Ex Parte 6304236 et al

Board of Patent Appeals and Interferences

Jun 29, 2012

95000460 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,460 05/04/2009 6304236 379922-460RX (105402) 7144
37509 7590 06/29/2012
DECHERT LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
CHIMEI INNOLUX CORP.
Requester and Respondent

v.

Patent of MONDIS TECHNOLOGY, LTD.
Patent Owner and Appellant
____________________

Appeal 2012-007868
Reexamination Control 95/000,460
Patent US 6,304,236 B1
Technology Center 3900

____________

Before RICHARD TORCZON, HOWARD B. BLANKENSHIP, ALLEN R.
MacDONALD, SCOTT R. BOALICK, and STEPHEN C. SIU,
Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. § 134(b) from the decision
of the Examiner to maintain the rejections of claims 1 and 2, which were
entered by the Board in a previous Decision, 2011-002708 (Mar. 21, 2011).
We have jurisdiction under 35 U.S.C. § 315(a).1
In the earlier Decision, the Board reversed the Examiner’s final
decision favorable to the patentability of claims 1 and 2 and entered
rejections consistent with grounds proposed by Requester. Owner elected to
reopen prosecution before the Examiner (37 C.F.R. § 41.77(b)(1)). The
proceeding has been returned to the Board (37 C.F.R. § 41.77(f)).
We affirm.

Invention
The '236 patent relates to a display apparatus for adjusting the display
image using a control signal from an external computer. '236 patent Title.
Figure 6 of the patent is reproduced below.

1 This appeal is related to the inter partes reexamination of US 6,639,588 B2,
Control No. 95/000,455, Appeal No. 2012-002715, and to the inter partes
reexamination of US 6,686,895 B2, Control No. 95/000,456, Appeal No.
2012-003164.
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Figure 6 is a block diagram illustrating a control signal separation
circuit 18 and a display control circuit 19 contained in a display apparatus.
'236 patent col. 7, ll. 20-22.
A control signal added to the B video signal (yielding B') is separated
from the B' signal and stored in shift register 411. The control signal is
supplied to microcomputer 602. The microcomputer in turn supplies the
control signal to D/AC 413 to thereby adjust a circuit in the display unit.
The control data is also written to EEPROM 603 such that when the display
unit is next turned on, the control data is read out to perform the
predetermined adjustment. Further, by previously storing the control data in
the EEPROM, control data can be read out in accordance with the control
signal from the external computer. Id. at ll. 22-60.
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Representative Claim
1. A display apparatus which receives a video signal and
a synchronization signal from an external computer, and which
displays an image in accordance with the video signal and the
synchronization signal on a screen, the display apparatus
comprising:

an interface circuit which receives a control signal which
is generated by a program that is previously programmed in
software used for operating the external computer; and

a memory which stores control data concerning display
control, the stored control data is read out by the control signal
from the interface circuit;

wherein the displayed image is adjusted in accordance
with the control data which is read out from the memory; and

wherein said interface circuit transmits a reception
confirmation signal to the external computer, the reception
confirmation signal indicates receiving the control signal from
the external computer.

Prior Art

James R. Webb, et al. U.S. 5,216,504 Jun. 1, 1993

Kuniyoshi Takahashi JP H4-37787 Feb.7, 1992

“IEA-232-C (Revision of RS-232-B): Interface Between Data
Terminal Equipment and Data Communication Equipment
Employing Serial Binary Data Interchange,” Electronic
Industries Association (Aug. 1969) (“RS232C”).

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Owner’s Contentions
Owner contends that the Examiner erred in maintaining the following
rejections of claims 1 and 2:
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Webb and RS232C.
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi.

ANALYSIS
Section 103(a) -- Webb and RS232C
Owner contends that the § 103(a) rejection over Webb and RS232C
errs because the references fail to teach two limitations of representative
claim 1.

I. Reading out control data in response to the control signal
Owner submits that the control data stored in the memory of Webb,
which are used to adjust the image, are read out by an internal clock signal
in the monitor rather than a control signal from an external computer.
However, the rejection refers to a particular teaching in Webb.
Each of the digitally controllable inputs is responsive, via
the digital control circuit 150 [Fig. 1], to data stored in a
corresponding digital circuit control register within the
video monitor 102. As an example, if an increase in the
vertical size of the CRT 101 display is desired, then the
existing value in the Vertical Size register (not shown)
corresponding to the V. SIZE (vertical size) input of the
CRT 101 is incremented accordingly. The incrementing
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of this particular register is typically accomplished by a
signal input from the calibration computer 104, although
registers corresponding to conventional user-adjustable
inputs, such as brightness and contrast, are also manually
adjustable. A register adjustment input from the
calibration computer 104 includes specifying the V. SIZE
register as a target register as well as an appropriately
incremented target register value, which input is stored in
the target (V. SIZE) register. The digital control circuit
150 then utilizes this newly stored value in the V. SIZE
register to change the vertical size of the image being
displayed on the monitor CRT 101.

