Ex Parte 6639588 et al

Board of Patent Appeals and Interferences

Jun 29, 2012

95000455 (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.
95/000,455 04/27/2009 6639588 INNL-003/00US
307699-2005
1217
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 2012-002715
Reexamination Control 95/000,455
Patent US 6,639,588 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

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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 1-5, which were entered
by the Board in a previous Decision, 2011-006035 (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 through 5 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 '588 patent relates to a display apparatus capable of adjusting the
display picture by a control instruction from an external computer. '588
patent Abstract.
Figure 6 of the patent is reproduced below.

1 This appeal is related to the inter partes reexamination of US 6,686,895 B2,
Control No. 95/000,456, Appeal No. 2012-003164, and to the inter partes
reexamination of US 6,304,236 B1, Control No. 95/000,460, Appeal No.
2012-007868.
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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.
'588 patent col. 7, ll. 22-24.
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. 24-62.
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Representative Claim
1. A display apparatus which displays an image based on
a video signal, comprising:

a memory which stores data regarding said display
apparatus;

a receiver connected to said memory and an interface,
said receiver receives a control signal from an external
computer via said interface, wherein said control signal
includes an instruction for reading out said data from said
memory and is generated based on software for operating said
external computer, said external computer being separate from
said display apparatus; and

a transmitter connected to said interface, said transmitter
transmits an acknowledge signal to acknowledge receiving said
control signal at said receiver to said external computer;

wherein said display apparatus displays an image based
on a video signal received from said external computer via said
interface.

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 1-5:
Claims 1-5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Webb and RS232C.
Claims 1-5 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
an instruction in 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
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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 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 Sept. 12, 2011) (“Richter Decl.”), paragraphs 16
through 24, to be the more credible.
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. Further, we find the Richter
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Declaration to provide a more credible account than the Lamm Declaration’s
theories (¶¶ 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 register value without
querying the monitor. Richter Decl. ¶ 25; Webb col. 16, ll. 24-42, 51-55;
'588 patent col. 1, ll. 32-36.

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. ¶¶ 32-39) 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.
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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 (¶ 40) 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).
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. ¶
37. 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
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“reception confirmation signal” is that the RS232C specification describes
the signal as optional. See Lamm Decl. ¶ 21.

III. Controlling the image in accordance with
the data read out of the memory

Owner also contends that Webb fails to teach or suggest that the size
and location of the image is controlled in accordance with the data read out
from the memory, as recited in claim 3, which depends from claim 1.
However, we agree with the Examiner and Requester that Webb
teaches that the size and location of the image is controlled in accordance
with the data read out from the memory.
Webb teaches that “RAM memory 124 contains previously stored
data used by the digital control circuit 150 to control the various static and
dynamic functions of the associated video monitor 102.” Col. 17, ll. 42-45.
Vertical and Horizontal Size and Position are adjustments that may be made
to the monitor. Webb, e.g., at col. 8, ll. 14-24. Moreover, the subject patent
admits that conventional display units included a memory in which
information relative to display positions and sizes is stored. '588 patent
col. 1, ll. 32-36.

IV. 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 '588 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 '588 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 '588
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 '588 patent.
Owner also submits the Lamm Declaration in rebuttal to the § 103(a)
rejections.
In my opinion, the inventions embodied by claims 1
through 5 of the '588 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
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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 '588 patent. Indeed, Lamm does not indicate whether the standards-
setting committee was even aware of the '588 patent.
Moreover, we have uncontested testimony in the Richter Declaration
(¶¶ 48-55) that the VESA standards were developed independently, and
commenced before the priority date of the '588 patent (¶ 50). In particular,
Mr. Richter alleges that development of the “DDC” standard (¶ 51), 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
'588 patent. Richter Decl. ¶¶ 52-55. 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 '588 patent and any
commercial success as indicated by widespread adoption by the computer
monitor industry has not been established.

V. Summary/Conclusion
We find that a preponderance of the evidence supports the conclusion
that the subject matter as a whole of representative claims 1 and 3 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 claims 1 and 3 over Webb
and RS232C. Claim 2, 4, and 5, 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
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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 1-5 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

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DECHERT, LLP
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MOUNTAIN VIEW, CA 94039-0460

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