of
Bell ’785 states:
Local network 64 can comprise any number or type of
computing devices, such as a digital picture frame 66, digital
appliance 67, or any other processor-based device 68 such as
those mentioned elsewhere herein. Other processor-based
devices on local network can include, but are not limited to,
music jukeboxes, radios, set-top boxes, digital televisions, and
the like. Digital picture frames are described in greater detail in
Related Applications (1) to (3).

The Examiner also relies on paragraph 30 of Bell ’785, which describes
“other types of processor-based devices or computing devices 20 . . .
includ[ing] any devices that can access a network, such as the Internet . . .
[which] may take the form of a computer . . . a wireless communications
device . . . a digital picture frame, a personal entertainment device (e.g., a
radio), audio-visual equipment, a personal digital assistant, Internet
appliance, electronic book, and the like.” Ans. 20. The Examiner also relies
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on paragraph 70 of Bell ’785, which states that “a device user could
schedule a favorite television show to be shown.” Ans. 20.
Appellant contends paragraph 57 “does not refer to the equated
Internet-connected device 40 shown in Figure 3, but rather to the devices
connected to the Internet-connected device 40 over local network 64.”
Appeal Br. 52. Appellant also argues that a “personal entertainment device,
audio-visual equipment,” and “scheduling a favorite television show” do not
suggest receiving or playing television channels. Reply Br. 11.
Appellant’s arguments are not persuasive. First, device 40 in Figure 3
is described as a “processor-based device” in the same way that the device
described in paragraph 57 is described as a “processor-based device.” E.g.,
Bell ’785 ¶¶ 50–51. As discussed above, Bell ’785 broadly describes its
“processor-based device.” E.g., Bell ’785 ¶¶ 29–30. Second, we find the
examples of processor-based devices cited to by the Examiner in paragraphs
30 and 70 of Bell ’785 sufficiently disclose a “device [that] is further
operative to receive and play television channels.” Accordingly, we sustain
the Examiner’s 35 U.S.C. § 102 rejection of claim 10.
Claims 26, 27
Claim 26 depends from claim 1 and recites “wherein communication
with the first remote information server is based on Internet Protocol suite.”
Appeal Br., Claims App’x 66. Claim 27 depends from claim 26 and recites
“wherein the communication with the first remote information server is
based on TCP/IP.” Id.
The Examiner relies on paragraphs 37 and 40 to disclose the
limitations in claims 26 and 27, specifically that Bell ’785 discloses using
HTTP Web protocol. Final Act. 12. The Examiner also relies on Squire to
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show what was known in the art, that “HTTP is a request/response protocol
that is typically used in conjunction with the Transmission Control Protocol
(TCP) and the Internet Protocol (IP).” Ans. 21 (citing Squire col. 6:25–27).
Appellant argues that HTTP is an application layer protocol, relating
to information formatting, while the recited IP and TCP/IP protocols are
link/network layer and transport layer protocols. Appeal Br. 52. Appellant
contends that Squire’s disclosure is not sufficient to show inherency; that
Squire only suggests that TCP or TCP/IP may be used with HTTP
communication. Reply Br. 11.
We are persuaded by Appellant’s arguments for the same reasons as
set forth above with respect to claim 4. Accordingly, based on the record
before us, we do not sustain the Examiner’s 35 U.S.C. § 102 rejections of
claims 26 and 27.
Claim 34
Claim 34 depends from claim 1 and recites “wherein said device is
further operative to store and play digital audio data.” Appeal Br., Claims
App’x 67.
The Examiner relies on paragraphs 7, 26, 45, and 48 of Bell ’785 to
disclose this limitation. Final Act. 13; Ans. 21.
Appellant contends the cited paragraphs from Bell ’785 “only mention
prior art objects and HTML pages ma[y] include audio,” but are “silent
regarding any storing or playing of audio.” Appeal Br. 53 (emphasis
omitted).
Appellant’s arguments are not persuasive. Bell ’785 describes that the
retrieved and displayed/rendered objects may include “sounds” and that the
objects can be “stored in any suitable type of memory.” Bell ’785 ¶¶ 26, 48.
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We, therefore, agree with the Examiner’s findings. Final Act. 13; Ans. 21.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102 rejection of claim
34.
