Ex Parte 6686895 et alDownload PDFBoard of Patent Appeals and InterferencesJun 29, 201295000456 (B.P.A.I. Jun. 29, 2012) Copy Citation 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. 95/000,456 04/27/2009 6686895 379922-456RX (105402) 2794 37509 7590 07/02/2012 DECHERT LLP P.O. BOX 390460 MOUNTAIN VIEW, CA 94039-0460 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/02/2012 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 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 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 Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 2 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 1-4, which were entered by the Board in a previous Decision, 2011-006440 (July 11, 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 1-4 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 '895 patent relates to a display apparatus capable of adjusting the display picture by a control instruction from an external computer. '895 patent Abstract. Figure 6 of the patent is reproduced below. 1 This appeal is related to the inter partes reexamination of US 6,304,236 B1, Control No. 95/000,460, Appeal No. 2102-007868, and to the inter partes reexamination of US 6,639,588 B2, Control No. 95/000,455, Appeal No. 2012-002715. Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 3 Figure 6 is a block diagram illustrating a control signal separation circuit 18 and a display control circuit 19 contained in a display apparatus. '895 patent col. 7, ll. 28-30. 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 col. 7, l. 28 - col. 8, l. 1. Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 4 Representative Claim 1. A display unit for displaying an image based on a video signal received from an external computer which is connected to an input device, the display unit being separate from the external computer and comprising: a receiving/transmitting unit receiving from said external computer a first control signal generated in response to a control instruction inputted through said input device connected to said external computer and a second control signal generated based on a program running on said external computer and transmitting an acknowledge signal to said external computer to inform that said first and second control signals are received; and a memory having stored therein control data regarding displaying of the image; wherein the image is controlled and displayed by using said input device connected to said external computer based on said first control signal and said control data is read from said memory in response to said second control signal thereby to control the image. 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”). Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 5 Owner’s Contentions Owner contends that the Examiner erred in maintaining the following rejections of claims 1-4: Claims 1-4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Webb and RS232C. Claims 1-4 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 control data out of memory in response to a 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 Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 6 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 Aug. 11, 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 Sep. 12, 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 Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 7 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 from said memory” in response to 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 Mr. Lamm’s claim interpretation (Lamm Decl. ¶ 15) that the instant claims require that the reading of the control data is a means to adjust the displayed image. The claims do not require that the control data read operation be used by the monitor to adjust the displayed image. Moreover, we find the Richter Declaration to provide a more credible account than the Lamm Declaration’s theory (¶¶ 14-17) as to why the artisan would not have expected the Webb computer to query for the present register value before incrementing. See Richter Decl. ¶¶ 22-27. As further noted by Mr. Richter, manual adjustment of the monitor would change the stored register values such that the calibration computer would not possess the present value without querying the monitor. Richter Decl. ¶ 25; Webb col. 16, ll. 24-42, 51-55; '895 patent col. 1, ll. 36-40. Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 8 II. Transmitting a reception acknowledgement 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 acknowledgement 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. ¶¶ 30-37) 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 (¶ 38) more credible than Owner’s and Mr. Lamm’s (Lamm Decl. ¶ 27) 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). Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 9 With respect to Owner’s further assertions that none of the hardware handshaking signals described by the RS232C specification may be considered a reception confirmation signal, we also find the arguments and evidence provided by Requester to be the more persuasive. The Lamm Declaration (¶¶ 23-24) 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 an acknowledge signal” to inform that a signal has been received. See also Richter Decl. ¶ 35. 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. ¶ 21. III. Secondary Considerations The Declaration by Michael B. Spiro (attached to Patent Owner Response after Board Decision, filed Aug. 11, 2011) (“Spiro Decl.”), lists four owned patents as “the Patents,” which includes the '895 patent. Since 2003, Hitachi and Mondis have entered into at least seven separate license agreements, expressly or implicitly encompassing the Patents (for example, by Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 10 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 '895 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 '895 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 '895 patent. Owner also submits the Lamm Declaration in rebuttal to the § 103(a) rejections. In my opinion, the inventions embodied by claims 1 through 4 of the '895 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. ¶ 32. However, while the Lamm Declaration (¶¶ 33-44) might demonstrate a nexus between industry standard video monitors and standards promulgated by the Video Electronics Standards Association (VESA), the Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 11 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 '895 patent. Indeed, Lamm does not indicate whether the standards- setting committee was even aware of the '895 patent. Moreover, we have uncontested testimony in the Richter Declaration (¶¶ 46-55) that the VESA standards were developed independently, and commenced before the priority date of the '895 patent (¶ 48). In particular, Mr. Richter alleges that development of the “DDC” standard (¶ 49), 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 '895 patent. Richter Decl. ¶¶ 50-53. 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 alternatives. However, Owner has cited no authority for the proposition that Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 12 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 '895 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. Claims 2 through 4, not separately argued, fall 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 of the decision of the examiner on that claim, except as to any ground Appeal 2012-003164 Reexamination Control 95/000,456 Patent US 6,686,895 B2 13 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 1-4 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 ack cc: FOR PATENT OWNER: DECHERT, LLP P.O. 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