Ex Parte IMAI et al

Patent Trial and Appeal Board

Mar 10, 2016

12078759 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/078,759 04/04/2008
27562 7590 03/14/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Daiji IMAI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MEN-1506-44 4989
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
03/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAIJI IMAI, MASA YOSHI TANIMURA, AKIRA OZA WA,
MASANOBU SAKATA, and TOMOKAZU TSURUOKA
Appeal2014-005104
Application 12/078,759
Technology Center 2400
Before DAVID M. KOHUT, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-23, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real parties in interest are Nintendo Co., Ltd.
and Hal Laboratory Inc. App. Br. 3.
Appeal2014-005104
Application 12/078,759
STATEMENT OF THE CASE
Introduction
Appellants' present patent application relates to a display control
apparatus that provides a control signal to a display apparatus to switch
between audio/video signals provided by the display control apparatus and
other devices. Spec. ,-i 5. Claim 1 is illustrative of the subject matter on
appeal and reads as follows:
1. A display control apparatus that is adapted to connect to a
display apparatus that
is separate from the display control apparatus, the display
apparatus set to be remotely controllable using wireless
communication, the display apparatus including a first input for
accepting a first video/audio signal from the display control
apparatus and a second input for accepting a second video/audio
signal from a device other than the display control apparatus, the
display control apparatus comprising:
a wireless transceiver; and
a processing system that includes at least one processor,
the processing system configured to:
generate the first video/audio signal to display a first
image on the display apparatus;
output the first video/audio signal to the display apparatus;
store a first signal pattern indicative of a command to
cause the display apparatus to display the first image based on
the first video/audio signal;
store a second signal pattern indicative of a command to
cause the display apparatus to display a second image that is
based on the second video/audio signal, which is provided to the
display apparatus from the device different from the display
control apparatus;
select a signal pattern between at least the first signal
pattern and the second signal pattern;
2
Appeal2014-005104
Application 12/078,759
output, via the wireless transceiver, a wireless signal
having the selected signal pattern to the display apparatus,
wireless signal set to cause the display apparatus to use the
respective first or second input; and
output information to a user, via another apparatus that is
different from the display apparatus, the outputted information
being in accordance with the selected signal pattern of the
outputted wireless signal.
The Examiner's Rejections
Claims 1-5 and 14-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kinoshita (US 2006/0158838 Al; July 20, 2006)2 and
Horiuchi (US 2004/0237115 Al; Nov. 25, 2004). See Final Act. 2-6.
Claims 6, 7, 9-11, and 18-22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Kinoshita, Horiuchi, and Brodersen (US 2008/0165202
Al; July 10, 2008). See Final Act. 6-13.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kinoshita, Horiuchi, Brodersen, and Ishii (US 2008/0143734 Al; June 19,
2008). See Final Act. 13.
Claims 12 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kinoshita, Horiuchi, and Ohta (US 2007/0072674 Al;
March 29, 2007). See Final Act. 14-15.
2 In the Final Action, the Examiner relied upon the Kinoshita patent
application (US 2006/0158838 Al). However, some of the Examiner's
citations were to the issued Kinoshita patent (US 7,880,816 B2; Feb. 1,
2001 ). The substance of the Kinoshita patent and Kinoshita application is
identical in all relevant aspects. All citations in this opinion are to the issued
Kinoshita patent.
3
Appeal2014-005104
Application 12/078,759
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kinoshita, Horiuchi, Ohta, and Gospel (US 6,753,928 Bl; June 22,
2004). See Final Act. 16-17.
ANALYSIS
The Examiner rejected claim 1 as unpatentable over Kinoshita and
Horiuchi. See Final Act. 6-13. The Examiner finds Kinoshita teaches a
"processing system configured to ... generate the first video/ audio signal to
display a first image on the display apparatus," "output the first video/audio
signal to the display apparatus," and "output ... a wireless signal having the
selected signal pattern to the display apparatus, wireless signal set to cause
the display apparatus to use the respective first or second input." Final Act.
3 (citing Kinoshita Abstract, Fig. 1, Fig. 5A, Fig. 6, 4:29-64, 5:27--40). In
particular, the Examiner finds Kinoshita teaches a digital TV that includes a
receiving unit for receiving audio/video input signals and a remote
controlling unit for receiving a control signal from a remote control. Ans. 3.
The Examiner finds Kinoshita therefore teaches an audio/video signal as
well as a signal for selecting the TV input. See id.
Appellants argue the Examiner erred finding Kinoshita teaches a
"processing system configured to ... output the first video/audio signal to
the display apparatus" because Kinoshita's remote control only sends a
wireless signal to select the input for the TV, not a video/audio signal that
serves as an input to the TV. App. Br. 13. In other words, Appellants
contend that Kinoshita's remote selects between TV input sources, but none
of those input sources are the remote control itself. App Br. 14.
4
Appeal2014-005104
Application 12/078,759
We are persuaded the Examiner erred in finding Kinoshita teaches or
suggests the disputed limitations. Kinoshita teaches a remote control that
sends only control signals to a digital TV to select an input, not audio/visual
signals. Kinoshita 4:29-64. There are a variety of inputs, including a game
machine, DVD apparatus, and video cassette apparatus. Kinoshita 4:7-10.
However, Kinoshita does not teach or suggest the remote control supplying
one of those inputs to the TV by outputting a "video/audio signal" as
required by claim 1. See App. Br. 12-14. The Examiner does not cite to
Horiuchi for the disputed claim limitation. Accordingly, we find the
Examiner has not demonstrated that the combination of Kinoshita and
Horiuchi teaches this limitation. We, therefore, do not sustain the rejection
of independent claim 1. 3
CONCLUSIONS
On the record before us and in view of the analysis above, we are
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 1. Therefore, we do not sustain the rejection of claim 1, independent
claims 15, 18, 19, and 20 which recite similar limitations, and claims 2-14,
16, 17, and 21-23 dependent therefrom.
DECISION
The decision of the Examiner to reject claims 1-23 is reversed.
3 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the appeal, we do not reach the additional issues
raised by Appellants' arguments.
5
Appeal2014-005104
Application 12/078,759
REVERSED
6