Claims 35–37
Claim 35 depends from claim 1, and recites “wherein: said device is
further operative to receive and display information from a connected unit;
said device further comprises a second connector coupled to said first
memory for connecting said first memory to the unit; and said device is
operative to receive digital data comprising information from the unit and to
display the information on said video display.” Appeal Br., Claims App’x
67. Claim 37 depends from claim 36, and recites “wherein communication
with the unit via said second connector is carried out using a serial digital
data stream.” Id.
The Examiner relies on paragraphs 48, 51, and 52 of Bell ’785 to
disclose these limitations. Final Act. 13. In addition, the Examiner “points
to the removable media drive as a connector to external memory units
including memory sticks . . . which are known to include a power terminal,
data input/output terminal, bus terminal, etc.” Ans. 21 (citing Bell ’785
¶ 52; Imura,8 col. 6:12–55).
Appellant contends Bell ’785 “fail[s] to disclose any connector for
connecting any of these [memory] components to the internal bus” and “any
receiving or transmitting data to these [memory] components.” Appeal Br.
54. According to Appellant, “it is known in the art that various components
connected over a bus to a processor are directly connected and NOT via a

8 US 6,513,719 B1 (issued Feb. 4, 2003).
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connector.” Id. Appellant also argues the claims suggest “an apparatus that
is external to the device, in contrast to the equated internal components.” Id.
at 54–55. Appellant also argues that the mere mention of a “memory stick”
does not inherently suggest any features associated with the claimed
“connected unit,” and the Imura reference “fails to teach that a ‘memory
stick’ that includes a power terminal, data I/O and bus terminal . . . is
inherent or necessary.” Reply Br. 12.
Appellant’s arguments are not persuasive. Bell ’785 discloses
“attached to bus 42 is a memory 50, which can include any suitable memory
device(s) like . . . removable media drive for handling compact disks (CDs),
. . . memory sticks.” Bell ’785 ¶ 52. Appellant argues certain “features” of
the claimed “connected unit,” but claim 35 does not recite a “power
terminal” or “bus terminal.” We agree with the Examiner that the memory
sticks and other removable media described in Bell ’785 disclose the
disputed limitations in claims 35–37. See Final Act. 13; Ans. 21.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102 rejection of claims
35–37.
35 U.S.C. § 103 Rejections
Claims 5, 45
Claim 5 depends from claim 1 and recites “wherein said device is
configured for wall mounting in a residential building, and the first remote
information server is located outside the residential building.” Appeal Br.,
Claims App’x 64. Claim 45 depends from claim 1 and similarly recites that
the device comprises a “single enclosure is constructed to have . . . wall
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mounting elements similar to those of a standard picture frame for hanging
on a wall.” Id. at 69.
The Examiner relies on the combination of Bell ’785 and Fong to
teach claims 5 and 45. Final Act. 14; Ans. 21–22. Specifically, the
Examiner relies on Fong to teach or suggest that the digital picture frame
disclosed in Bell ’785 is configured for wall mounting within a building
structure. Final Act. 14 (citing Fong claim 1). The Examiner finds “[i]t
would have been obvious to one of ordinary skill in the art at the time of the
invention to incorporate the teaching of Fong within the disclosure of Bell
’785 in order to simulate a conventional picture frame which can be
mounted on a wall for easier viewing.” Id. (citing Fong ¶¶ 2–4); Ans. 22.
Appellant presents four arguments: (1) it is not clear what teaching of
Fong the Examiner incorporates into Bell ’785; (2) it is not clear that “wall
mounting provide[s] ‘more convenient viewing’”; (3) Fong is directed to a
device with a “flat panel display,” which is similar to, and looks like, a
picture frame, whereas Bell ’785 is silent about any flat display, and
therefore, “teaches away from any wall mounting or any conventional
picture frame simulation”; and (4) the rationale provides no link to the
present application, and therefore, lacks “some articulated reasoning with
some rational underpinning,” as required under KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 401, 418 (2007). Appeal Br. 55.
