Ex Parte Yun

Board of Patent Appeals and Interferences

Jun 15, 2009

09878373 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KEYONG-SEOK YUN
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Appeal 2009-001314
Application 09/878,373
Technology Center 2400
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Decided:1 June 15, 2009
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Before JAMES D. THOMAS, ST. JOHN COURTENAY, III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 5, 12, and 14. We have jurisdiction under 35
U.S.C. § 6(b).2
We affirm.

Invention
Appellant has invented a multifunctional refrigerator/appliance. The
nature of this device permits a user to communicate with the Internet. By
selectively controlling power to various devices used to communicate over
the Internet by the action of a user controllable manual switch on the front of
the refrigerator, the user’s privacy may be maintained (Abstract, Spec. 15,
and Fig. 2).
Representative Claim
1. A multifunctional refrigerator, comprising:
an image/voice input and output means installed in said refrigerator
for controlling input and output of image and voice signals;
a communication means connected to the outside through a
communication line for performing data communications of said image and

2 A new ground of rejection, as set forth by the Examiner in the Answer as to
claims 6 through 11, and 13, was properly approved by the Group Director
at Page 17 of the Answer. As noted in the Order remanding the prior appeal
to the Examiner on August 12, 2008 by a prior panel of this Board, a petition
(accompanying a Reply Brief) for late entry of the Reply Brief was denied
on June 27, 2007. The prior panel’s Remand to the Examiner was for the
Examiner to cancel these claims. In accordance with the Examiner’s paper
filed on August 12, 2008, claims 6 through 11, and 13 were canceled. Thus,
the claims that remain on Appeal are claims 1 through 5, 12, and 14.
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voice signals between said image/voice input and output means and said
outside;
a selector switch installed on the exterior of said refrigerator for
selecting as to whether to supply electric power to said image/voice input
and output means by a user; and
a power supply control means for switching operating power source of
said image/voice input and output means in accordance with a select signal
of said selector switch.

Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
obviousness:
Hoshina US 4,856,045 Aug. 8, 1989
Emmons US 4,985,911 Jan. 15, 1991
Bush US 5,164,980 Nov. 17, 1992
Gerszberg US 5,949,474 Sept. 7, 1999

Electrolux, A Refrigerator That “Thinks”—Intelligent Refrigerator Will
Simplify Homes, Mar. 13, 1999,
http://www.electrolux.com/node650.asp?&afw_press_50_lang=all&afw_pre
ss_50_id=13753&afw_press_50_view=detail.

Preston Gralla, How The Internet Works, Macmillan Computer Publishing
USA, 208-209, 214-217 (1997).

Claim 14 stands rejected under the written description and enablement
portions of the first paragraph of 35 U.S.C. § 112. Claims 12 and 14 stand
rejected under the second paragraph of 35 U.S.C. § 112 as being indefinite.
All claims on appeal, claims 1 through 5, 12, and 14 stand rejected under 35
U.S.C. §103. As evidence of obviousness as to claims 1 through 5, the
Examiner relies upon Electrolux, Gralla, and further in view of Emmons.
Claim 12 is considered obvious by the Examiner in view of Electrolux,
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Gralla, and further in view of Hoshina. These references are relied upon by
the Examiner, further in view of Gerszberg and Bush as to claim 14.

