Ex parte SUMAN et al.

Board of Patent Appeals and Interferences

Mar 13, 1998

08025189 (B.P.A.I. Mar. 13, 1998)

Application for patent filed March 2, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHAEL J. SUMAN,
THOMAS L. WELLING
ROBERT J. SCHNEIDER
_____________
Appeal No. 96-1462
Application 08/025,1891
______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT and CARMICHAEL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1462
Application 08/025,189
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-47, which constitute
all the claims pending in the application.
The disclosed invention pertains to a system mounted to
the interior roof of a vehicle for projecting television signals
onto a screen which is viewable by passengers in the vehicle.
The projector is fixedly mounted within a housing while the
screen is movably mounted to the housing. The screen can be
moved between open and closed positions.
Representative claim 1 is reproduced as follows:
1. A system for the projected display of television
signals in a vehicle overhead console comprising:
a housing for mounting to the roof of a vehicle, said
housing including a television signal projector fixedly mounted
therein and including a lens to project a television image
rearwardly with respect to the vehicle;
a cover mounted to said housing for movement between a
closed position and an open position for use of said projector;
and
a projection screen and means for movably mounting said
screen to said housing for movement between a substantially
horizontal stored position when said cover is closed and a
substantially vertical position in spaced relationship to said
lens when said cover is open for use of said projector.
The examiner relies on the following references:
Rose 2,482,031 Sep. 13, 1949
Peterson 4,719,513 Jan. 12, 1988
Mercedes-Benz 41 18711 Dec. 10, 1992
Appeal No. 96-1462
Application 08/025,189
3
(German Offenlegungsschrift)
Claims 1-3, 10, 17-20 and 22 stand rejected under 35
U.S.C. § 102(a) as being anticipated by the disclosure of
Mercedes-Benz. Claims 1-47 also stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Mercedes-
Benz in view of Peterson with respect to claims 1-8, 10-20, 22-
25, 27-31, 33, 34, 42, 43 and 47, and adds Rose with respect to
claims 9, 21, 26, 32, 35-41 and 44-46.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants' arguments set forth in the brief along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record before
us, that the disclosure of Mercedes-Benz does not fully meet the
Appeal No. 96-1462
Application 08/025,189
4
invention as recited in claims 1-3, 10, 17-20 and 22. We are
also of the view that the collective evidence relied upon and the
level of skill in the particular art would not have suggested to
one of ordinary skill in the art the obviousness of the invention
as set forth in claims 1-47. Accordingly, we reverse.
We consider first the rejection of claims 1-3, 10, 17-20
and 22 as anticipated by the disclosure of Mercedes-Benz. All of
these claims except claim 22 stand or fall together [brief, page
5]. Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claim 1, appellants argue
that (1) the examiner has improperly treated the LCD device 19 of
Mercedes-Benz as both a projector as well as a cover, (2) the
examiner has not given the claimed projector the appropriate
meaning as set forth in this application, (3) Mercedes-Benz does
Appeal No. 96-1462
Application 08/025,189
5
not have a screen positioned in spaced relationship to the lens,
and (4) the Mercedes-Benz LCD screen is not fixedly mounted to
the housing [brief, pages 8-10]. The examiner individually
responds to each of these arguments in the answer in paragraphs
respectively labeled 11.1, 11.2, 11.4 and 11.5 [answer, pages 4-
6].
Although we can agree with some of the points made by the
examiner, we cannot agree with the fundamental position that the
Mercedes-Benz LCD is a projector and screen assembly within the
meaning of claim 1. Appellants’ specification specifically
describes LCD panel displays and CRT television displays and the
disadvantages these types of television displays have compared to
a projection television display. Thus, when the specification is
discussing the projection system of the invention, it is clearly
excluding LCD panels and CRTs from this class. The question is
whether the clear intent of appellants can be ignored by reading
the claims to cover something which is clearly disclaimed by
appellants’ specification.
