Ex Parte Bonnett

Board of Patent Appeals and Interferences

May 30, 2012

10235365 (B.P.A.I. May. 30, 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.
10/235,365 09/05/2002 Craig Eugene Bonnett GP-302265 2747
81466 7590 05/30/2012
MacMillan, Sobanski & Todd, LLC
One Maritime Plaza
720 Water Street
5th Floor
Toledo, OH 43604
EXAMINER
VO, TUNG T
ART UNIT PAPER NUMBER
2486
MAIL DATE DELIVERY MODE
05/30/2012 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 CRAIG EUGENE BONNETT
____________

Appeal 2011-000891
Application 10/235,365
Technology Center 2400
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and CARLA M. KRIVAK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 33, 38, 43, and 48-52. Claims 1-32, 34-37, 39-42, and 44-47 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a vehicular entertainment system
including a projector and a screen having a plurality of micro-perforations
(see Fig. 11A, Spec. ¶¶ [0044] - [0045]). Claim 33, which is illustrative of
the invention, reads as follows:
33. A vehicular entertainment system, wherein the
vehicle includes a headliner, a trunk, and a rear seat including a
pivotable armrest, comprising:
a projector that is hidden by and located behind the
armrest in the trunk when the armrest is in a stowed position
and is operable when the armrest is pivotably deployed; and
a screen including a plurality of micro-perforations
deployable from the headliner for receiving an image projected
from the projector.
The Rejection
Claims 33, 38, 43, and 48-52 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Egle (US 6,733,133 B2), Lang (US 4,779,923),
and Hill (US 4,673,609).
Appellant’s Contentions
With respect to claims 33, 38, and 43, Appellant’s arguments do not
challenge the teachings of Hill related to the micro-perforated screen (App.
Br. 6) and are focused on the propriety of combining Egle and Lang.
Appellant contends that the Examiner erred in rejecting the claims as
obvious over Egle, Lang, and Hill because Egle teaches away from being
modified by the teachings of Lang, which is related to a refrigerator (App.
Br. 5). Appellant specifically argues that the proposed modification would
defeat the purpose of “having the speakers and microphone in an
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advantageous position for operation as a video telephone” which is
identified by Egle as one of the uses for the projector system (App. Br. 6).
Additionally, Appellant asserts that, based on the disclosures of the
references, the Examiner’s stated reason for the combination that Egle’s
projector and Lang’s refrigerator are both electric devices is not proper
(App. Br. 6). Appellant states that the way Lang’s refrigerator may be used
or is folded into a rear package shelf is not relevant to Egle’s projector
because the two devices have very different uses and require different
considerations for their locations (id.).
With respect to claim 48, Appellant contends that the recited feature
“wherein the projector is configured to be operable to project an image on
the screen while located in the trunk” is not met by Egle’s folding projector
or Lang’s refrigerator (App. Br. 7).
With respect to claims 49-52, relying on the same reasons outlined for
claim 33, Appellant merely repeats the claim limitations and concludes that
none of the references teaches or suggests such limitations (App. Br. 7-8).
Issue on Appeal
Has the Examiner erred in rejecting the claims as being obvious over
Egle, Lang, and Hill because there is no suggestion or teaching for making
the proposed combination?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
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forth by the Examiner in the Examiner’s Answer (see Ans. 7-9) in response
to Appellant’s Appeal Brief. However, we highlight and address specific
findings for emphasis as follows.
We agree with the Examiner that Egle’s projector is used as a part of a
video entertainment system (Ans. 7). That is, although Egle describes using
the system also as a video telephone having speakers and a microphone
connected to the housing (see col. 2, ll. 31-33); such acoustic devices are not
needed to be connected to the projector when the system functions as an
entertainment system. Therefore, contrary to Appellant’s contention (App.
Br. 5), placing Egle’s projector behind the arm rest in the trunk as claimed
would not defeat the purpose of having speakers in any specific location. In
fact, no attached speakers or microphones are required in Egle for the
arrangement to operate as an entertainment system.
We are also unpersuaded by Appellant’s argument that the projector
of Egle and the refrigerator of Lang have different uses and considerations
for their installation such that a person of ordinary skilled in the art would
not have looked to the other reference and would not have found it obvious
“to replace the refrigerator of Lang with the projector of Egle” (Reply Br. 4-
5). As stated by the Examiner (Ans. 8), similar to the placement of the
refrigerator in Lang, an ordinary skilled artisan would have found it obvious
to place other devices behind the armrest in the trunk such that the device is
accessible and operable when the armrest is pivotably deployed. We must
point out, however, that all of the features of one reference need not be
bodily incorporated into the other reference (see In re Keller, 642 F.2d 413,
425 (CCPA 1981).
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In other words, the teaching value of Lang is in the placement of a
device behind the armrest such that the device is hidden when the armrest is
stowed and is operable when the armrest is deployed (see, e.g., Lang, Figs.
1-2; col. 2, ll. 40-51). In that regard, the Supreme Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem . . . . Common
sense teaches [. . .] that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted).
Accordingly, we find no error in the Examiner’s finding that placing the
projector of Egle behind the armrest involves similar considerations
resulting in an arrangement wherein Egle’s projector is operable when the
armrest is deployed (Ans. 8). Therefore, the 35 U.S.C. § 103(a) rejection of
claim 33, as well as claims 38 and 43 not argued separately (see App. Br. 6),
is sustained.
Regarding Appellant’s contentions challenging the propriety of the
rejection of claims 48-52 and whether the proposed combination teaches or
suggests all the claimed features, we also agree with the Examiner’s analysis
and reasoning (see Ans. 9) and adopt them as our own. We therefore sustain
the 35 U.S.C. § 103(a) rejection of these claims.

CONCLUSIONS
1. The Examiner did not err in combining Egle, Lang, and Hill, to
reject claims 33, 38, 43, and 48-52.
2. Claims 33, 38, 43, and 48-52 are not patentable.
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DECISION
The decision of the Examiner rejecting claims 33, 38, 43, and 48-52 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).

AFFIRMED

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