Ex Parte 7679573 et al

Patent Trial and Appeal Board

Nov 27, 2012

95000560 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,560 07/19/2010 7679573 5003.19REX02 2733
87197 7590 11/27/2012
Skaar Ulbrich Macari, P.A.
601 Carlson Parkway
Suite 1050
Minneapolis, MN 55305
EXAMINER
TON, MY TRANG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/27/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEALS
BOARD
____________

ELECTRONIC CONTROLLED SYSTEMS d/b/a KING CONTROLS
Patent Owner, Appellant

v.

WINEGARD CO.
Requester, Respondent
____________

Appeal 2012-009011
Inter Partes Reexamination Control No. 95/000,560
United States Patent 7,679,573 B2
Technology Center 3900
____________

Before KARL D. EASTHOM, MICHAEL W. KIM, and THOMAS L.
GIANNETTI, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-009011
Reexamination Control No. 95/000,560
Patent 7,679,573 B2

2

This proceeding arose out of a request by Requester, Respondent
Winegard, for inter partes reexamination of U.S. patent 7,679,573 B2,
Enclosed Mobile/Transportable Motorized Antenna System (March 16,
2010).
Appellant, Patent Owner King Controls, appeals from the Examiner’s
decision in the Right of Appeal Notice (RAN) to reject claims 1-5, 8-17 and
19-25. The Examiner’s Answer relies on the RAN, incorporating it by
reference.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM.

STATEMENT OF THE CASE
The briefs refer to a District Court jury trial and to a related
inter partes reexamination (95/000,559) involving US 7,595,764 also
assigned to King Controls. The jury found claim 9 of the ‘573 patent invalid
as obvious. (See Resp. Br. 2.) An oral hearing of this appeal and an
appeal (PTAB 2012-008614) of the related ‘764 patent transpired on
September 15, 2012 before the Board. The two appeal decisions have
common issues and each incorporates and adopts by reference the other.
Appellant appeals the Examiner’s rejections of claims 1-5, 9, 11, 19,
20 and 22-25 as obvious based on King,
1
TCS,
2
and SkyTerra
3
; claims 8 and

1
U.S. 6,710,749 (March 23, 2004). (See RAN 4 n.1 (noting that citations to
a related King patent is in error).)
2
Model 600 Transportable Antenna System, TCS Telemetry &
Communications Systems, Inc. (April, 2001) (product brochure).
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21 as obvious based on King, TCS, SkyTerra, and Anderson
4
; claims 10, 12
and 14-17 as obvious based on King and TCS; and claim 13 based on King,
TCS, and Anderson.
Appellant also appeals the Examiner’s rejection of the claims as
obvious based on the combination of TracStar
5
and one or more other
references. (See RAN 8-9.) The record shows that the TracStar based
rejections are largely cumulative to the King based rejections listed supra.
As such, we decline to reach the TracStar based rejections. Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching obviousness after
finding anticipation).
Exemplary claims at issue follow:
1. A motorized antenna system, comprising: a generally rigid enclosure
having a cover and a base, the cover comprised of an electromagnetic wave
permeable material, wherein the cover and base define an enclosed a
volume, the enclosure configured to enable both manual transportability of
the motorized antenna system and automated operation of the motorized
antenna system without a substantial change in the volume of the enclosure
or repositioning of the cover or base, the enclosure having disposed within
the enclosed volume of the enclosure: an antenna; a motorized drive system
configured to selectively adjust a position of the antenna; and a control
system connected to the motorized drive system to control automated
operation of the motorized antenna system, wherein the motorized antenna
system weighs less than 15 pounds.
2. The motorized antenna system of claim 1, further comprising a handle
connected to an outer surface of the enclosure.

