Shojirou Kido

Patent Trials and Appeals Board

Oct 8, 2019

14829693 - (D) (P.T.A.B. Oct. 8, 2019)

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.
14/829,693 08/19/2015 Shojirou KIDO NIIPP0143US 5564
51921 7590 10/08/2019
MARK D. SARALINO (PAN)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
LIU, LI
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
10/08/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOJIROU KIDO
Appeal 2018-009077
Application 14/829,693
Technology Center 2600
BEFORE CAROLYN D. THOMAS, ADAM J. PYONIN, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 6, and 11. Claim 4 is canceled;
claims 7–10 are withdrawn. See App. Br. 18–20 (Claims Appendix). 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(a). Appellant identifies the real party in interest as Panasonic
Intellectual Property Management Co., Ltd. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a visible light communication device. See
Spec., Abstract. Claim 1, reproduced below, is illustrative of the claimed
subject matter (emphasis added):
1. A visible light communication device comprising:
a light source unit configured to emit visible light for
visible light communication; and
a control circuit that generates an original signal of the
visible light to be emitted by the light source unit, wherein the
control circuit generates the original signal that includes a
payload part, a Cyclic Redundancy Check (CRC) part, and a
recognition part, the payload part including identification
information identifying the visible light communication device,
the CRC part being determined according to data indicated in
the payload part, and the recognition part being arranged
immediately subsequent to the CRC part, and in the recognition
part, a time-series pattern including a bright state where the
light source emits the visible light and a dark state where the
light source does not emit the visible light has2 a pattern not
complying with Inverted 4-ary Pulse Position Modulation (l-
4PPM) coding rule of CP-1223 standard.
REJECTIONS
Claims 1–3, 5, 6, and 11 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. Final Act. 8.
Claims 1–3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Murayama (US 2013/0343762 A1, Dec. 26, 2013) and
Balasubramanian (US 5,557,634, Sept. 17, 1996). Id. at 9.

2 This phrase appears to be missing a word such as “and” before the word
“has.”
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Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Murayama, Balasubramanian, and Knapp (US 2013/0183042 A1, July
18, 2013). Id. at 12.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Murayama, Balasubramanian, and Ryan (US 2015/0147067 A1, May
28, 2015). Id. at 13.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Murayama, Balasubramanian, and Knapp.3 Id. at 14.
Claims 1–3 also stand rejected under 35 U.S.C. § 103 as being
unpatentable over Murayama, Freitas, and Hermann (US 2008/0231434 A1,
Sept. 25, 2008). Id. at 17.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Murayama, Freitas, Hermann, and Ryan (US 2015/0147067 A1, May
28, 2015). Id. at 21.
Claims 5 and 114 also stand rejected under 35 U.S.C. § 103 as being
unpatentable over Murayama, Freitas, Hermann, and Knapp. Id. at 20–22.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

3 The Final Action states that claim 11 is rejected under Murayama,
Balasubramanian, and Ryan but applies Knapp instead of Ryan. Final Act.
16.
4 The Final Action also states that claim 11 is rejected under Murayama,
Freitas, Hermann, and Ryan but applies Knapp instead of Ryan. Final Act.
25.
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ANALYSIS
Rejections under § 112
The Examiner rejects claims 1 and 11, finding the phrase “the
recognition part . . . has a pattern not complying with Inverted 4-ary Pulse
Position Modulation (I-4PMM) coding rule of CP-1223 standard” lacks
written description support in the original disclosure. Final Act. 8–9. The
Examiner finds, “according to the original disclosure, the recognition part
has a pattern [that] does not comply with 4PPM coding rule of CP-1223
standard. The original disclosure does not state that the recognition part has
a pattern not complying with Inverted 4-ary Pulse Position Modulation (I-
4PPM) coding rule of CP-1223 standard.” Id.
The originally filed Specification discloses a “preamble has a pattern
that cannot be generated by coding according to 4-ary Pulse Position
Modulation (4PPM) coding rule, in other words, a pattern not complying
with 4PPM coding rule.” Spec. 9:24–10:2. During prosecution, Appellant
amended the Specification to read, “the preamble has a pattern that cannot
be generated by coding according to Inverted 4-ary Pulse Position
Modulation (4 PPM) (I-4PPM) coding rule, in other words, a pattern not
complying with 4PPM I-4PPM coding rule.” February 10, 2017 Amdt.
(“Amdt.”), 2.5
On appeal, Appellant argues its amendment was to correct an
“obvious error.” App. Br. 5. Appellant relies on In re Oda, asserting “[a]n
amendment to correct an obvious error does not constitute new matter where
one skilled in the art would not only recognize the existence of the error in

