Ex Parte Jung

Patent Trial and Appeal Board

Feb 20, 2013

11698804 (P.T.A.B. Feb. 20, 2013)

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.
11/698,804 01/26/2007 Jin-Woo Jung 678-2675 (P13895) 4811
66547 7590 02/21/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
AFOLABI, MARK O
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
02/21/2013 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 JIN-WOO JUNG
____________

Appeal 2011-012463
Application 11/698,804
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-012463
Application 11/698,804

2
STATEMENT OF THE CASE
Appellant's claimed invention "relates to an image communication
terminal, and more particularly to an image communication terminal for
providing superior image communications and a method of processing
image communication data in the image communication terminal." (Spec
1:16-19).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An image communication terminal, comprising:

a main processor for performing a control operation in
accordance with image communications, decoding an inputted video
data from a modem processor in the image communications,
outputting the decoded video data to a display, and encoding a video
data from images photographed through a camera and outputting the
encoded video data to the modem processor; and

the modem processor for processing data in accordance with
radio communications, dividing image communication data received
from a communication network in the image communications into
video and audio data, outputting the divided video data to the main
processor, decoding the divided audio data and outputting the decoded
audio data to a speaker, and encoding audio signals inputted from a
microphone and combining the encoded audio signal with the encoded
video data inputted from the main processor to transmit the combined
audio signals and video data to the communication network,

wherein the main processor is distinct from the modem
processor

REFERENCES and REJECTIONS
The Examiner rejected claims 1, 2, 4-6, 8, and 9 under 35 U.S.C.
Appeal 2011-012463
Application 11/698,804

3
§ 103(a) based upon the teachings of Strandwitz (US Patent No.: US
6,522,352 B1) and Lee (US Patent Application Publication No. US
2003/0117585 A1). (Ans. 4-10).
The Examiner rejected claims 3 and 7 under 35 U.S.C. § 103(a) based
upon the teachings of Strandwitz, Lee, and further in view of Rasanen (US
Patent Application Publication No. US 2004/0028037 A1). (Ans. 10-12).

ANALYSIS
Appellant's arguments generally consist of repeating the Examiner's
basic proposition, repeating the language of the claim, and addressing the
teachings of each reference in a paragraph and then concluding that the
combination does not teach:
the combination of Strandwitz and Lee may teach the use of two
processors, one having a communications controller, and
another having encoding/decoding modules for video, still
images and audio. The combination of Strandwitz and Lee fails
to teach or suggest a first processor that encodes/decodes video
data and a second processor that both encodes/decodes audio
data and processes data for radio communications, as recited in
Claim 1. Specifically, the combination of Strandwitz and Lee
fails to disclose a first processor that outputs decoded video
data to a display and encoded video data to a second processor,
and the second processor that outputs decoded audio data to a
speaker and encoded video data to the first processor, as recited
in Claim 1. Therefore, Claim 1 is patentable over the
combination of Strandwitz and Lee.
(App. Br. 6-7). We find the functions and processing to be taught by the
combined teachings of the two prior art references. Appellant has identified
no unpredictable results from the mere placement of the various processors
Appeal 2011-012463
Application 11/698,804

4
and the labels attached thereto. Therefore, Appellant's argument is not
persuasive of error in the Examiner's conclusion of obviousness.
The Supreme Court guides that "when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (citation omitted).
A claimed modification to the prior art may be obvious if the claimed
structure performs the same function as in the prior art and it presents no
novel or unexpected result over the prior art. See In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (use of claimed feature solves no stated problem and
presents no unexpected result and "would be an obvious matter of design
choice within the skill of the art") (citations omitted). However, when the
claimed structure performs differently from the prior art, a finding of
obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir.
1992) (finding of obvious design choice precluded when claimed structure
and the function it performs are different from the prior art). Here,
Appellant has not identified that the claimed structure performs different
functions than in the prior art. Therefore, Appellant's mere arguments that
the functions are located/performed in a different processor are unpersuasive
of error in the Examiner's conclusion of obviousness.
The Supreme Court has provided clear guidance that "when a patent
'simply arranges old elements with each performing the same function it had
been known to perform' and yields no more than one would expect from
such an arrangement, the combination is obvious." KSR, 550 U.S. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). "Common
Appeal 2011-012463
Application 11/698,804

5
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." Id.
at 420. Moreover, "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. at 418. This reasoning is applicable here. Thus,
on this record, we are not persuaded of error regarding the Examiner’s
proffered reason for combining the cited references.
We find that the claimed invention is no more than a simple
arrangement of old elements with each performing the same function it had
been known to perform, yielding no more than one would expect from such
an arrangement. KSR, 550 U.S. at 416. The skilled artisan would "be able
to fit the teachings of multiple patents together like pieces of a puzzle" since
the skilled artisan is "a person of ordinary creativity, not an automaton." Id.
at 420-21. As stated by the Supreme Court, "an obviousness] 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. at 418.
See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
With respect to independent claim 1, the Examiner in the responsive
arguments identifies that the labels attached to the two processors is broad
and that the claims must be given their broadest reasonable interpretation.
(Ans. 12-15) (citations omitted). We agree with the Examiner and find that
the Appellant has not identified functions which are not taught or suggested
Appeal 2011-012463
Application 11/698,804