3
SkyTerra MSAT
GT
Mobile Satellite Radio User Guide, MCN: 3004073-001
rev. B (2005). Attached to the reference is a document titled Mobile
Satellite Ventures MSAT
GT
Mobile Satellite Radio Installation Guide.
4
U.S. 5,117,240 (May 26, 1992).
5
TracStar Systems SV360 Installation & Operations Manual (2005).
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3. The motorized antenna system of claim 1, further comprising one or more
feet protruding generally downwardly from the enclosure.
4. The motorized antenna system of claim 3, wherein a notch is defined in a
side of the feet.
5. The motorized antenna system of claim 1, further comprising an anti-theft
mechanism disposed in the enclosure.
9. The motorized antenna system of claim 1, wherein the control system
operates to automatically position the antenna to acquire a signal upon
powering on the motorized antenna system.
10. A motorized antenna system, comprising: a generally rigid enclosure
having a cover and a base, the cover comprised of an electromagnetic wave
permeable material, the enclosure defining a volume and configured to
enable both manual transportability of the motorized antenna system and
automated operation of the motorized antenna system without a
substantial change in the volume of the enclosure or repositioning of the
cover or base, the enclosure configured for positioning in a first orientation
for automated operation and in a second orientation for manual transport, the
enclosure having disposed within the volume of the enclosure an antenna
and a motorized drive system configured to selectively adjust a
position of the antenna.
19. A motorized antenna system, comprising: a generally rigid enclosure
defining a volume and configured to enable both manual transportability of
the motorized antenna system and automated operation of the motorized
antenna system without a change in the volume of the enclosure or
deployment of the motorized antenna system, the enclosure having disposed
within the volume of the enclosure an antenna and a motorized drive system
configured to selectively adjust a position of the antenna, wherein the
motorized antenna system weighs less than 20 pounds.
22. The motorized antenna system of claim 19, wherein control of the
position of the antenna is controlled automatically by interaction with a
receiver.
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23. The motorized antenna system of claim 19 further comprising one or
more feet protruding generally downwardly from the enclosure.
24. The motorized antenna system of claim 23, wherein the feet are
configured to attach the motorized antenna system to a mounting bracket.
ANALYSIS
The ‘573 patent discloses and claims a portable satellite antenna
system which can be carried by hand and which automatically searches for a
satellite during operation. (See ‘573 patent, Abstract, Fig. 1.) Various
embodiments can acquire Ku-band signals, and “[i]n other embodiments . . .
various other satellite signals, such as, for example, Ka-based signals.” (Id.
at col. 7, l. 30, ll. 39-43.) The Figure 1 embodiment includes a handle for
carrying the system.

Claims 1, 2, 10-12, 19, 20, and 25
The appeal involves the related issues of whether it would have been
obvious to modify the King antenna system to render it portable as claim 10
requires, to render its weight to be less than 15 pounds as claims 1, 11, and
25 require or 20 pounds as claim 19 requires, and to include a handle as
claims 2, 12, and 20 require. The Examiner’s findings and Requester’s
contentions support the conclusion of obviousness.
King does not disclose the weight of antenna satellite system 42 or
whether it is manually transportable, but it mounts on the roof of vehicle 20.
(See King Figure 1). King’s vehicles include “a van, recreational vehicle,
motor home, travel trailer, pick-up camper, tent trailer, house boat, motor
boat, sail boat, truck or ship that moves from place to place having a satellite
TV system.” (King, col. 3, ll. 27-30.)
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The TCS brochure discloses an antenna system weighing 29 pounds
and having two handles for portability. (TCS 1-2.) Appellant argues that
the TCS brochure is not a prior art printed publication. (See App. Br. 11-
15.) The Examiner and Requestor persuasively show otherwise.
6

The Board’s companion decision mentioned supra (PTAB 2012-
008614) addresses this issue more fully (and is incorporated and adopted
herein by reference as noted at the outset). In sum, the TCS product
brochure shows a publication date of April 2001 and a copyright date of
2001. As the companion ‘8614 PTAB decision finds, Mr. Mateescu’s
declaration and deposition corroborate the brochure’s publication and show
that it describes products for sale in 2001. Mr. Mateescu testifies that the
brochures were accessible at a trade-show and were placed on-line prior to
the invention. Such evidence is at least sufficient to shift the burden to
Appellant to show otherwise.
The TCS product brochure shows a similar antenna system to that
disclosed here and, as indicated, it weighs 29 pounds and includes a handle
for portability. (TCS 1-2.) The TCS system also is described as
“transportable” and “quickly deployable.” (TCS 1.) In light of the
collective teachings and universal desire for lighter, portable products,
skilled artisans would have been motivated to modify the King system to