5 Appellant similarly amended other portions of the Specification. Amdt. 2–
3.
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the specification but also recognize the appropriate correction.” Id. (citing
In re Oda, 443 F.2d 1200 (CCPA 1971); MPEP § 2163.07). According to
Appellant, the original disclosure of 4PPM, rather than I-4PPM, was
obvious error because “the coding rule of CP-1223 standard is not 4-ary
Pulse Position Modulation, as that sentence stated, but Inverted 4-ary Pulse
Position Modulation (I-4PPM).” App. Br. 5. Appellant reproduces a page
purportedly from the CP-1223 standard (in Japanese) and asserts the
following:
The English translation of section 5.3 is as follows:
5.3 Transmission method
As a coding method of modulating the intensity of visible
light which is a carrier wave, logically inverted 4-ary Pulse
Position Modulation (4PPM) is used. Such a modulation
method is called I-4PPM (Inverted 4PPM).

Id. at 6–7 (citing http://www.jeita.or.jp/japanese/standard/book/CP-
1223/#page=7). Appellant concludes that in light of this translation, “[o]ne
skilled in the art would not only recognize the existence of this error in the
specification but also recognize the appropriate correction.” Id. at 7.
Appellant also contests the Final Action’s characterization of the
Specification’s Figure 5 as “clearly an Inverted-4PPM.” Id. at 8 (citing
Final Act. 3–6). Appellant asserts that CP-1223 defines I-4PPM in a certain
way and asserts that the pattern shown in Figure 5 is not compliant with I-
4PPM. Id. at 8–9.
In the Answer, the Examiner finds, “[t]he CP-1223 standard does not
state that all fields are in I-4PPM, some fields are in 4PPM.” Ans. 22 (citing
JEITA CP-1223 Visible Light Beacon System, 6). “That is,” the Examiner
finds, “according to CP-1223, some fields [are] complying with 4PPM and
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some fields are according to . . . I-4PPM.” Id. Appellant does not dispute
this finding, as Appellant did not file a Reply Brief. Further, the Examiner
also finds, and Appellants do not dispute, that the foreign application (JP
2014-183714) upon which Appellant relies for priority “also clear[ly] states
that the preamble and A1 field are not complying with 4PPM coding rule.”
Id.
At the outset, we agree with Appellant that an amendment to correct
an obvious error does not constitute new matter where one skilled in the art
would not only recognize the existence of the error in the specification, but
also recognize the appropriate correction. See Oda, 443 F.2d at 1205–1206.
Where we disagree with Appellant is in the application of Oda to the present
case. In Oda, the appellant produced an affidavit from a qualified chemist
showing that the passage at issue in the written description was “obviously
in error.” Id. Based on this evidence, the court concluded that one of
ordinary skill in the art would have “appreciate[d] not only the existence of
error in the specification but what the error is.” Id. at 1206. The court also
found there was “adequate evidence in the record to show that the error . . .
was a translation error” from an earlier-filed application, based on a reissue
oath and affidavit. Id.
Unlike Oda, Appellant here presents no affidavit or declaration
evidence to support its assertions. Instead, Appellant reproduces a page in
Japanese, allegedly from the CP-1223 standard, provides an alleged
translation without evidentiary support (such as a declaration attesting to its
authenticity), and asserts that Figure 5 of the Specification is not compliant
with I-4PPM, again without evidentiary support. Attorney argument is not
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). And
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counsel’s argument “cannot take the place of evidence lacking in the
record.” Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997). Moreover, in view of the Examiner’s undisputed finding that CP-
1223 also refers to 4PPM (Ans. 22), one of ordinary skill in the art would
not have appreciated that there was an obvious error in the Specification and
claims and that the Specification and claim amendments were the
appropriate corrections. See Oda, 443 F.2d at 1206.
We, therefore, sustain the Examiner’s § 112 rejection of claims 1–3,
5, 6 and 11.

