Ex Parte Kabuto et al

Patent Trial and Appeal Board

Dec 14, 2017

12783329 (P.T.A.B. Dec. 14, 2017)

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.
12/783,329 05/19/2010 Nobuaki KABUTO 093265-0022 6466
20277 7590 12/18/2017
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
ipdocketmwe @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUAKI KABUTO and YUYA OGI
Appeal 2017-004358
Application 12/783,329
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3, 4, 6, 8, 9, 11, 12, 15, and 16, which are all the
claims pending in this application. Claims 2, 5, 7, 10, 13, and 14 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal is directed to: “a video
transmitter apparatus and a video receiver apparatus being able to
communicate with equipment at connection by using an interface, such as,
on a radio or wireless.” (Spec. 1,11. 8—11.)
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Application 12/783,329
Representative Claim
1. A wireless video receiver apparatus for receiving video from a
wireless video transmitter apparatus, the wireless video receiver
apparatus comprising:
a memory portion configured to store receiver apparatus
information of said wireless video receiver apparatus; and
a transmitter/receiver portion configured to receive a request for
obtaining said receiver apparatus information stored in said
memory portion, said request being transmitted from said
wireless video transmitter apparatus, wherein:
said transmitter/receiver portion is configured to transmit said
receiver apparatus information stored in said memory portion in
response to said request,
said memory portion is configured to store a first history
number, which increases in value based on a change in said
receiver apparatus information, and first CRC (cyclic
redundancy check) data for said receiver apparatus information,
said transmitter/receiver portion is configured to receive a
second history number that said wireless video transmitter
apparatus holds therein and second CRC data, with said request
from said wireless video transmitter apparatus,
[LI] when the second history number received from said
wireless video transmitter apparatus and the first history
number stored in said memory portion are inconsistent with
each other, or
[L2] when the first CRC data stored in said memory portion
and the second CRC data received from said wireless video
transmitter apparatus are inconsistent with each other, said
transmitter/receiver portion transmits at least said receiver
apparatus information and said first history number that are
stored in said memory portion to said wireless video transmitter
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apparatus, and
[L3] when said second history number received from said
wireless video transmitter apparatus and said first history
number stored in said memory portion are consistent with
each other, and
[L4] when the first CRC data stored in said memory portion
and the second CRC data received from said wireless video
transmitter apparatus are consistent with each other, said
transmitter/receiver portion returns a message indicating no
change in said wireless receiver apparatus information to
said wireless video transmitter apparatus, without transmitting
said receiver apparatus information.
(Contested limitations LI—L4 bracketed and emphasized in bold and italics).
Rejections
A. Claims 1,3,4, 6, 8, 9, 15, and 16 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings
and suggestions of Unger (U.S. Pub. No. 2006/0095638 Al, pub.
May 4, 2006) (hereinafter “Unger ’638”) and Lees et al. (U.S.
Patent No. 7,162,499 B2, iss. Jan. 9, 2007) (hereinafter “Lees”),
Unger (U.S. Pub. No. 2006/0129370 Al, pub. June 15, 2006)
(hereinafter “Unger ’370”), and Thomas et al. (U.S. Pub. No.
2002/0023270 Al, pub. Feb. 21, 2002) (hereinafter “Thomas”).
B. Claims 11 and 12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Unger ’638, Unger ’370, Lees, and further in view of Zustak et
al. (U.S. Pub. No. 2002/0085023 Al, pub. July 4, 2002)
(hereinafter “Zustak”).
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Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of rejection
A of claims 1, 3, 4, 6, 8, 9, 15, and 16, based upon independent
representative claim 1. We address rejection B of claims 11 and 12, infra.
To the extent Appellants have not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37C.F.R. §41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
Final Office Action (2—11) from which this appeal is taken, and (2) the
findings, legal conclusions, and explanations set forth in the Answer (2—6) in
response to Appellants’ arguments. We highlight and address specific
findings and arguments for emphasis in our analysis below.
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of references would have taught or suggested
contested limitations LI—L4, within the meaning of representative claim l?1
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). (See, e.g., Spec. 17—18 (“The present
embodiment(s) is/are therefore to be considered in all respects as illustrative
and not restrictive, the scope of the invention being indicated by the
appended claims rather than by the forgoing description and range of
equivalency of the claims are therefore to be embraces [sic] therein.”