6
Appellant characterizes Requesters’ “Wayback Machine” evidence, inter
alia, as irrelevant to showing the prior art status of TCS. (See App. Br. 12-
15.) But that evidence is not required to support the finding that TCS is
prior art, and it at least corroborates the existence of TCS on the internet and
otherwise prior to the invention. (See, e.g., RAN 2-3 in the related ‘8614
appeal (listing dates in a table and relying inter alia on findings in the
Action Closing Prosecution “ACP,” Burke Decl., and Mateescu Decl.).)
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employ a handle and create a lighter system for the purpose of creating a
more portable system as claims 1, 2, 10-12, 19, 20, and 25 require. Further
motivation and other issues (i.e., analogous art) regarding the proposed
King/TCS combination are addressed further in the companion ‘8614 PTAB
decision and that discussion and factual findings are also adopted and
incorporated herein.
Appellant argues that skilled artisans would not have been enabled to
modify King to obtain the claimed weight. (See App. Br. 16-17 (citing
Baylin Decl. at ¶¶ 6-13) (discussed further below).) Appellant does not
direct attention to portions in the ‘573 patent showing how the inventors
obtained the claimed weight of “less than 15 [or 20] pounds.”
7
The absence
of such a showing indicates that skilled artisans do not need that showing –
i.e., they would have been able to obtain the claimed weight. Cf. In re
Paulsen, 30 F.3d 1475, 1481 n.9 (Fed. Cir. 1994) (“We also note that under
the enablement standard that AST would have us apply to Yokoyama, the
‘456 patent itself would be non-enabling.”) The record, including the
limited disclosure of how to make light-weight antenna systems and the
TCS 29 pound system, suggests a reasonable likelihood of success in
making the combined King/TCS system less than 15 or 20 pounds.
“Obviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.” In re Kubin, 561 F.3d