Claim Groupings
As to the initial rejection under 35 U.S.C. §103, Appellant’s Brief
presents arguments only as to independent claim 1 and dependent claim 3.
No arguments are presented as to dependent claims 2, 4, and 5.
Additionally, no arguments are presented in the Brief as to dependent claim
12. Lastly, the arguments presented as to dependent claim 14 will be treated
separately.
ISSUES
1. Has Appellant shown that the Examiner erred in rejecting dependent
claim 14 under the enablement and written description portions of first
paragraph of 35 U.S.C. § 112?
2. Has Appellant shown that the Examiner erred in rejecting dependent
claims 12 and 14 under the second paragraph of 35 U.S.C. § 112?
3. Has Appellant shown that the Examiner erred as to the obviousness of
the subject matter of independent claim 1 and its dependent claim 3?
4. Has Appellant shown that the Examiner erred in concluding that claim
14 would have been obvious to a person of ordinary skill in the art within 35
U.S.C. § 103?
FINDINGS OF FACT (“FF”)
1. Appellant admits at the bottom of page 21 of the Brief that “the
Electrolux reference discloses storing image and voice signals.” Consistent
with the teachings in Electrolux of utilizing a computer to connect a
refrigerator to the Internet that includes speakers, microphone, and a camera,
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Gralla utilizes a computer to video conference with the digital video camera
over the Internet having the ability to send and receive video and audio
signals, as noted by what the Examiner considers at pages 209 and 214 of
this reference.
2. The last 5 lines of the Abstract of Emmons teaches that the “camera
and the rest of the circuitry is turned on and off by a switch coupled to panel
which can be slid in front of the camera”. This functionality is shown in
Figures 1 and 1A as privacy panel 25 for the camera 16, and the functional
operation of the microswitch 30 is illustrated in Figure 1A. This
functionality is described at column 4, lines 50 through 54 to include that: “a
microswitch 30 which will turn off power to the circuitry of the present
invention.” Column 3, lines 10 through 30, which comprise part of the
Summary of Emmons’ invention, contain a discussion of prior art
approaches in which power is supplied to prior video phones, but
additionally emphasizes at line 27 that the privacy panel 25 of Figures 1 and
1A is provided for the privacy of the user.
The discussion of Figure 2 at column 4, line 58 through column 5 line
16, indicates the method to power the analog and digital circuits to include
on/off switch 46 and digital power supply 60, which in turn feeds the analog
power supply 70 to the respective circuits in Figure 2. The microprocessor
56 includes its own RAM as well as separate RAM 36 for storing digital
video images of one frame. Significantly, a pair of switches 102 and 104 are
not identified by number in Figure 2, but are identified as such in Figures 4
and 5 and are taught at column 6, lines 12 through 15: “[T]hese switches are
controlled by microprocessors to configure phone detect circuit 44 in either
the telephone mode or the modem picture mode.”
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PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966)) (citation omitted). The Court reaffirmed principles based on it
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416. The operative question in this “functional approach” is
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 415, 417.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrated why some combinations would have been
obvious where others would not.” Leapfrog Enters, Inc. v. Fisher-Prince
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
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unobvious step over the prior art.” Id. at 1162 (citing KSR, 550 U.S. at 417-
18).

ANALYSIS
1. Rejections under 35 U.S.C. § 112, Paragraph 1
Without belaboring the Examiner’s rejections as set forth at page 3 of
the Answer, the Examiner appears to wrongly look for exact, or ipsis verbis,
corresponding teachings in the Specification as filed for the limitation
“wherein cutting power to the image and sound signals processing portions
does not cut power to the subcontroller.” The statutory provision does not
require a disclosure only in the same words as claimed. With respect to this
and the enablement issue, Appellant’s discussion of the disclosed basis in
the Specification at pages 10 through 15 of the Brief well-explains the basis
from both written description and enablement perspectives. Even Figure 2,
on its own, shows the manual switch 31 directly controlling the power
source control portion 19, which by its nature permits the manual switch to
be utilized in an on and off manner. As can be viewed from Figure 2, the
power source 19 does not provide power to the subcontroller 9, which is
well explained by Appellant to always have power on as disclosed. Thus,
the claimed negative limitation is essentially illustrated in Figure 2.
Therefore, the rejections of claim 14 under the enablement and written
description portions of the first paragraph of 35 U.S.C. § 112 are reversed.

2. Rejection under the Second Paragraph of 35 U.S.C. § 112
Because of the cancellation of claims 6 through 11, and 13, the
Examiner has focused the rejection on remaining claims 12 and 14. These
claims each directly depend from cancelled claim 7, which in turn depends
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from cancelled claim 6. Because claims 12 and 14 depend from these
cancelled claims, there is no antecedent basis from which to construe the
features recited in dependent claims 12 and 14. Since claims 12 and 14 are
plainly indefinite for these reasons, we sustain the rejection of them under
the second paragraph of 35 U.S.C. § 112.

