Ex Parte 6169368 et al

Patent Trial and Appeal Board

Jun 5, 2014

90012089 (P.T.A.B. Jun. 5, 2014)

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.
90/012,089 01/11/2012 6169368 29192-01A 1235
34238 7590 06/06/2014
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/06/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADFLASH LIMITED1
Patent Owner, Appellant
____________

Appeal 2014-0025212
Reexamination Control 90/012,089
Patent US 6,169,3683
Technology Center 3900
____________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
DANIEL N FISHMAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Spectrum Motion Media, Ltd is the real party in interest. App. Br. 2.
2 An oral hearing was held in this appeal on May 21, 2014. A transcript of
that hearing will be included in the record in due course.
3 Issued Jan. 02, 2001 to Margetson et al. (hereinafter the “Margetson
Patent”).
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STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 from the Examiner’s final rejection of claims 1-11, 16,
and 17. Claims 12-15 are not subject to this reexamination. App. Br. 4. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.

Appellant’s Invention
Appellant invented a signal information system including a main
computer containing a plurality of programs for coordinating visual
information systems located along the side of a train track. Each visual
information system (Fig. 2) includes an array of individually selectable light
sources (2), a memory (12) for storing a corresponding program, and a
controller (10) for controlling the selection and sequence of the light
sources. See generally the ‘Margetson Patent’, Abstract.

Claim 1 is representative of the claimed invention and reads as
follows:

1. An arrangement comprising a main computer arranged to store a
plurality of different programs, each program representing a respective
image, and a plurality of visual information systems, each system having:

an array consisting of a plurality of individually and selectively
energizable light sources arranged in rows and columns;

a memory for storing a program for producing a full predetermined
image;
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a controller actuatable to control the selection and sequence of
energization of the light sources within a predetermined time span in
accordance with the predetermined program stored in the memory, so that a
viewer observing the array and being carried past the array at a
predetermined speed will observe, immediately following said
predetermined time span, the predetermined image as an apparently
stationary image occupying an area substantially larger than the area of said
array; and

said main computer being operable to replace the program stored in
said memories with one of said different programs stored in said main
computer.

Prior Art Relied Upon

The Examiner’s Answer cites the following prior art references:
Swanson US 3,932,746 Jan. 13, 1976
Bell US 4,470,044 Sept. 4, 1984
Lock EP 0156544 Feb. 10, 1985
Swinehart US 4,726,388 Feb. 23, 1988
Spaulding US 5,108,171 Apr. 28, 1992
Mayo US 5,133,081 July 21, 1992
Tokimoto US 5,202,675 Apr. 13, 1993
Belcher US 5,302,965 Apr. 12, 1994

Rejections

The Examiner rejects the claims on appeal as follows:
1. Claims 1, 3/1, 4, and 7-11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Tokimoto and
Belcher.
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2. Claims 2 and 3/2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tokimoto, Belcher, and
Mayo.
3. Claims 5, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Tokimoto, Belcher,
and Spaulding.
4. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tokimoto, Belcher, and
Swanson.

ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 4-15, and Reply Br. 2-10.4

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding Tokimoto and Belcher are properly combined to teach or suggest a
main computer operable to replace a program stored in the memories of a
plurality of visual information systems with one of a plurality of programs
stored on the computer, as recited in claim 1?

4 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed Aug. 14, 2013), the Reply Brief (filed Dec.
20, 2013), and the Answer (mailed Oct. 24, 2013) for the respective details.
We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Any other arguments Appellant could have
made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2013).
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Appellant argues the proffered combination of references does not
teach or suggest the disputed limitations emphasized above. App. Br. 5-13,
Reply Br. 2-9. First, Appellant argues although Tokimoto discloses a
plurality of visual information systems, they share a single memory (data
forming zone) as opposed to each visual information system containing a
separate memory. App. Br. 5, 9; Reply Br. 2, and Mr. Beadman’s Decl.
[18]. Further, Appellant argues the Examiner erred in concluding the
ordinarily skilled artisan would have found it obvious to install a plurality of
visual information systems, each with a separate memory, along the side of
the train track to display images in different areas of a tunnel. Reply Br. 4.5
According to Appellant, the Examiner’s reliance upon common sense does
not satisfy the substantial evidence standard because the Examiner has
presented no evidence on this record to substantiate the cited conclusion.
Moreover, Appellant submits the Examiner’s proposition to include a
separate memory in each of Tokimoto’s plurality of visual information
systems, as opposed to the systems sharing a single memory, would be
prohibitively expensive at the time of invention, and would thereby vitiate
Tokimoto’s disclosure. Id. at 5-6. Additionally, Appellant argues Belcher’s
disclosure of a single visual information system containing a moving unit
and a static unit within which a computer system can remotely replace a
memory would not remedy the noted deficiencies of Tokimoto. App. Br.