7
One inventor testifies to an actual reduction to practice of 10.5 pounds
prior to September 23, 2006 and notes that the VuQube operating manual
(which forms part of the underlying provisional application for the
‘573 patent as an appendage) shows the same weight. (See Second Shuster
Dec. ¶ 10.) But Appellant does not direct attention as to how that weight is
enabled.
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1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903-04
(Fed. Cir. 1988)).
Appellant similarly alleges “undue experimentation” in obtaining
portability or the claimed weights. (See App. Br. 16.) But Appellant fails to
address the factors required to show lack of enablement, such as the level of
skill involved, the amount of direction or guidance presented, the presence
or absence of working examples, the quantity of experimentation necessary,
the predictability or unpredictability of the art, and the breadth of the claims,
etc. See Elan Pharm., Inc. v. Mayo Found. For Med. Educ. & Research, 346
F.3d 1051, 1054-56 (Fed. Cir. 2003). At the PTAB oral hearing, Appellant’s
counsel explained that making the described antenna products involved
scaling the housing, eliminating one or more of the connectors, and
rearranging the location of one of the parts – e.g., the low noise block. (See
PTAB Tr. 30.) But Appellant fails to explain why any of that involves
undue experimentation or extraordinary skill, or redounds to more than a
predictable variation – i.e., a lighter system.
The ‘573 patent further rebuts Appellant’s enablement argument by
admitting that some prior art satellite antenna systems had “handles to allow
the systems to be carried to new locations.” (Col. 1, ll. 50-52.) According
to the ‘573 patent, such systems “typically fold into a suitcase-like
configuration for transportation.” (Col. 1, ll. 52-53.) The ‘573 patent also
describes known vehicular-mounted systems as “cumbersome” and as
difficult to install. “The geometry of such systems [also] makes them
difficult and awkward to transport from place to place.” (Col. 1, ll. 48-50.)
Common sense indicates that ordinarily skilled artisans would have
been able to reduce the weight of known parts by simply using lighter
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component parts or eliminating unneeded parts. Appellant’s enablement
“argument . . . fails to recognize that prior art references must be
‘considered together with the knowledge of one of ordinary skill in the
pertinent art.’” Paulsen, 30 F.3d at 1480 (citation omitted).
Also, claims 1, 11, 19, and 25 cover systems ranging down to less
than one pound, but the ‘573 patent does not show how to make a five pound
antenna, let alone a one pound antenna. Therefore, the ‘573 patent indicates
that not much guidance would have been needed to create lighter antenna
systems and even to scale known systems down by a factor of five or ten
(e.g., from 10 pounds to 1 pound). Assuming arguendo enablement in the
‘573 patent for ten pound and one pound antenna systems, skilled artisans
would have known, without much guidance from the ‘573 patent, how to
scale the King/TCS modified antenna system down from 29 pounds by a
factor of about two – i.e., to less than 15 pounds, thereby satisfying claims 1,
11, 19, and 25.
“[A]n implicit motivation to combine exists… when the
‘improvement’ is technology-independent and the combination of references
results in a product or process that is more desirable, for example because it
is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
efficient.” Dystar Textilfarben GmBH & Co. Dutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added). Given
that 1) King’s antenna systems are mountable on a wide variety of vehicles;
2) the known use of handles to carry antenna systems, including 29 pound
antenna systems; 3) the known difficulty of carrying and mounting bulky
antenna systems; and 4) the implicit and universal motivation under Dystar
to create lighter and smaller products, it would have been obvious to place a
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handle on the King antenna system and to make it weigh less than 15 or
20 pounds so that it easily could be transported and mounted on a wide
variety of vehicles.
Appellant also asserts that Dr. Baylin “explains how the combination
of references would not enable one of ordinary skill in the art to make and
use the claimed apparatus.” (App. Br. 16.) Appellant bases the assertion on
Dr. Baylin’s “objective reasons why this is true” and cites his “explan[ation]
that a person of ordinary skill in the art could not modify King to meet the
15 or 20 pound weight requirement.” (Id. at 17.) But Dr. Baylin focuses
mainly on SkyTerra, which is unnecessary to support the conclusion of
obviousness. (See, e.g., Baylin Decl. ¶ 12.) Baylin’s declaration lacks
persuasive evidence that skilled artisans would have been unable to reduce
the weight or enhance the portability of the King system.
Appellant also asserts that “Dr. Baylin explains that TCS is not
configured to be transported by hand.” (App. Br. 17 (citing Baylin Decl. “at
¶ 15.”).) But the Baylin Declaration attached to the Appeal Brief (as Ex. 4)
has only thirteen numbered paragraphs and it is not clear what portion
Appellant relies upon for the argument. In any event, the TCS brochure
clearly shows a handle, and Mateescu, a designer of the TCS system (see
Mateescu Deposition), states that the “U-shaped brackets on the base of the
TCS Model 600 are handles. . . . [which] accommodate manual
transportability” (Mateescu Decl. ¶ 5). Still further, handles for manual
portability were known in the prior art as discussed supra.
In other words, skilled artisans would have had a reasonable
expectation of success in creating 15 or 20 pound portable antenna systems
having a handle, thereby rendering the claims obvious. Based on the
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foregoing discussion and the discussion below of secondary considerations,
Appellant has not shown error in the Examiner’s findings and conclusion
that skilled artisans would have found it obvious to modify King’s vehicular
