Ex Parte vonDoenhoff et al

Patent Trial and Appeal Board

Apr 24, 2013

11130557 (P.T.A.B. Apr. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROGER C. VONDOENHOFF, SUDHAKAR S. SHETTY,
DONALD W. SCHULTZ, and WILLIAM E. WHITESELL
____________________

Appeal 2010-011669
Application 11/130,557
Technology Center 2400
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Before ALLEN R. MacDONALD, DEBRA K. STEPHENS, and STACEY
G. WHITE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/130,557

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-8, 10-13, and 15-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphases added):
Claim 1. A system for supplying wireless audio signals from a
first seat within a structure to a second seat within the structure,
in a manner so that the wireless audio signals received by a user
at the second seat are synchronized with video signals present
on a video display unit that the user is viewing, the video
display unit being associated with the first seat, the audio and
video signals cooperatively forming information content being
viewed and listened to by the user, the system comprising:
a transmitter subsystem supported from said first seat and
generating an inductive magnetic signal representative of
audio information input into said transmitter subsystem; and
a receiver subsystem supported from said second seat
located adjacent said first seat, the receiver subsystem operating
to receive said inductive magnetic signal and to convert said
inductive magnetic signal back into an audio information signal
for use by said user in said second seat, and such that both said
audio and video signals are received at the first seat, while said
inductive magnetic signal enables said audio signals to be
forwarded as wireless audio information to said second seat to
at least substantially eliminate latency between the audio and
video signals when presenting said information content to the
user.

Rejections
The Examiner rejected claims 1-4, 6-8, 10-13, and 15-17 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Brady (US
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2005/0268319 Al), Applicant's Admitted Prior Art (AAPA), Palermo (US
5,771,438), and Ho (US 2005/0259754 Al). 1
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brady, AAPA, Palermo, Ho, and
Veeck (US 2005/0039208 Al). 2
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Thus, it is important to emphasize that the Brady system
is only being used for sending PCU signals to the in-flight
entertainment seatback unit. Moreover, the PCU signals are not
being sent inductively, and there is absolutely no suggestion of
using inductive coupling to send the PCU signals to any other
remotely located component of the Brady system.
(App. Br. 11).
2. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “there would be no obvious need
(or shortcoming) apparent from the Brady system that would suggest or
motivate one of ordinary skill in the art to be looking to combine its
teachings with any of the other references.” (App. Br. 11)(emphasis added).
3. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “Brady would have no need for
using inductively coupled components.” (App. Br. 12)(emphasis added).

1 Separate patentability is not argued for claims 2-4, 6-8, 10-13, and 15-17.
Except for our ultimate decision, these claims are not discussed further
herein.
2 Separate patentability is not argued for claim 5. Rather, this rejection turns
on our decision as to the § 103 rejection of the parent claim from which
claim 5 depends, and is not further addressed herein.
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4. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “Palermo et al. does not suggest
the possibility of implementing inductive coupling to communicate
information between a first device located at a first seat and a second device
located on a second seat within a structure or mobile platform.” (App. Br.
13)(emphasis added).
5. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “Ho et al. in no way suggests
using inductive coupling.” (App. Br. 14)(emphasis added).
6. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The establishment of a prima facie case of obviousness requires
that three basic criteria be met:
1) that there must be some suggestion or motivation,
either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art, to
modify the reference or to combine the reference
teachings;
2) that there must be a reasonable expectation of success;
and
3) that the prior art reference or references must teach or
suggest all the claim limitations.
See, e.g., In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed.
Cir. 1991).
(App. Br. 15). 3

3 Appellants go on to present more than a dozen additional teaching,
suggestion, and motivation arguments at pages 16-21 of the Appeal Brief
and pages 1-5 of the Reply Brief.
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Issue on Appeal
Did the Examiner err in rejecting claims 1-8, 10-13, and 15-17 as
being obvious because the Examiner failed to comply with the “teaching,
suggestion, or motivation” requirement?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions.
As to Appellants’ above contentions, Appellants’ arguments fail
because they do not acknowledge the impact of the Supreme Court’s explicit
rejection in KSR of the rigid requirement that the art suggest a modification.
KSR Int’l Inc. v. Teleflex Inc., 550 U.S. 398, 415 (2007)(“We begin by
rejecting the rigid approach of the Court of Appeals.”). The Court’s decision
in KSR repudiated reliance on a “teaching, suggestion or motivation” as a
requirement to show obviousness.
We look to whether the Examiner has provide some articulated
reasoning as to why a person having ordinary skill in the art would recognize
that there was an apparent reason to combine the known elements in the
fashion claimed by the claim at issue. KSR 550 U.S. at 418. We conclude
that the Examiner provides just such articulated reasoning in the rejection
from which this appeal is taken and in the Answer. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusions reached by the Examiner.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-8, 10-13, and
15-17 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-8, 10-13, and 15-17 are not patentable.

DECISION
The Examiner’s rejections of claims 1-8, 10-13, and 15-17 are
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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