3. Rejection of Claims 1 through 5 under 35 U.S.C. § 103.
At the outset, we note that independent claim 1 recites in part “an
image/voice.” To the extent that Appellant intends to construe the “/” as an
“and”, the conventional approach for the use of such “/” considers it to mean
the alternative. Even in such a sense, the claim may be properly construed
as controlling input and output of the images and voice signals depending on
whether image or voice input signals means are utilized. The recitation
utilizing the “/” also occurs in the last two clauses of claim 1. As such, the
selector switch actuation and its feeding of switching signals to the power
supply control means can be construed properly as switching between them,
in the alternative, consistent with the use of the “/”.
Consistent with the above understanding of what independent claim 1
actually recites, Appellant’s Brief, beginning at the bottom of page 17, did
not present any corresponding arguments that the references to Electrolux,
Gralla, and Emmons are not properly combinable within 35 U.S.C. § 103.
Therefore, we do not agree with Appellant’s urging at the top of page 21 of
the Brief that claim 1 requires that the power supply control means switch
power off to the image/voice input and output means in such a manner as to
necessarily require control of the image and voice signals. We also do not
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agree that Emmons would only teach cutting power to the image portion of
the image/voice input and output means as alleged.
FF 1 from earlier in this opinion embellishes upon significant
teachings that Appellant recognizes, as well as what we recognize, are
pertinent to the issues before us in Electrolux and Gralla. The extensive
teachings in Emmons in FF 2 indicate in such a comprehensive manner as to
teach the artisan the ability to power down all of the active circuits of his
invention to the extent taught, as well as the ability to selectively do so
through the action of the microprocessor controlling the switches 102 and
104. Moreover, Appellant’s discussion of Emmons at pages 19 and 20 of
the Brief seems to be consistent with the manner in which we interpret the
subject manner of independent claim 1 on appeal, such as to permit the
alternative selective activation of power to respective sub circuits in
Emmons. Based on our discussion of the teachings at column 3 of Emmons
as noted in FF 2, the artisan clearly would have found it obvious to have
selectively disabled the audio and/or video portions of a video telephone for
privacy reasons. Consistent with the earlier-noted case law, the present
claims merely recite a predictable use of prior art elements according to their
established functions.
This analysis directly addresses the positions set forth as to dependent
claim 3 at the bottom of the page 21 of the Brief. Electrolux is not relied
upon by the Examiner to suggest cutting power to the storage means, even
though Appellant recognizes that Electrolux does disclose storing image and
voice signals, as we noted in FF1. The Examiner relied upon Emmons for
these teachings. In fact, Appellant is arguing as to claim 3 the subject
matter actually discussed earlier with respect to independent claim1.
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Therefore, we sustain the rejection of claims 1 through 5 under 35
U.S.C. § 103.

4. Remaining Rejections under 35 U.S.C. § 103
The positions set forth by Appellant at pages 22 and 23 of the Brief do
not separately argue the features of dependent claim 12. Moreover, as
explained earlier in this opinion with respect to the rejection of claims 12
and 14 under the second paragraph of 35 U.S.C. § 112, we pro forma affirm
the rejections of claims 12 and 14, as well. Additionally, the positions in the
Brief rely for patentability on positions already addressed here. Appellant
has not directly challenged the buttressing teachings from the video phones
in Ginszberg and Bush relied on by the Examiner to achieve user privacy.

CONLUSIONS AND DECISION
Because Appellant has shown that the Examiner has erred in rejecting
dependent claim 14 under the enablement and written description portions of
the first paragraph of 35 U.S.C. § 112, the separate rejections of these claims
are both reversed. On the other hand, we have sustained the rejection of
dependent claims 12 and 14 under the second paragraph of 35 U.S.C. § 112.
We have also sustained the rejections under 35 U.S.C. § 103 of claims 1
through 5, 12, and 14. Since at least one rejection is affirmed as to each
claim on appeal, the decision of the Examiner is affirmed. All claims on
appeal are unpatentable.

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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)(v).

AFFIRMED

erc

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