mounted antenna system to include a handle and render it portable and light-
weight as claims 1, 2, 10-12, 19, 20, and 25 require and as TCS suggests.
Dependent Claims 3-5, 9, 14-17, and 22-24
Appellant asserts that claim 3 is unobvious because “King does not
disclose downwardly extending feet.” (App.Br. 17.) Claims 15 and 23 each
recite a similar limitation. King discloses holes in feet 36 which each
include, inter alia, a bolt or screw (or threaded stud) and nut. (See King Fig.
3 item 41; col. 4, ll. 42-43; RAN 5.) A simple visual comparison of Figure 1
of the ‘573 patent shows feet 120 which appear to be similar in structure to
King’s nut and bolt arrangement. It follows that Appellant has not shown
error in the rejection of claims 3 and 23.
Appellant asserts that the recited notch in claim 4 as defined in the
side of the feet would not have been obvious. (App. Br. 18.) Appellant
relies on a similar element in claim 16. (App. Br. 24). To describe the
claimed notches at issue, Appellant relies on notches allegedly “shown on
item 120 in figures 1-4” of the ‘573 patent. (App. Br. 4.) But inspection of
those figures does not reveal a readily discernible notch. Items 120 in
Figure 1 appear to resemble bolts or something similar in shape to King’s
threaded studs 41 and nuts. At the PTAB oral hearing, Appellant asserted
that the claimed notches correspond to the narrow indented portion above
the bolt-like looking feet in Figure 1 of the ‘573 patent. (See PTAB Tr. 49-
50.) Appellant does not describe a function associated with any such notch.
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Under these circumstances, the similarly depicted narrow portion between
the screw head and bolt 41 depicted in King’s Figure 3, or the spiral grooves
in the side of the screw, or the screw-driver notch extending to the sides of
the screw-head, satisfy the notch recited in claim 4.
Appellant also maintains that the Examiner erred by finding that the
bolts and screws 41 which attach the antenna system to the vehicle roof
satisfy the anti-theft mechanism recited in claim 5 because the recited anti-
theft mechanism must be within the claimed enclosure - and King’s bolts are
not within King’s enclosure. (See App. Br. 18; RAN 5.) Appellant relies on
a similar element in claim 17. (App. Br. 24). But the nuts are depicted as
within the enclosure of King. Such nuts, in combination with the bolts in
King’s feet 36-39, serve to secure the dome to the vehicle’s roof top and
reasonably help to prevent theft. The ‘573 patent describes attaching the
system “to a mounting means by various means including , such as, for
example, nuts and bolts,” and states that the mounting means “can include
an anti-theft mechanism such as a lock or an alarm.” (See ‘573 patent, col.
4, ll. 33-37.) Since the ‘573 patent refers to a lock or an alarm as examples
and does not limit the lock or the anti-theft device, and Appellant does not
argue that King’s nut cannot function as a type of lock or anti-theft device
(see App. Br. 18), Appellant fails to show error in the Examiner’s
determination that King’s nut reasonably corresponds to the recited anti-theft
device.
As noted supra, the record reflects that a jury determined that claim 9
is invalid as obvious. (See also Resp. Br. 12; Resp. Br. Related Proc. Appx.
(listing. . . King Controls v. Winegard Co., 3:09-cv-00138 CRW-CFB Civil
Judgment 3:09-cv-00138 CRW-CFB (S.D. Iowa) and Special Verdict Form).
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Appellant does not explain why the Board should revisit the obviousness of
claim 9 if it is invalid. (Also, claim 9 depends from claim 1, so it is also not
clear why claim 1 is also not invalid for obviousness.)
In any event, Appellant’s arguments are not convincing to show error
in the rejection of claim 9. (See App Br. 18.) Respondent’s contentions are
more persuasive and are adopted. (See Resp. Br. 11-12; Third Party
Comments 19 (Dec. 8, 2010) (“Comments”).) Claims 9 and 22 are similar:
Claim 9 recites “wherein the control system operates to automatically
position the antenna to acquire a signal upon powering on the motorized
antenna system.” Claim 22 recites “wherein control of the position of the
antenna is controlled automatically by interaction with a receiver.”
Appellant asserts that claims 1 and 9 require the entirety of the recited
automatic control to be inside the enclosure 1, and that King’s controller 89
is outside the enclosure. (See App. Br. 18; King Fig. 5.) But claim 9 does
not require full automatic control to be within the enclosure – for example,
at least with respect to powering the device on - and claims 14 and 22 imply,
in line with the ‘573 patent disclosure, some further outside control via
interaction with a receiver which may be outside the enclosure. (See ‘573
patent, col. 6, ll. 40-57 (discussing a remote external transceiver).) King
discloses an external remote controller 89 (connected to control modules 77
and 79 inside the enclosure). (See King, Figs. 3, 5.) King’s controller 89
satisfies claim 9 where King discloses that a “satellite search is initiated by
processing and holding switch 95 [on controller 89] in the power ON
position for 2 seconds.” (King, col. 7, ll. 45-46.) Respondent points to other
portions of King which show that King performs automatic scanning similar
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to what the ‘573 discloses, with the ‘573 patent specifically relying on King.
(See Comments at 19.)
Appellant also asserts that power state of King’s satellite system is
unknown prior to a user pressing the remote control “ON” button - so the
“ON” button might not power the system on. (See App. Br. 18.) Even if
King’s disclosure is not crystal clear about the prior power status of the
antenna system, King implies or at least suggests that the remote controller
turns the system “ON.” Skilled artisans would have recognized that the
“power ON position” (King, col. 7, l. 46) at least suggests powering on the
antenna system to initiate the search for a satellite.
Appellant argues that the Examiner’s asserted control is “possibly not