The examiner and appellants have both pointed to the
definition of the word “projector” as set forth in Webster’s
Ninth New Collegiate Dictionary. The examiner relies on two of
the definitions which would include basically any television
Appeal No. 96-1462
Application 08/025,189
6
receiver as a projector of an image, whereas appellants rely on a
definition which is more appropriate to the conventional use of
the term projection television. We find ourselves in agreement
with appellants on this point.
When interpreting a claim, words of the claim are
generally given their ordinary and accustomed meaning, unless it
appears from the specification or the file history that they were
used differently by the inventor. Carroll Touch, Inc. v. Electro
Mechanical Sys., Inc., 15 F.3d 1573, 1577, 27 USPQ2d 1836, 1840
(Fed. Cir. 1993). As noted above, appellants’ specification
clearly indicates that CRT televisions and LCD panel televisions
are not systems for projecting television signals onto a
projection screen. Although claims are to be given their
broadest reasonable interpretation during prosecution, it is not
reasonable to read claim language in a manner which is
inconsistent with the specification. Thus, we agree with
appellants that the claimed “projector,” “lens” and “projection
screen” cannot be met by a conventional CRT or LCD flat panel.
We also note that if you went into a store to buy a projection
television, you would not expect to be shown CRTs or LCD flat
panels. The art has come to recognize that projection television
is a specific type of subclass of televisions.
Appeal No. 96-1462
Application 08/025,189
7
We also find that the examiner has not properly
interpreted the mounting recitations of claim 1. Specifically,
claim 1 recites that the projector is fixedly mounted to the
housing whereas the screen is movably mounted to the housing.
There is no question that the projector and the screen of
Mercedes-Benz are both included within the element labeled as 19.
This element is movably mounted with respect to the housing in
Mercedes-Benz. We do not see how the Mercedes-Benz projector can
be deemed to be fixedly mounted to the housing while at the same
time the screen is deemed to be movably mounted. The projector
and the screen in Mercedes-Benz are fixed relative to each other
so that they cannot meet the different mounting connections of
claim 1.
Since we find that Mercedes-Benz does not fully meet all
the recitations of independent claim 1, we do not sustain the
rejection of claims 1-3, 10 and 17-20 under 35 U.S.C. § 102.
Although separately argued independent claim 22 is
broader than claim 1 just discussed, claim 22 still recites a
projection television system and a projector which is fixedly
mounted to the housing. These features are not met by Mercedes-
Benz for the same reasons discussed above with respect to claim
Appeal No. 96-1462
Application 08/025,189
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1. Therefore, we also do not sustain the rejection of claim 22
under 35 U.S.C. § 102.
We now consider the rejection of claims 1-47 under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
Appeal No. 96-1462
Application 08/025,189
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of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
We consider first the rejection of claims 1-8, 10-20, 22-
25, 27-31, 33, 34, 42, 43 and 47 as unpatentable over the
teachings of Mercedes-Benz and Peterson. Appellants again argue
that the projection display recitations are not taught by either
Mercedes-Benz or Peterson, and that there would be no basis for
the artisan to combine the teachings of Peterson with those of
Mercedes-Benz [brief, pages 10-13]. The examiner responds that
Mercedes-Benz meets the claim language as discussed above and
asserts that it would have been obvious to substitute for the LCD
display of Mercedes-Benz with the CRT display of Peterson
[answer, pages 6-9].
Considering the latter point raised by appellants first,
we agree with appellants that the artisan would not have
considered combining the teachings of Peterson with Mercedes-Benz
to arrive at the claimed invention. The collapsible cart of
Peterson is addressed to such a different aspect of imaging than
Mercedes-Benz is that there would be no reason to seek to modify
Mercedes-Benz with the suggestions of Peterson. We are unable to
accept that the artisan would find any useful teachings in
Appeal No. 96-1462
Application 08/025,189
10
Peterson that could be applied to a compact vehicle mounted
system such as disclosed by Mercedes-Benz.
