Ex Parte Kabuto et alDownload PDFPatent Trial and Appeal BoardDec 14, 201712783329 (P.T.A.B. Dec. 14, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 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.) Appeal 2017-004358 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 2 Appeal 2017-004358 Application 12/783,329 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”). 3 Appeal 2017-004358 Application 12/783,329 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))). 4 Appeal 2017-004358 Application 12/783,329 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.”). 5 Appeal 2017-004358 Application 12/783,329 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. 6 Appeal 2017-004358 Application 12/783,329 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). 7 Appeal 2017-004358 Application 12/783,329 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 8 Copy with citationCopy as parenthetical citation