Appellant’s arguments are not persuasive. First, the Examiner clearly
states the teaching of Fong being applied, and further cites to claim 1 of
Fong, which recites “a frame component that is configured for mounting to a
wall within a building structure and for supporting the flat panel display unit
for viewing when mounted to the wall unit,” which sufficiently establishes
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the teachings to be combined with Bell ’785. See Final Act. 14; Ans. 21
(“the application of a frame component that is configured for mounting a
digital picture to a wall”).
Second, Bell ’785 explicitly discloses a digital picture frame.
Bell ’785 ¶ 30. A teaching away requires a reference to “criticize, discredit,
or otherwise discourage” modifying the reference to arrive at the claimed
invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant
has not identified any disclosure in Bell ’785 that criticizes, discredits, or
otherwise discourages mounting the disclosed digital picture frame on the
wall, as the Examiner proposes.
Finally, the Examiner has provided a reason to combine the references
in the manner proposed – for convenient viewing of the digital picture frame
by hanging it on the wall – which we find sufficiently meets the guidelines
under KSR. See Ans. 22–23. Appellant’s arguments as to the Examiner’s
rationale do not persuasively challenge the Examiner’s findings and
conclusions.
Accordingly, we sustain the Examiner’s rejections of claims 5 and 45
under 35 U.S.C. § 103.
Claim 6
Claim 6 depends from claim 1 and recites “wherein communication
over the LAN is based on IEEE8-02.3 standard; said LAN connector is a RJ-
45 type connector; and said LAN transceiver is an Ethernet transceiver.”
Appeal Br., Claims App’x 64.
The Examiner finds Bell ’785 discloses connection and
communication over a local network, but does not explicitly teach the
limitations recited in claim 6, and, therefore, relies on Fong to teach those
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limitations. Ans. 23 (citing Fong ¶ 26). The Examiner finds “all the
claimed elements were known in the prior art and one skilled in the art could
have combined the elements as claimed by known methods with no change
in their respective functions, and the combination yields nothing more than
predictable results to one of ordinary skill in the art.” Id. Specifically, the
Examiner finds that “[it] would have been obvious to one of ordinary skill in
the art to implement an Ethernet connector (i.e. RJ-45 type) and Ethernet
transceiver, as taught by Fong, for performing the LAN communication
disclosed in Bell ’785, the combination yielding nothing more than
predictable results.” Id. at 22.
Appellant argues Bell ’785 does not disclose a “LAN.” Reply Br. 13.
Appellant also argues that the Examiner fails to explain why the
combination yields nothing more than predictable results. Id.
Appellant’s arguments are not persuasive. First, as discussed above
with respect to claim 1, we agree with the Examiner that Bell ’785 discloses
a LAN. Second, we find the Examiner has provided sufficient rationale to
combine the references pursuant to the guidelines in KSR, and Appellant has
not persuasively rebutted the Examiner’s findings or reasoning.
Accordingly, we sustain the Examiner’s rejection of claim 6 under 35
U.S.C. § 103.
Claims 7–8
Claim 7 depends from claim 1 and recites “wherein said display
comprises a flat screen that is based on Liquid Crystal Display (LCD)
technology.” Appeal Br., Claims App’x 64. Claim 8 also depends from
claim 1 and recites “wherein said display is an analog video display.” Id.
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The Examiner finds that Bell ’785 discloses a video display, but does
not explicitly teach an LCD display or analog display, so relies on Fong to
teach those limitations. Ans. 24 (citing Bell ’785 ¶¶ 26, 48; Fong ¶ 35). The
Examiner finds “it would have been obvious to one of ordinary skill in the
art to implement any of the display types taught by Fong within the digital
picture frame device of Bell ’785, the combination yielding nothing more
than predictable results to one of ordinary skill in the art.” Id.
Appellant argues that Fong is silent as to “video” functionality, and is
directed to displaying images only. Appeal Br. 57. Appellant also argues
that the Examiner’s reliance on paragraph 35 of Fong is to an external
display, whereas Bell ’785 teaches a display that is an integral part of the
device. Id. Appellant also argues that Bell ’785 is directed to simple and
reduced resources, so adding hardware renders the device described by Bell
’785 improper for its intended use. Id. at 57–58. Appellant also argues that
the Examiner fails to explain why the combination yields nothing more than
predictable results. Reply Br. 13.
