Ex Parte Schedivy

Patent Trial and Appeal BoardDec 31, 2012

11108960 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEORGE C. SCHEDIVY ____________ Appeal 2010-005708 Application 11/108,960 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and GREGORY J. GONSALVES, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005708 Application 11/108,960 2 STATEMENT OF THE CASE The Patent Examiner finally rejected claims 1-25, 27, 31, and 32. Claims 26, 28-30 and 33 were canceled. (App. Br. 2). Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to "a video system for a vehicle operating with a data storage device." (Spec. 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A video system for a vehicle, comprising: a receiving unit for connecting with a portable hard drive, the receiving unit being disposed in the vehicle and electrically connected to a display, wherein the hard drive is capable of receiving and storing data from a data source, and the receiving unit includes at least one slot accessible from an exterior of the receiving unit for receiving the hard drive therein, wherein a thickness of the slot is substantially the same as a thickness of the hard drive, and the slot includes a contact physically mating with a corresponding contact of the hard drive for transmitting the data through the mated contacts. (Disputed limitation emphasized). REJECTIONS R1. Claims 1, 2, 4-20, 31 and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tranchina (US Patent Application Publication No. 2005/005298 A1, January 6, 2005) in view of Hasegawa (US Patent No. 4,730,292, March 8, 1988). Appeal 2010-005708 Application 11/108,960 3 R2. Claims 21, 22, 24, 25 and 27 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Tranchina in view of Hasegawa and Vitito (US Patent Application Publication No. 2006/0119748 Al, June 8, 2005, provisionally filed November 7, 2003). R3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Tranchina in view of Hasegawa and Redlich (US Patent No. 7,313,825 B2, December 25, 2007, filed March 19, 2003). R4. Claim 23 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Tranchina in view of Hasegawa, Vitito and Redlich. ANALYSIS Issue: Under § 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested "the slot includes a contact physically mating with a corresponding contact of the hard drive for transmitting the data through the mated contacts," within the meaning of claim 1, and the commensurate language of claims 21, 31, and 32? Appellant contends: Hasegawa does not disclose a slot including a contact physically mating with a corresponding contact of the hard drive for transmitting data through the mated contacts. Hasegawa discloses a compact disc player receiving a plurality of discs to record or reproduce sound data. However, in Hasegawa, no physical contact for transmitting data is formed between the discs and the player. (App. Br. 8; emphasis added). Appellant's contentions are not persuasive. As a matter of claim construction, we conclude that the disputed limitation “for transmitting the Appeal 2010-005708 Application 11/108,960 4 data through the mated contacts" (claim 1) clause has no patentable weight because the limitation is a statement of intended use or purpose. In particular, the disputed transmitting function is not positively recited as actually occurring. Our reviewing court guides that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. This reasoning is applicable here regarding claims 1, 21, 31, and 32. Even assuming arguendo that patentable weight may be accorded to the limitation “for transmitting the data through the mated contacts," we find that the combination of references would have taught or suggested the limitation, taking into account knowledge which was well within the level of ordinary skill in the art at the time the invention was made. Our reviewing court guides that an examiner’s reasoning “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (an examiner may rely upon "common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference"). See also KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 420-21, (2007). Appeal 2010-005708 Application 11/108,960 5 We agree with the Examiner that Tranchina would have taught receiving units are connected to a portable hard drive. (Ans. 3; Tranchina Abstract, Figs. 1A, 1B, 1C; ¶ [0041]). We find Tranchina would have taught or suggested that the hard drive has a contact that is connected to (physically mated to) a contact from the receiving unit.(See Tranchina Abstract; Figs. 1A, 1C; ¶ [0031] (See Fig. 1A: recorder 111 contacted to bus 140)). We also agree Hasegawa would have taught or suggested that receiving units have slots where drives with contacts can be inserted and connected to slot contacts because Hasegawa discloses that the drive is for recording or reproducing. (Ans. 3; Hasegawa col. 1, ll. 55-60)). Thus, we find the combination of Tranchina and Hasegawa would have taught or suggested to one skilled in the art that Hasegawa's inserted drive would have a contact connected to (physically mated to) a contact in the receiving unit which enables Hasegawa's drive to record or reproduce (transmit data through the mated contacts). (Ans. 3; Hasegawa col. 1, ll. 55-60). For these reasons, we are not persuaded of Examiner error. Accordingly, we sustain the Examiner's rejection of claim 1 and of claims 31 and 32, which have commensurate limitations and which were argued together. (App. Br. 8). We also sustain the rejection of independent claim 21, which has commensurate limitations as claim 1 and which Appellant presents essentially the same unpersuasive contentions as advanced regarding claim 1. (App. Br. 10-11). Regarding the rejections of dependent claims 2-20, 22-25, and 27, Appellant contends these claims are patentable by virtue of their dependency from independent claims 1 and 21. (App. Br. 9-14). Appellant further Appeal 2010-005708 Application 11/108,960 6 contends that the additionally cited references do not cure the deficiencies of the rejections of claims 1 and 21. (Id.). However, we find no defects for the reasons discussed above. Therefore, we sustain the Examiner's rejections of claims 2-20, 22-25, and 27 for the reasons discussed above regarding claims 1 and 21. DECISION We affirm the Examiner's rejections of claims 1-25, 27, 31, and 32 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED peb