part of the receiver” in King as claim 22 requires. (App. Br. 19.) To the
contrary, for example, King discloses control module 77 monitoring voltage
in “a timing monitor, located within receiver 97, to determine if the satellite
that has been located matches the user’s receiver. The voltage change stops
when a satellite has been locked on . . . .” (See King, col. 6, ll. 47-50; Fig.
5.)
Appellant also argues that SkyTerra does not teach feet configured to
be attached to a mounting bracket as claim 24 requires. (App. Br. 19.) But
the ‘573 patent refers to all manner of attaching feet to a mounting bracket,
including “nuts and bolts, tape, glue, suction cups, clips, or snaps.” (Col. 4,
ll. 33-35.) Under this broad description, King’s mounting feet “are
configured to attach the motorized antenna system to a mounting bracket”
because claim 24 (emphasis added) does not require a mounting bracket and
King’s screws 41 could be attached to a mounting bracket. Also, the
‘573 patent rebuts Appellant’s implicit argument as to the unobviousness of
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bracket mounting and admits that “[t]ypically, these [prior art] antenna
systems are mounted to a top surface, directly or with a bracket.” (‘573
patent, col. 1, ll. 25-26.) Accordingly, Appellant has not shown that the
Examiner erred in concluding that it would have been obvious for King’s
feet to be configured for bracket mounting.
Based on the foregoing discussion and the discussion below of
secondary considerations, Appellant has not shown error in the rejection of
claims 3-5, 9, 14-17, and 22-24.
Dependent Claims 8, 13, and 21
Appellant’s arguments also fail to show error in the Examiner’s
rejection of claims 8, 13 and 21 based on the added teachings of Anderson.
(See App. Br. 23-25.) The Inter Partes Request relies on Anderson’s
disclosure of a low noise block (LNB) 58 located behind an antenna 30 to
suggest a mere rearrangement of parts of the King antenna and thereby
satisfy the recited LNB location in the claims. (See IP Req. at 75-76 (citing
Anderson, Fig. 4, col. 8, ll. 59-63).) The Inter Partes Request also notes that
King’s feedhorn 74 collects signals at the focus of the dish antenna. (See IP
Request 75.)
Appellant maintains that Anderson discloses a horn antenna, not a
dish, and that Anderson touts the superiority of a horn, thereby teaching
away from a dish. (App. Br. 23 (citing Anderson at col. 6, ll. 12-25).) But
as the Examiner finds (see RAN 11-12), the cited Anderson passage does not
teach away. Rather, the passage notes similar electrical similarities among
the listed antennas, and even if some advantages are listed for one type of
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antenna or another, the passage does not rise to a teaching away of dish
antennas.
In addition, Respondent relies on its above-mentioned Comments at
20-21 to rebut Appellant’s arguments. (See Resp. Br. 13.) In the
Comments, Requester (now Respondent) notes that Anderson at least
teaches the technique of putting an LNB behind an antenna. (Comments
20.) The Comments also rely on an attached declaration by Anderson which
attests that the rear feed parabolic dish described in the ‘573 patent had been
known for many years prior to the invention. Respondent, supported by the
Anderson Declaration, also explains persuasively that the LNB must be
placed where the feed is concentrated – at or near the focus which is the rear
of the dish in all Cassegrain parabolic dishes. (See Comments at 20-21
(citing Anderson Decl. ¶¶ 9-11).)
Based on the foregoing discussion and the discussion below of
secondary considerations, Appellant has not shown error in the rejection of
claims 8, 13, and 21.
Secondary Considerations
Appellant’s proffered secondary considerations do not show
unobviousness. (See App. Br. 19-23.) For example, Appellant proffers a
comparison of unit sales of the “VuQube” product which allegedly falls in
the scope of claim 1 and a prior art product, the King-Dome 9630 series.
(See App. Br. 19-20 (citing Bartyzal Dec. ¶¶ 5-9).) But comparing two
different systems in different markets and different years does not show
much.
Appellant’s evidence establishes that the latter product was designed
for RV (recreational vehicles), whereas the VuQube product was not limited
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to RVs and could be used where RVs would not have access such as at
remote camping and tailgating sites. (See id. at ¶¶ 4-5.) The unit sales do
not show subsequent sales after the first year and it is not clear that any
success continued. Further, while Bartyzal indicates that he expected
VuQube to mainly compete with manual dishes with a tripod figure which
did not require RV mounting, he does not proffer comparable sales of the
two. (See Bartyzal Dec. at ¶ 5.) The number of new RVs sold without a
mounted satellite dish would have a bearing on the number of purchases of
the King-Dome RV mounted series, so that simply comparing unit sales of
that product does not show how successful the VuQube product was (in the
first year or otherwise). Appellant also argues that the VuQube had a 100%
market share in its own category, but the argument ignores the portable
automatic TCS antenna system described supra. (See App. Br. 20.)
Other evidence indicates that the VuQube product was “re-branded”
as the “Tailgater” product. (See Second Bartyzal Dec. ¶ 10 and its attached
Exs. 8 & 9 submitted in the related ‘8614 decision.) Exhibit 9 of the
Bartyzal Declaration, a “denverpost.com” blog/link by Andy Vuong, refers
to a 10 pound weight and to an antenna dish in a “cooler” or a “cooler-type
case.” The attached link page depicts the cooler-like shape of the rebranded
product (previously called VuQube). The link/blog also refers to an offer of
three free months of “Blockbuster” access with a purchase of the Tailgater
product. Appellant does not explain why a company would rebrand a so-
called successful product or offer free “Blockbuster” service with purchase
thereof. Also, the evidence suggests at least some reliance on the “cooler”
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Patent 7,679,573