There is no dispute that Fong teaches an LCD display and an analog
display. Fong ¶ 35. We do not find any of Appellant’s arguments
persuasive. The limitations in claims 7 and 8 merely recite a specific type of
display that is clearly taught in Fong, and we agree with the Examiner that it
would have been obvious for a person of ordinary skill in the art
implementing the display in Bell ’785 to have chosen one of display types in
Fong. We, therefore, find the Examiner has sufficiently shown that the
combination of references teaches the recited limitations. Moreover, we find
the Examiner has provided sufficient rationale to combine the references
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pursuant to the guidelines in KSR, and Appellant has not persuasively
rebutted the Examiner’s reasoning or rationale.
Accordingly, we sustain the Examiner’s rejections of claims 7 and 8
under 35 U.S.C. § 103.
Claims 38–42
Claim 38 depends from claim 35 and further recites
an AC power plug connectable to an AC power source;
and
a power supply connected to said AC power plug to be
powered by power supplied by the AC power source and to
produce DC power for DC powering said first memory and said
video display,
wherein said second connector is further coupled to said
power supply for supplying DC power to the unit via said
second connector.
Appeal Br., Claims App’x 68. Claims 39–42 depend from claims 35, 38, 40,
and 41. Id.
The Examiner relies on Curtiss to teach the additional limitations in
claims 38–42. Final Act. 15–16. The Examiner finds it would have been
obvious to incorporate a docking station, AC power plug, and cellular
telephone, as taught by Curtiss with the disclosure of Bell ’785 “in order to
provide enhanced mobility and convenience.” Final Act. 15–16 (citing
Curtiss, col. 3:39–62); see also Ans. 24–25. The Examiner also finds that
such a modification would have yielded predictable results to one of
ordinary skill in the art in that one of ordinary skill in the art would have
reasonably expected that adding the docking station and cellular telephone
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configuration of Curtiss to the device in Bell ’785 would have resulted in
access to a wireless communication network, “while benefitting from the
convenience and mobility of . . . the cellular telephone.” Ans. 25 (citing
Curtiss, col. 3:53–56).
Appellant argues the Examiner’s rationale for combining “is based on
INTERNAL components of the device, while the claims clearly disclose
EXTERNAL connected unit.” Appeal Br. 58. Appellant also argues that it
is not clear how or why modifying Bell ’785 in the manner proposed by the
Examiner would result in “enhanced mobility or convenience.” Id. Rather,
Appellant argues that adding additional hardware in fact provides reduced
mobility and less convenience. Id. Appellant also argues that the
modification changes Bell ’785’s principle of operation and renders Bell
’785 improper for its intended purpose. Id. at 58–59. Appellant also argues
that the Examiner fails to explain why the combination yields nothing more
than predictable results. Reply Br. 13.
Appellant’s arguments are not persuasive. Rather, we agree with the
Examiner’s findings and conclusions. Final Act. 15–16; Ans. 24–25. We
further find the Examiner has provided sufficient rationale to combine the
references pursuant to the guidelines in KSR. It is correct that a person of
ordinary skill in the art ordinarily has little reason to make a modification
that renders the prior art unsatisfactory or inoperable for its intended
purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). However,
merely showing that the result of the modification involves tradeoffs
between competing goals is not sufficient for a modification to be
unsatisfactory or inoperable for its intended purpose. In re Gurley, 27 F.3d
551, 554 (Fed. Cir. 1994); see In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
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2012) (“[J]ust because better alternatives exist in the prior art does not mean
that an inferior combination is inapt for obviousness purposes.”); Fulton,
391 F.3d at 1200 (“[O]ur case law does not require that a particular
combination must be the preferred, or the most desirable, combination
described in the prior art in order to provide motivation for the current
invention.”). We disagree with Appellant that the Examiner’s modification
changes Bell ’785’s principle of operation or renders the reference improper
for its intended purpose.
Accordingly, we sustain the Examiner’s rejections of claims 38–42
under 35 U.S.C. § 103.