Rejections under § 103
The Examiner rejected independent claim 1 under two separate
combinations: (1) Murayama and Balasubramanian and (2) Murayama,
Freitas, and Hermann.6 Final Act. 9, 17. We address each in turn.
I. Rejection over Murayama and Balasubramanian
Appellant contends Murayama and Balasubramanian fail to teach or
suggest claim 1’s “in the recognition part, a time-series pattern including a
bright state where the light source emits the visible light and a dark state
where the light source does not emit the visible light.” App. Br. 10–11
(emphasis omitted). Initially, Appellant argues “the CF [closing flag]
disclosed by Balasubramanian is a bit sequence ‘01111110’ [that] complies

6 We note, “the examiner should . . . avoid an unnecessary number of
rejections over similar references. The examiner is not called upon to cite
all references that may be available, but only the ‘best.’ . . . Multiplying
references, any one of which is as good as, but no better than, the others,
adds to the burden and cost of prosecution and should therefore be avoided.”
MPEP § 904.03.
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with Inverted 4-ary Pulse Position Modulation coding rule because in each
of the first four bits ‘0111’ and the next four bits ‘1110,’ only one of the four
consecutive bits is 0.” Id. at 10.
The Examiner finds, “[t]he modulation schemes used by
Balasubramanian are: ASK, NRZI etc., but not the 4PPM. And more,
Balasubramanian does not state that the ‘0111’ is used to encode two
message bits (e.g., ‘00’ etc.).” Ans. 23. The Examiner finds that
Balasubramanian’s bit sequence “is based on IBM’s SDLC protocol,” not “a
PPM or I-PPM coding rule.” Id. Appellant does not challenge this finding,
as Appellant did not file a Reply Brief. Arguments not made are waived.
Accordingly, we do not find error in the Examiner’s reasonable findings
regarding Balasubramanian’s CF not complying with 4PPM or I-4PPM.
Further, Appellant contends Balasubramanian discloses an “infrared
(IR) data link, not the bright and dark states of visible light of claim 1.”
App. Br. 11. Appellant also contends Murayama discloses
superimposition of data on spatial light through modulation of a
carrier wave, again, not the bright and dark states of visible
light of claim 1[.] In fact, Murayama is explicit [i]n paragraph
58 that “the PPM circuit is to irradiate visible light having
constant luminance, irrespective of the data to be transmitted.”

Id.
The Examiner finds with respect to Balasubramanian, “[a]n IR light
source can have a bright state when it emits light although a human eye does
not see it, and a dark state when it does not emit light.” Ans. 24. With
respect to Murayama, the Examiner finds, “Murayama clearly discloses a
visible light communications.” Id. at 25. According to the Examiner, “[t]he
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combination of Murayama and Balasubramanian reads on the claimed
limitations.” Id. at 24.
We agree with the Examiner. Appellant’s arguments attacking
Murayama and Balasubramanian in isolation do not persuasively challenge
the underlying factual findings made by the Examiner, which are based upon
the combined teachings and suggestions of the cited references. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant next attacks the rationale to combine Murayama and
Balasubramanian. App. Br. 12. Appellant asserts, “it is not clear why the
system of Murayama, unmodified, would have a problem with recognizing
the end of the frame or recognizing the CRC.” Id. Appellant further asserts,
“[t]he system of Murayama as disclosed seems perfectly capable of
recognizing the end of the frame or recognizing the CRC as most
transmission systems in the art do.” Id.
The Examiner finds, and we agree, “Murayama discloses a CRC near
the end of the frame, but a receiver needs to know the length of CRC. A
close flag (CF) can clearly indicate the end of the CRC and the end of a
frame.” Ans. 27. The Examiner further finds, “[w]hen the receiver detects
the CF, the CRC can be conveniently recognized and the length of the CRC
can be determined, and also the frame length can be determined.” Id.
Appellant’s argument that Murayama “seems perfectly capable of
recognizing the end of the frame” is conclusory and, in any event,
unpersuasively addresses the Examiner’s contention that Balasubramanian’s
closing flag “can clearly indicate the end of the CRC.” See id.; App. Br. 12.
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Accordingly, we sustain the Examiner’s rejection of claim 1 in view
of Murayama and Balasubramanian.
II. Rejection over Murayama, Freitas, and Hermann
Appellant also contends Murayama, Freitas, and Hermann fail to
teach or suggest the same limitation of claim 1 discussed above. App. Br.
12–13. For example, as with Balasubramanian, Appellant asserts Freitas
“discloses an infrared (IR) data link,” not the “bright and dark states of
visible light of claim 1.” Id. at 13. But, as before, the Examiner relies on
Murayama for “clearly disclos[ing] a visible light communications.” Ans.
28. The Examiner relies on Freitas for disclosing that “[a]n IR light source
can ha[ve] a bright state when it emits light although a human eye does not
see it, and a dark state when it does not emit light.” Id. Specifically, Freitas
discloses an “infrared (IR) data link” using “on-off pulsing,” where
“modulation is preferably on-off.” Freitas, 4:7–8, 5:25, 37. Appellant’s
arguments attacking the references individually are again unpersuasive.
Appellant also argues against the Examiner’s finding of design choice
with respect to Freitas. App. Br. 13–14. In the Final Action, the Examiner
finds, “although Freitas et al[.] doesn't specifically disclose the time-series
pattern of the trailer part can have a pattern not complying [with] I-4PPM
coding rule of CP-1223 standard, such limitation are merely a matter of
design choice and would have been obvious in the system of Murayama and
Freitas.” Final Act. 18. Appellant contends the Examiner “provides nothing
more than conclusory statements.” App. Br. 14. Further, Appellant
contends,
as in Zimmer and In re Gal, the structure of the recognition part
of claim 1 (“a time-series pattern . . .”) and the function it
performs (allowing the recognition part to be easily
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recognizable from the other fields in the original signal) . . . are
different from the prior art.