(emphasis added))).
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Based upon our review of the record, we find Appellants do not
present any persuasive, substantive arguments to distinguish the limitations
of representative claim 1 from the combined teachings and suggestions of
the references cited in support of the Examiner’s rejection of claim 1. (Final
Act. 2-7.)
Instead, Appellants adopt a general pattern of argument, by merely:
(1) “submitting]” that the claim language is not disclosed or suggested by
the cited references (App. Br. 7), (2) describing the claimed invention in
terms of reference to the preferred embodiments found Specification (App.
Br. 7—8), (3) arguing limitations that are not claimed, (4) arguing the
references separately, considered in isolation, (5) arguing the data elements
in the claim are not the same type of data as found by the Examiner in the
reference(s), and (6) arguing that “even if, arguendo, the cited references
were combined the resultant structure/configuration clearly fails to disclose”
the contested temporal conditional “when” limitations LI—L4 (App. Br. 10).
Regarding point (1), under our procedural rule, “[a] statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(l)(iv).2
As an example of points 2 and 3, see Appellants’ argument on page 8
of the Appeal Brief paragraph 3: “However, Lees fails to disclose that the
version number is attached to a request from a wireless video transmitter
apparatus to a wireless video receiver apparatus (see, 223, 225 of FIG. 3 of
2 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
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the present application).'1'’ (emphasis added). As per the reference to the
Specification (App. Br. 8), our reviewing court guides “[tjhough
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). See n.l, supra.
Regarding point 3, the argued version number attached to a request is
not claimed. (See App. Br. 8,13). Moreover, claim 1 is silent regarding
any mention of a function of comparing, as argued repeatedly by Appellants
on pages 8 and 9 of the Appeal Brief. Thus, we find unavailing Appellants’
contention that “Thomas fails to disclose comparing two sets of CRC data.”
(App. Br. 9) (emphasis added.)
Because Appellants attack the cited teachings of the references in
isolation (App. Br. 8—9), we find Appellants fail to specifically rebut the
Examiner’s ultimate legal conclusion of obviousness, which is based on the
combined teachings and suggestions of Unger ’638, Unger ’370, Lees, and
Thomas (Final Act. 2—7). See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
Id.
Moreover, “the question under [35 U.S.C. § 103] is not merely what
the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), cert, denied, 493
U.S. 975 (1989); see also MPEP § 2123.
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We find this guidance is applicable here. Therefore, for at least the
aforementioned reasons, we find the Examiner’s underlying factual findings
and ultimate legal conclusion of obviousness are supported by a
preponderance of the evidence. Because Appellants have not persuaded us
the Examiner erred, we sustain the rejection of independent claim 1. The
associated dependent claims also rejected under rejection A (not separately
argued) fall with representative claim 1. (See Grouping of Claims, supra.)
Rejection A of Claim 6 and Rejection B of Claim 11, Respectively
For claims 6 and 11, Appellants again adopt a general pattern of
argument, by merely: (1) “submitting]” that the claim language is not
disclosed or suggested by the cited references (App. Br. 11, 12),
(2) describing the claimed invention in terms of reference to the preferred
embodiments found in the Specification (App. Br. 11—12), (3) asserting that
the claimed wireless ID is “clearly different” from the digest value in Unger
’370 (for claim 6), or asserting that “these references fail to disclose the use
of a wireless ID in a manner as recited by claim 11.” (App. Br. 12, 13).
However, Appellants do not provide any compelling evidence in
support of their assertions. (Id.) It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence); In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984); see also Ex parte Belinne, 2009 WF 2477843, at *3^4
(BPAI Aug. 10, 2009) (informative).
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Therefore, we find the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness for independent claims 6 and 11 are
supported by a preponderance of the evidence. Because Appellants have not
persuaded us the Examiner erred, we sustain rejection A of independent
claim 6, and rejection B of independent claim 11. The associated dependent
claims rejected under rejection A (not separately argued), or rejected under
rejection B (claim 12), fall with their respective associated independent
claim 6 or 11. See 37 C.F.R. § 41.37(c)(l)(iv).
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner’s Answer
will not be considered except for good cause, which Appellants have not
shown. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3, 4, 6, 8, 9, 11,
12, 15, and 16 under pre-AIA 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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