Claims 43–44
Claim 43 depends from claim 1 and recites “wherein said device is
further operative as a clock for maintaining and displaying the current hour,
minute and second.” Appeal Br., Claims App’x 68. Claim 44 depends from
claim 43 and recites “wherein said device is further operative to display the
current year, the current month and the current day of the month.” Id.
The Examiner relies on Yamada to teach the limitations in claims 43
and 44. Final Act. 16 (citing Yamada Fig. 8, showing date and time). The
Examiner “takes Official Notice that it was well known at the time of the
invention to display time up to the second. It would have been obvious to
one of ordinary skill in the art to incorporate” Yamada’s features into Bell
’785 “to inform the user of the current date and time.” Final Act. 16.
Appellant argues Yamada “is directed to a navigation system to be
used in a vehicle while travelling,” while “the claim explicitly recite[s] a
tethered (LAN) connection to a network via a connector to a cable,” and Bell
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’785 “expressly shows a stationary desktop computer.” Appeal Br. 59–60.9
Appellant argues that “the references are directed towards respectively
different fields and purposes, and are based on respectively different
structures, and thus are not analogous to one another and cannot logically be
combined.” Id. at 60. Appellant argues that Yamada is not analogous art
because the field of the claims is defined as “device for obtaining, storing,
and displaying digital video.” Id. at 60–61. Appellant also argues that the
Examiner’s rationale provides no link to the application and is conclusory.
Id. at 60.
Appellant’s arguments are not persuasive. A reference is analogous
art to the claimed invention if: (1) the reference is from the same field of
endeavor as the claimed invention (even if it addresses a different problem);
or (2) the reference is reasonably pertinent to the problem faced by the
inventor (even if it is not in the same field of endeavor as the claimed
invention.) In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
Appellant’s invention is generally described as “a method, device, and
system for obtaining information from a remote location to an information
device.” Spec. 1. Appellant’s “information device” is described as
comprising “a communication unit for connecting to a remote location, an
info memory for storing the information obtained and a display unit for
displaying the stored obtained information.” Spec. 2:4–6.

9 Appellant captions this argument as “Teaching away”; however, Appellant
merely summarizes contentions as to what Yamada is directed to, what the
claim recites, and what Bell ’785 expressly shows, so Appellant’s teaching
away argument is unclear. Appellant has not addressed where the references
criticize, discredit, or otherwise discourage the Examiner’s proposed
modification with Yamada.
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Yamada is generally directed to “an information display system for
displaying a map.” Yamada Abstract; ¶ 2. Yamada generally describes
storing and displaying information, based on input by a user. E.g., Yamada
claim 1; Abstract; ¶ 11. Yamada teaches that its information terminal 12
may be of any apparatus, such as a stationary telephone, a personal
computer, or a digital television and connected to a wired network. Yamada
¶¶ 43, 45; see Ans. 25. Yamada’s information terminal is also connected to
an information providing server via a network. Yamada ¶ 45.
We agree with the Examiner that Yamada is analogous art. Ans. 25.
Both Appellant’s claimed invention and Yamada are directed to retrieving,
storing, and displaying information on a device connected to a network. We
also find the Examiner has provided sufficient rationale to combine the
references pursuant to the guidelines in KSR. Appellant’s arguments do not
persuasively address the Examiner’s rationale.
Accordingly, we sustain the Examiner’s rejections of claims 43 and
44 under 35 U.S.C. § 103.
Remaining Claims
Appellant does not separately argue the remaining 35 U.S.C. § 103(a)
rejections of dependent claims 9–13 and 15–31. See generally Appeal Br.
Each of these claims depend from a claim addressed above. Accordingly,
we sustain the Examiner’s 35 U.S.C. § 103(a) rejections of claims 9–13 and
15–31 for the reasons set forth above.

CONCLUSION
In summary:
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–45 112 Written
Description
1–45
1–4, 10,
13, 15–
37
102(e) Bell ’785 1–3, 10,
13, 15–
25, 28–
37
4, 26, 27
5–8, 45 103(a) Bell ’785, Fong 5–8, 45
9, 11, 12 103(a) Bell ’785, Bell
’712
9, 11, 12
38–42 103(a) Bell ’785, Curtiss 38–42
43, 44 103(a) Bell ’785, Yamada 43, 44
Overall
Outcome
1–45

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED