Ex Parte Takagi et al

Board of Patent Appeals and Interferences

May 31, 2012

10058036 (B.P.A.I. May. 31, 2012)

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.
10/058,036 01/29/2002 Toshihiro Takagi 3064IT/50896 2683
7590 05/31/2012
Crowell & Moring, L.L.P.
P.O. Box 14300
Washington, DC 20044-4300
EXAMINER
SHEPARD, JUSTIN E
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
05/31/2012 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
____________________

Ex parte TOSHIHIRO TAKAGI, YUSUKE NISHIDA, and
KAZUHIDE ISHIHARA
____________________

Appeal 2009-011168
Application 10/058,036
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011168
Application 10/058,036

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a non-final
rejection of claims 1, 4, 5, and 8-10. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 2, 3, 6, and 7 are canceled.
We AFFIRM.
Introduction
According to Appellants, the invention relates to a channel selection
device in a broadcasting receiver for receiving the digital/analog broadcasts.
When an instruction of a main/sub-channel change is given by ten keys,
inputting by "-" key causes the main channel being currently received to be
fixed, and a display device to OSD display a state of waiting for the sub-
channel. (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A channel selection device in the digital/analog
broadcasting receiver comprising:
a receiver for receiving coded digital/analog broadcasting
signals transmitted from a broadcasting station;
a digital/analog decoder for decoding the digital/analog
broadcasting signals received by the receiver and outputting
them to an image-displaying display device connected to the
broadcasting receiver;
a memory for storing a channel information included in
the broadcasting signals decoded by the digital decoder;
a control unit for controlling the device; and
an input device used for a user to input an operation
instruction including the channel selection to the control unit,
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wherein the digital broadcasting signals have one or a
plurality of sub-channels to transmit contents in one main
channel,
wherein the input device has a predetermined operation
key to which an operation instruction is assigned to fix the
channel, in addition to numerical-value input keys for inputting
the channel number,
wherein the control unit fixes the main/sub-channel
selected by the following first or second selecting procedure in
response to the operation instruction from the input device
during the reception of the broadcast by the broadcasting
receiver,
wherein the first selecting procedure, when receiving an
instruction by the predetermined operation key that is not
preceded by the numerical-value input keys, fixes the main
channel being currently received, and waits for the sub-channel
number input, and then fixes the sub-channel of the number of
the numerical value inputted by the numerical-value input keys,
and
wherein the second selecting procedure, when receiving
the input of a numerical value by the numerical-value input
keys, and then receiving the input by the predetermined
operation key, fixes the main channel of the number of the
inputted numerical-value, and waits for the sub-channel
number input, and then fixes the sub-channel of the number of
the numerical value inputted by the numerical-value input keys.

Prior Art
Noguchi US 6,163,345 Dec. 19, 2000
Shintani US 6,661,472 B2 Dec. 9, 2003
Ellis US 6,766,526 B1 Jul. 20, 2004

Appeal 2009-011168
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Rejections
Claims 1, 4, 5, and 8-10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shintani, Ellis, and Noguchi.

GROUPING OF CLAIMS

Based upon Appellants’ arguments, we select representative claim 1
to decide this appeal for the group consisting of claims 1, 4, 5, and 8-10.
(See App. Br. 8-36).
We accept Appellants’ grouping of the claims. We have only
considered those arguments that Appellants actually raised in the Briefs.
Arguments Appellants could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2009).

ISSUE
35 U.S.C. § 103(a): claims 1, 4, 5, and 8-10
Appellants assert their invention is not obvious over Shintani, Ellis,
and Noguchi because the combination does not teach or suggest “wherein
the first selecting procedure, when receiving an instruction by the
predetermined operation key that is not preceded by the numerical value
input keys, fixes the main channel being currently received, and waits for the
sub-channel number input, and then fixes the sub-channel of the number of
the numerical value inputted by the numerical-value input keys” (App. Br. 8-
36). Specifically, Appellants contend Noguchi does not teach or suggest
numerical-value input keys, main and sub-channels, and fixing main or sub-
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channels (App. Br. 10-15). Appellants further argue Shintani and Ellis both
require an initial input of numerical-value keys (App. Br. 16-31). Moreover,
Appellants assert the combination would result in a very complex sub-
channel selection technique and the Examiner is using improper hindsight
reconstruction (App. Br. 32-34).

Issue: Has the Examiner erred in finding the combination of Shintani,
Ellis, and Noguchi would have taught or suggested “wherein the first
selecting procedure, when receiving an instruction by the predetermined
operation key that is not preceded by the numerical value input keys, fixes
the main channel being currently received, and waits for the sub-channel
number input, and then fixes the sub-channel of the number of the numerical
value inputted by the numerical-value input keys,” as recited in claim 1?

ANALYSIS
We agree with the Examiner’s findings and conclusions (Ans. 3-15)
and adopt them as our own. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows. Initially, we note
Appellants have defined “fixed” as “decided” (Spec. 15, l.7), and thus,
Appellants’ arguments that the interpretation is not reasonable (App. Br. 14-
15) are unpersuasive.
We also note Appellants seem to be arguing the references
individually. The Examiner is relying on a combination Ellis, Noguchi, and
Shintani. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
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(See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).)
Further, “[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference” but rather “what the combined teachings of the references would
have suggested to those of ordinary skill in the art” (In re Keller, 642 F.2d
413 ). Here the Examiner is relying Ellis’s teaching of a device for main/sub
channel selection and Noguchi’s teaching of a device where the main
channel is fixed even when the predetermined operation key is not preceded
by the numerical-value input keys (Ans. 4-5). Thus, the Examiner is relying
on the techniques of Ellis and Noguchi being incorporated into the system of
Shintani. Our reviewing courts have held that a combination of such known
elements performing their known functions to yield predictable results “is
likely to be obvious” (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406, 416
(2007)).
Additionally, we are not persuaded that the Examiner used hindsight
(App. Br. 34). If a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill. KSR, 550 U.S. at 417.
Appellants have presented no persuasive evidence or argument that using
keys other than numerical keys to decide the main channel would have been
beyond the skill of an ordinary artisan or more than just a simple substitution
of techniques for entering information.
Accordingly, the Examiner did not err in finding the combination of
Shintani, Ellis, and Noguchi would have taught or suggested “wherein the
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first selecting procedure, when receiving an instruction by the predetermined
operation key that is not preceded by the numerical value input keys, fixes
the main channel being currently received, and waits for the sub-channel
number input, and then fixes the sub-channel of the number of the numerical
value inputted by the numerical-value input keys” as recited in independent
claim 1 and commensurately recited independent claim 8. Dependent claims
4, 5, 9, and 10 were not separately argued and thus fall with their respective
independent claim. Therefore, the Examiner did not err in rejecting claims
1, 4, 5, and 8-10 under 35 U.S.C. § 103(a) for obviousness over Shintani,
Ellis, and Noguchi.

DECISION
The Examiner’s rejection of claims 1, 4, 5, and 8-10 under 35 U.S.C.
§ 103(a) as being obvious over Shintani, Ellis, and Noguchi is 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) (2010).

AFFIRMED

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