Id. at 14–15 (citing Spec. 11:21–12:18; Zimmer, Inc v. Bonutti Skeletal
Innovations, LLC, IPR2014-01078; In re Gal, 980 F.2d 717, 719 (Fed. Cir.
1992)).
Although Appellant’s design choice argument may have merit, the
Examiner additionally finds that Hermann discloses “a frame can have a
recognition part . . . which may have 7 bits (EOF) or 9 bits (ACK+EOF),
which is not complying with [I-4PPM].” Ans. 29; see also Final Act. 19.
Appellant’s only argument against Hermann contends that Hermann
“appears to disclose nothing regarding a ‘bright state . . . and a dark state.”
App. Br. 15. Thus, regardless of whether Appellant’s design choice
argument has merit, Appellant ignores the Examiner’s reliance on Hermann
for the same limitation (non-compliance with I-4PPM). Accordingly,
Appellant’s argument attacking the references individually is unpersuasive.
Finally, Appellant contends one of ordinary skill in the art would not
have combined Murayama, Freitas, and Hermann. App. Br. 16. But as
above, Appellant makes the conclusory argument that “[t]he system of
Murayama as disclosed seems perfectly capable of recognizing the end of
the frame or recognizing the CRC as most transmission systems in the art
do.” Id. The Examiner finds, Freitas’s “trailer field . . . is normally used to
indicate the starting or ending position of a frame. By using the trailer field
or ‘delimiter,’ the CRC can be easily recognized.” Ans. 29. Thus, for
similar reasons as those set forth above under the Murayama-
Balasubramanian combination, Appellant’s argument is unpersuasive.
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Thus, we sustain the Examiner’s rejection of claim 1 in view of
Murayama, Freitas, and Hermann.
Accordingly, we sustain the Examiner’s obviousness rejections of
claim 1. Appellant’s arguments regarding the rejection of independent claim
11 rely on the same arguments as for claim 1, and Appellant does not argue
separate patentability for the dependent claims. See App. Br. 11, 16. We
therefore also sustain the Examiner’s rejection of claims 2–3, 5, 6, and 11.
See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 5, 6,
11
112 Written Description 1–3, 5, 6,
11

1–3 103 Murayama,
Balasubramanian
1–3
5 103 Murayama,
Balasubramanian,
Knapp
5
6 103 Murayama,
Balasubramanian, Ryan
6
11 103 Murayama,
Balasubramanian,
Knapp
11
1–3 103 Murayama, Freitas,
Hermann
1–3
6 103 Murayama, Freitas,
Hermann, and Ryan
6
5, 11 103 Murayama, Freitas,
Hermann, Knapp
5, 11
Overall
Outcome
1–3, 5, 6,
11

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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