6
in the prior art teachings, but that the functions are performed by a different
labeled processor. We find such arguments to be unpersuasive of error in
the Examiner's conclusion of obviousness. We further find that the prior art
references clearly recognize multiple processors to process the functions of
audio and video and outputting the processed signals.
Appellant's Reply Brief essentially repeats the same arguments set
forth in the Appeal Brief which copy the claim language and maintain that
the prior art fails to teach or suggest the claimed invention. (Reply Br. 1-5).
We find Appellant's arguments to be unpersuasive of error in the Examiner's
conclusion of obviousness. Attorney's arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). "Argument in the brief does
not take the place of evidence in the record." In re Schulze, 346 F.2d 600,
602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). For
these reasons, we find Appellant's unsupported combinability argument
unavailing.
We find the Examiner's interpretation and discussion of the prior art
references and the claimed invention to be reasonable with respect to
independent claim 1.
With respect to independent claim 8, Appellant relies upon the
arguments advanced with respect to independent claim 1. (App. Br. 7).
Since we found Appellant's arguments unpersuasive with respect to
independent claim 1, we find the same arguments to be unpersuasive with
respect to independent claim 8.
Appeal 2011-012463
Application 11/698,804

7
With respect to dependent claim 4, Appellant relies upon the
arguments advanced with respect to independent claim 1 and further
contends that the Lee reference "fails to disclose that a host processor
comprises a multiplexor and an audio processor." (App. Br. 8). For similar
reasons, we find Appellant's proffered distinction to be unavailing. We find
the functions and processing to be taught and fairly suggested by the
combined teachings of the two prior art references, and we find no
unpredictable results from the mere placement of the various processors and
the labels attached thereto. We find Appellant’s arguments to be
unpersuasive with respect to dependent claim 4.
With respect to dependent claims 5 and 9, Appellant relies upon the
arguments advanced with respect to independent claims 1 and 8. (App. Br.
9). Since we found those arguments unpersuasive with respect to
independent claims 1 and 8, we similarly find those arguments unpersuasive
with respect to dependent claims 5 and 9. Appellant further contends that
the Lee reference "fails to provide any disclosure indicating that the host
processor outputs decoded audio data while synchronizing it with decoded
video data, as recited in Claims 5 and 9." (Id.). While we agree with
Appellant that the prior art references do not expressly detail the function of
synchronizing, we agree with the Examiner’s finding that synchronization
between the audio and the video would be rather desirable in output
multimedia presentations and since the prior art references clearly evidence
the separation and processing of the two types of media: the references
would clearly evidence a desire to be able to reproduce a synchronized
output. (See Ans. 17-18). Therefore, we find Appellant's general argument
to be unpersuasive of error in the Examiner's conclusion of obviousness.
Appeal 2011-012463
Application 11/698,804

8
With respect to dependent claim 6, Appellant relies upon the
arguments advanced with respect to independent claim 1, which we found
unpersuasive. (App. Br. 9-10). Appellant specifically contends that:
the combination of Strandwitz and Lee fails to disclose that the
main processor outputs uplink and downlink initialization
signals, an image communication level synchronous signals,
uplink and downlink configuration signals, and uplink and
downlink end signals to the modem processor, as recited in
Claim 6. The combination also fails to disclose that the modem
processor synchronizes and image communication level to
output a synchronous end signal to the main processor when the
image communication synchronous level is input, as recited in
claim 6.
(Id. at 10). Appellant's argument essentially repeats the language of the
claim without providing any persuasive showing as to why the prior art
combination does not teach or suggest the claimed invention. We find the
arguments to be unpersuasive with respect to dependent claim 6.
With respect to dependent claim 2, Appellant relies upon the
arguments advanced with respect to independent claim 1. (App. Br. 10).
Since we found Appellant's arguments unpersuasive with respect to
independent claim 1, we find the same arguments to be unpersuasive with
respect to dependent claim 2.
With respect to dependent claims 3 and 7, Appellant relies upon the
arguments advanced with respect to independent claim 1. (App. Br. 11).
Appellant further contends that Rasanen "fails to provide any disclosure that
remedies the deficiencies of Strandwitz and Lee described above with
respect to independent Claim 1." Since we found Appellant's arguments
unpersuasive with respect to independent claim 1, we find the same
arguments to be unpersuasive with respect to dependent claims 3 and 7.
Appeal 2011-012463
Application 11/698,804

9
CONCLUSION
The Examiner did not err in rejecting claims 1-9 as obvious under 35
U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 1-9 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

pgc/llw