18
shape which is not claimed. Therefore, despite Appellant’s arguments to the
contrary, Appellant does not show a nexus to the claims.
8

As indicated, the disclosed product is shaped much differently than
the alleged copied product. (See ‘574 patent Figs. 1-3 and Bartyzal Decl.
Ex. 1 (describing and depicting the Winegard product which allegedly
copies the disclosed and marketed VuQube product.)) The VuQube is
relatively cubic-shaped like some coolers as indicated supra, whereas the
Winegard product is semi-hemispherical. If anything, the Winegard product
visually looks more like the TCS product. Appellant has not set forth
persuasive evidence of copying - even if such copying could establish
unobviousness.
While Appellant claims a long-felt but unsolved need and praise by
others, the evidence does not support it and is not persuasive to show
unobviousness. (See App. Br. 21-22.) Appellant largely relies on a letter by
Mr. Rosner. (See King Decl. ¶ 5 and its attached Ex. 1.) Assuming
arguendo that such a letter is trustworthy or probative, Mr. Rosner states that
he had been looking for ten years to a solution to viewing television via
satellite antennas and had previously relied upon a manual tripod system that

8
The 10 pound weight touted in the blog and disclosed as the VuQube
weight (i.e., 10.5 pounds) is not recited in some claims: Claims 10 and 12-15
do not recite a weight limitation, while the remaining claims recite a range
of less than 15 or 20 pounds. Even assuming some nexus with respect to the
latter claims in terms of weight, those claims may not be commensurate in
scope with the evidence, especially where Appellant implicitly argues
success over the TCS 29 pound system. In any event, the evidence fails to
account for the touted cooler shape or even show success in the re-branded
product. See Application of Tiffin, 448 F.2d 791 (CCPA 1971) (commercial
success evidence of thermoplastic foam cups is not commensurate in scope
with broad claims directed to thermoplastic foam containers).
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Patent 7,679,573

19
was time consuming and frustrating. He also states in his letter that rooftop
antennas were too big and too heavy to carry.
Apparently, Mr. Rosner was either unaware of the TCS system or was
unable to carry a 29 pound antenna. (Accord RAN 26 (expressing similar
concerns about Mr. Rosner’s failure to consider the TCS system).) The
TCS system would have solved any problem Mr. Rosner identified.
Mr. Rosner appears to have been a satisfied VuQube customer, but his letter
and other proffered evidence and arguments do not establish a previously
unsolved and long-felt need or show sufficient praise to overcome the
Examiner’s showing of obviousness. Mr. Rosner, a writer/producer
according to his letter, does not show that skilled antenna engineers had been
working unsuccessfully to develop a lighter system. Mr. Rosner’s testimony
and other evidence of record fail to outweigh the obviousness of simply
rendering known automatic antenna systems lighter and portable – according
to universal desire as noted supra.
Based on the foregoing discussion, Appellant has failed to show error
in the obviousness rejections discussed supra. The relied-upon record
evidence of secondary considerations does not outweigh the obviousness of
simply rendering known automatic antenna systems lighter, more portable,
or equipped with a handle. Appellant fails to even argue that lighter
individual antenna component parts were unknown in the art. See KSR, 550
U.S. 398, 416 (2007) (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”).

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Patent 7,679,573

20
DECISION
The Examiner’s decision to reject claims 1-5, 8-17, and 19-25 is
affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79.
AFFIRMED

ak

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