5 Appellant’s argument that Examiner’s conclusion constitutes a new ground
of rejection is not an appealable matter, which can be properly brought
before us. Such matter should be directed to the Director of the Central
Reexamination Unit. We, nonetheless, note that because Appellant availed
themselves in the Reply Brief of the opportunity to address the merit of this
alleged new ground of rejection, such issue is moot.
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10-11; Reply Br. 6. Consequently, Appellant submits the Examiner has not
provided a sufficient rationale to support modifying Tokimoto’s visual
information systems with Belcher’s computer to replace the memories in the
information systems with one of a plurality of programs stored on the
computer. Id. Last, Appellant argues the Examiner has failed to consider
evidence of unexpected results, and praises of others whereby the computer
serving as a memory bank, as well as coordinating and adjusting the
memories in each visual information system to thereby achieve a more stable
and better quality image. App. Br. 11-12, and Mr. Beadman’s Decl. [19]-
[25]. Similarly, Appellant argues the Examiner ignored “praises of others”
regarding from which video images (advertisements) are downloaded
remotely to all systems locations. App. Br. 13.
Based upon our review of the record before us, we find no error in
the Examiner’s obviousness rejection regarding claim 1. We note at the
outset, as laid out in the preceding paragraph, Appellant does not dispute the
Examiner’s finding that Tokimoto teaches a plurality of visual information
systems, each including a separate light array, a separate controller, but the
systems sharing a single memory. However, Appellant mainly challenges
the Examiner’s finding, at the time of the invention, it would have been
obvious to allow each of the systems to have a separate memory for storing a
program to produce a full predetermined image. Likewise, Appellant does
not dispute that Belcher discloses a computer to manage memory banks for
single displays, but nonetheless challenges the Examiner’s finding that
Belcher’s main computer could be used to coordinate the operation of
Tokimoto’s visual information systems. App. Br. 11-12; Ans. 6-9.
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Therefore, the pivotal issue before us turns on whether Tokimoto and
Belcher are properly combined to teach the disputed limitations set forth
above. We answer this inquiry in the affirmative.
Appellant is reminded the U.S. Supreme Court has held “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int'l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further instructs that:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.

Id. at 418.
The Court also instructs that:
“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness”. . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.

Id. (citation omitted).
Additionally, the Court instructs that “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.” Id. at 417.

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This precedent is controlling here, and the application of the cited
legal principles to the facts of this appeal provides us with the necessary
guidance in affirming this obviousness rejection. First, we agree with the
Examiner that, at the time of invention, the mere duplication of the memory
in Tokimoto’s first embodiment to allow each of the visual information
systems to have a separate memory would be an obvious endeavor within
the purview of the ordinarily skilled artisan. Ans. 6. Such a modification
would allow each of the visual information systems to independently store
and manage its own images. Thus, while Appellant correctly argues the
Examiner’s findings must be supported by substantial evidence, Appellant is
also reminded that such evidence should be viewed consistent with
controlling authorities. We also recognize that while the high cost of
memory, as advanced by Mr. Beadman during the personal interview, would
have made this proposed modification cost ineffective at the time of the
invention, such high cost would not impinge upon the predictable result that
would ensue from the proffered modification.
Second, we agree with the Examiner that Belcher’s disclosure of
using a computer to manage memories could be extended to manage the
visual memories in Tokimoto’s modified visual information systems to
thereby synchronize the display of images therein. Ans. 6-9. To the extent
Appellant’s arguments challenge the Examiner’s rationale to combine the
references, we find the ordinarily skilled artisan, being a creative individual,
would have been able to fit the cited teachings of Tokimoto and Belcher
together like pieces of a puzzle to predictably result in the disputed
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limitations.6 In particular, we agree with the Examiner that the proffered
combination would predictably result in a computer system that manages
images in separate memories of visual information systems arranged along a
tunnel. Ans. 7. We further agree with the Examiner that the proffered
combination would permit reprogramming the visual information systems to
display different images for desired applications. Id. at 8. While it may be
necessary for an Examiner to identify a reason for modifying the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some rational underpinning to substantiate the obviousness rejection,
such a conclusion is proper. In this case, the afore-cited rationale provided
by the Examiner is more than just a mere conclusory statement. In our view,
such a statement suffices as an articulated reason with a rational
underpinning to support the proffered combination. As noted above, the
case law allows the Examiner to look to the state of the prior art, including
the knowledge of the ordinarily skilled artisan, to arrive at such a reason for
combining the known elements of the prior art. Consequently, the
Examiner’s reliance upon widely available knowledge in order to arrive at
an articulated reason with a rational underpinning to support the proffered
combination is proper.

6 “It is common sense that familiar items may have obvious uses beyond
their primary purposes, and a person of ordinary skill often will be able to fit
the teachings of multiple patents together like pieces of a puzzle.” KSR, 550
U.S. at 402. Courts should “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at
418.
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Third, we agree with the Examiner that because Appellant has not
provided any nexus between the disputed claim limitations and the evidence
of unexpected results/praise of others set forth in the Briefs/Declaration,
Appellant’s arguments are not commensurate with the scope of the claim.
Ans. 9-11. We are therefore satisfied that because the proposed combination
would predictably result in a system that can allow a computer to remotely
manage memories in different visual information systems to selectively
display desired images stored on the systems, the proffered combination
teaches or suggests the disputed limitations. It follows Appellant has not
shown error in the Examiner’s rejection of claim 1.
Regarding the rejections of claims 2-11, 16, and 17, because
Appellants have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above, claims 2-11, 16, and
17 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2013).

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1-11, 16, and 17 as being unpatentable under
35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1-11, 16, and 17
under 35 U.S.C. § 103(a).

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TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

rwk

For Patent Owner:

ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN CT 06509-1950

For Third Party Requester:

ADE & COMPANY INC.
2157 HENDERSON HIGHWAY
WINNIPEG, MB R2G1P-9,
CANADA