Although the examiner has stated that Mercedes-Benz and
Peterson are from analogous arts, this fact cannot, by itself,
justify this rejection. Two references which are from analogous
arts cannot be combined simply because they come from analogous
arts. There must still be some teaching or suggestion in the
prior art which would have led the artisan to combine the
teachings. There is nothing in Mercedes-Benz or Peterson which
would have led the artisan to make the modifications proposed by
the examiner. The examiner’s modifications come from a hindsight
attempt to reconstruct appellants’ invention.
With respect to appellants’ first point noted above, the
projection display aspects of the appealed claims are not met by
the LCD panel of Mercedes-Benz and cannot be met by the CRT
display of Peterson for reasons discussed above. Since this
rejection is based on obviousness rather than anticipation, we
must still consider the obviousness of replacing the LCD display
of Mercedes-Benz with a projection television display having the
claimed features. The examiner only marginally addresses the
issue of modifying Mercedes-Benz to change the type of television
display.
Appeal No. 96-1462
Application 08/025,189
11
In the rejection set forth in Paper #8, the examiner
makes the following observations:
While MERCEDES-BENZ employs a liquid
crystal television display, many other
types of displays including cathode ray
tube displays, gas-plasma displays,
three beam projector displays, etc. are
well known.
... it would have been obvious to one of
ordinary skill in the art at the time of
the present invention to replace the
existing fold-down LCD panel with a CRT
projection assembly as shown by
PETERSON. Doing so would constitute an
obvious substitution of one well known
display technology for another. While
the television projection display of
PETERSON as shown in Figure 2 is
probably too large to mount to the roof
of a passenger car, one of ordinary
skill in the art would have no trouble
combining PETERSON’s teaching of a
retractable screen television display
with modern television miniaturization
techniques in order to produce a
retractable screen television display
small enough for mounting to the roof of
a passenger car.
Thus, the closest the examiner comes to addressing the issue of
the obviousness of substituting a projection display for the
Mercedes-Benz LCD display is to assert that the Peterson CRT is a
projection display or to suggest that substituting one display
for another would be an obvious thing to do.
Appeal No. 96-1462
Application 08/025,189
12
On the first point as already noted, we find no basis for
the artisan to use the teachings of Peterson to modify the system
of Mercedes-Benz. They simply have nothing to do with each
other. On the second point, the examiner’s bald conclusion that
it would have been obvious to substitute one form of television
for another is unsupported by this record. Although this is a
legitimate point to consider in resolving the obviousness of the
claimed invention, this record is devoid of any teachings which
would support this position. The examiner has not cited any
reference which shows a projection television system of the type
required by the appealed claims. Appellants have argued that
although LCDs and CRTs have been used in vehicles, projection
displays in a mountable housing have not been used in a vehicle.
Just because there may be some environments where substituting
one form of display for another might be obvious does not serve
to make the substitution obvious in all cases. As noted above,
this record does not support the examiner’s position that it
would have been obvious to replace the Mercedes-Benz LCD with a
projection television display.
For all the reasons just discussed, we do not sustain the
rejection of claims 1-8, 10-20, 22-25, 27-31, 33, 34, 42, 43 and
47 under 35 U.S.C. § 103. Although claims 9, 21, 26, 32, 35-41
Appeal No. 96-1462
Application 08/025,189
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and 44-46 stand rejected under 35 U.S.C. § 103 using the
additional teachings of Rose, Rose does not make up for the
deficiencies in Mercedes-Benz and Peterson discussed above.
Therefore, we also do not sustain the rejection of these claims.
In summary, we have not sustained any of the examiner’s
rejections of the claims. Accordingly, the decision of the
examiner rejecting claims 1-47 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-1462
Application 08/025,189
14
Price, Heneveld, Cooper,
DeWitt & Litton
695 Kenmoor Drive, S.E.
P. O. Box 2567
Grand Rapids, MI 49501