Webb col. 7, ll. 46-66.
Owner asserts that the above disclosure of Webb teaches that control
data is written into the corresponding control register, but not read from the
register. According to Owner, “incrementing” the register data means
replacing the old value by writing a new (higher) value to the register.
Owner refers to the declaration of Joseph D. Lamm (attached to the Patent
Owner Response after Board Decision, filed Apr. 21, 2011) (“Lamm
Decl.”), paragraphs 7 through 12, as support for the position.
We have considered the relevant portions of the Lamm Declaration.
However, we find the explanation provided in the declaration by Jake
Richter (attached to the Requester Comments on Patent Owner Response
after Board Decision, filed May 23, 2011) (“Richter Decl.”), paragraphs 16
through 24, to be the more credible.
“Incrementing” a register implies addition of a positive (or negative)
number to the register-resident value. We agree with Requester that one of
ordinary skill in the art would have considered it obvious, in view of the
teachings of Webb, to perform a “read-modify-write” operation on the
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register data in order to increment the register values. That is, it would have
been obvious to read out the control data from a register (e.g., vertical size)
in response to a read command from the calibration computer, the computer
incrementing the read value, and the computer returning the incremented
value to the register by a write command. The stored control data would
thus be “read out by the control signal” consistent with the requirements of
claim 1.
Moreover, “incrementing” a register value in Webb’s video monitor
means that the calibration computer possesses the present register value,
whether the value is obtained immediately prior to writing the new value to
the register or at some previous time. We disagree with the implication in
the Lamm Declaration (¶ 12, fn 2) that the instant claims require that the
reading of the control data is a means to adjust the displayed image. We
agree with the Richter Declaration (¶ 24) that the claims do not require that
the control data read operation be used by the monitor to adjust the displayed
image. Webb teaches, as recited in representative claim 1, a memory in
which the stored control data is read out by the control signal, wherein the
displayed image is adjusted in accordance with the control data which is
read out from the memory. The displayed image is adjusted both “in
accordance with” the (present) control data that is read out from the
memory, and later “in accordance” with its former value as modified by the
addition to (incrementing of) that value.

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II. Reception confirmation signal that indicates
receiving the control signal

Webb teaches that “[t]he calibration computer 104 [Fig. 1] controls
the monitor being adjusted via serial link 103 using standard RS-232
protocol. All adjustments to registers and digital control circuitry 150 in the
video monitor 102, as well as queries about current monitor states are made
over this link 103.” Webb col. 5, ll. 40-43.
We have considered the RS232C document (describing the RS-232
protocol at the time of Webb’s disclosure). We have also considered
Owner’s arguments, and the Lamm Declaration, which assert that the
RS232C standard does not mandate or inherently require reception
confirmation signals. However, the present obviousness inquiry does not
end with determining whether such signals are always required and always
present.
We find Mr. Richter’s testimony (Richter Decl. ¶¶ 28-35) to be more
credible as to why the artisan would have used standard handshaking signals
as set forth in the RS232C standard to confirm proper reception of signals.
One of ordinary skill in the art, having knowledge of the RS232C standard
protocols, would have been aware of the advantages of using the protocols to
confirm signal reception.
We also find the Richter Declaration (¶ 36) more credible than
Owner’s and Mr. Lamm’s (Lamm Decl. ¶ 23) position that the artisan would
not have used the RS232C handshaking signals in view of Webb’s
calibration procedure using “visual” feedback from the monitor (Webb. col.
9, ll. 16-51).
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With respect to Owner’s further assertions that none of the hardware
handshaking signals described by the RS232C specification may be
considered a signal for a reception confirmation signal, we also find the
arguments and evidence provided by Requester to be the more persuasive.
The Lamm Declaration (¶¶ 19-20) submits reasoning why the RS232C
Received Line Signal Detect (RLSD) signal may not be considered as
serving to confirm receipt of a signal to the sender of the signal. However,
RS232C (at 15) discloses that the RLSD signal is FROM the data
communication equipment (DCE; i.e., the video monitor in the context of
Webb), where the ON condition is presented when the DCE is receiving a
suitable signal and the OFF condition indicates that no signal is being
received or that the received signal is unsuitable for demodulation. Mr.
Lamm’s testimony appears to be based on an unduly narrow interpretation of
transmitting a “reception confirmation signal” that “indicates receiving the
control signal.” See also Richter Decl. ¶ 30. Further, we note that Owner’s
only argument as to why the Request to Send (RTS) handshaking signal fails
to meet the terms of the claimed “reception confirmation signal” is that the
RS232C specification describes the signal as optional. See Lamm Decl.
¶ 17.

III. Secondary Considerations
The Declaration by Michael B. Spiro (attached to Patent Owner
Response after Board Decision, filed Apr. 21, 2011) (“Spiro Decl.”), lists
four owned patents as “the Patents,” which includes the '236 patent.
Since 2003, Hitachi and Mondis have entered into
at least seven separate license agreements, expressly or
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implicitly encompassing the Patents (for example, by
reference to priority applications or functionality), with
at least 19 monitor companies and affiliates in Asia, the
United States and around the world. That includes five
licenses negotiated outside of litigation, and two that
arose as part of litigation settlements. These figures do
not include license agreements executed by Hitachi
before Inpro became Hitachi’s licensing agent that may
include the Patents under broad cross-licenses.

Spiro Decl. ¶ 7 (emphasis added).
The Declaration fails to allege, in express terms, that the '236 patent
has been licensed to any entity. As such, we agree with the Examiner that
the requisite nexus between the merits of the claimed invention of the '236
patent and any commercial success that might be indicated by licensing of
the patent has not been established. The Declaration fails to provide
sufficient details of the licensing as it might relate to the claimed invention
of the '236 patent.
Owner also submits the Lamm Declaration in rebuttal to the § 103(a)
rejections.
In my opinion, the inventions embodied by claims 1 and
2 of the '236 Patent have enjoyed commercial success as
indicated by: (1) adoption of the technology into industry
standards; (2) Microsoft’s requirement to use the technology for
Windows Vista Logo certification; and (3) widespread adoption
of the technology by the computer monitor industry based upon
extensive testing I have performed.

Lamm Decl. ¶ 27.
However, while the Lamm Declaration (¶¶ 28-40) might demonstrate
a nexus between industry standard video monitors and standards
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promulgated by the Video Electronics Standards Association (VESA), the
allegations do not demonstrate a nexus between the merits of the instant
claimed invention and any industry standards or the standards promulgated
by VESA.
One would expect that standards promulgated by an industry
standards-setting committee would become widely adopted in the pertinent
industry. However, the Lamm Declaration does not allege that VESA
developed and promulgated the standards in view of the claimed invention
of the '236 patent. Indeed, Lamm does not indicate whether the standards-
setting committee was even aware of the '236 patent.
Moreover, we have uncontested testimony in the Richter Declaration
(¶¶ 44-53) that the VESA standards were developed independently, and
commenced before the priority date of the '236 patent (¶ 48). In particular,
Mr. Richter alleges that development of the “DDC” standard (¶ 47), which
appears to be a precursor or an early version of the “DDC/CI” standard
principally discussed in the Lamm Declaration, and other VESA standards
may have been derived from a monitor that pre-dated the invention of the
'236 patent. Richter Decl. ¶¶ 48-51. See also Exhibit D attached to Richter
Decl., “VESA General Membership Meeting Minutes, October 20, 1991,” at
2, 6th full ¶, discussing the “concept of a ‘Video Display Definition
Protocol’ (VDDP).”
We acknowledge that adoption of an invention as an industry standard
may be indicative of commercial success and non-obviousness of the
invention, assuming that the standard was determined by buyers and was due
to the merits of the invention as compared with the merits of competing
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alternatives. However, Owner has cited no authority for the proposition that
because parts of the claims may read on portions of standards that were
promulgated by an industry standards-setting committee, the claimed
invention is demonstrated to be non-obvious by showing industry acceptance
and commercial success of the promulgated standards.
For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995). We agree with the Examiner that the requisite
nexus between the merits of the claimed invention of the '236 patent and any
commercial success as indicated by widespread adoption by the computer
monitor industry has not been established.

IV. Summary/Conclusion
We find that a preponderance of the evidence supports the conclusion
that the subject matter as a whole of representative claim 1 would have been
obvious to a person having ordinary skill in the art at the time of invention.
We sustain the § 103(a) rejection of claim 1 over Webb and RS232C. Claim
2, not separately argued, falls with claim 1.

Section 103(a) - Takahashi
Because we have sustained the rejection of all the claims over the
combination of Webb and RS232C, we do not reach the § 103(a) rejection
over Takahashi. See 37 C.F.R. § 41.77 (a) (“The affirmance of the rejection
of a claim on any of the grounds specified constitutes a general affirmance
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of the decision of the examiner on that claim, except as to any ground
specifically reversed”); accord Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (affirming reasonableness of deciding a single
dispositive issue).

DECISION
The Examiner’s decision adverse to the patentability of claims 1 and 2
is affirmed.
Requests for extensions of time in this proceeding are governed by
37 C.F.R. §§ 1.304(a), 1.956, and 41.79(e).

AFFIRMED

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ack

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DECHERT, LLP
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MOUNTAIN VIEW, CA 94039-0460

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