2008 Pat. App. LEXIS 7439
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`Board of Patent Appeals and Interferences
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`November 17, 2008, Decided
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`Appeal 2008-3693; Application 09/587,959; Technology Center 2400
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`Reporter
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`2008 Pat. App. LEXIS 7439
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`Ex parte ARI IKONEN, PEKKA HEINONEN, and HARRI OKKONEN
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`Notice:
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`ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has
`been designated a routine opinion.
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`Core Terms
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`prior art, protocol, skill, wireless, teach, patent, signal, module, television, subject matter, mobile phone, mobile, ordinary person,
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`rejected claim, predictable, invent, phone, video, connector, wireless communication, interface, telephone, charger, conform,
`modify, wire
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`Panel: Before Robert E. Nappi, Scott R. Boalick, and John A. Jeffery, Administrative Patent Judges.
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`Opinion By: NAPPI
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`Opinion
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`NAPPI, Administrative Patent Judge.
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`DECISION ON APPEAL
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`This is a decision on appeal under 35 U.S.C. § 6(b) of the final rejection of claims 34 through 37.
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`We affirm the Examiner's rejections of these claims.
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`INVENTION
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`The invention is directed towards a system of connecting a mobile station (item "MS" in Figure 1, which is, for example, a
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`portable computing device such as an electronic game or Personal Digital Assistant (PDA)) to a television. The connection is
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`made using a low power radio frequency link between the mobile station and an adaptor (item "M1") connected to the television.
`See pages 2, 3 and Figure 1 of Appellants' Specification. Claim 34 is representative of the invention and reproduced below:
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`34. A method for transferring image and sound data from a mobile phone to a television, comprising:
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`generating a signal in the mobile phone from the image and sound data received by the mobile phone;
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`transmitting the signal in a format that conforms to a Bluetooth-protocol as an output signal from the mobile phone;
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`receiving the output [*2] signal from the mobile phone as an input signal at a module;
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`converting the input signal to image-sound signals in the module; and
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1021 p. 1
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`2008 Pat. App. LEXIS 7439
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`Page 2 of 6
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`connecting the image-sound signals from the module to the television, wherein the module is a mobile telephone
`accessory located at the television.
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`REFERENCES
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`Tran
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`US 6,202,060 B1
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`Heinonen
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`EP 0804030 A2
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`REJECTION AT ISSUE
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`Mar. 13, 2001
`(filed Oct. 29, 1996)
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`Oct. 29, 1997
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`The Examiner has rejected claims 34 through 37 under 35 U.S.C. § 103(a) as being unpatentable over Heinonen in view of
`Tran. The Examiner's rejection is on pages 3 through 6 of the Answer. 1
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`ISSUE
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`Appellants argue, on pages 5 through 8 of the Brief, 2 that the prior art does not teach or suggest modifying the device of
`Heinonen to make use of communication with the phone using the Bluetooth protocol. Appellants reason, on pages 5 and 6 of
`the Brief, that the Examiner's conclusion that using Bluetooth [*3] in Heinonen is obvious relies upon impermissible hindsight.
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`Further, Appellants argue that there is no motivation to modify Heinonen to use Bluetooth protocol because the combination
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`would require added complexity and offer no advantage because one of the purposes of Heinonen's system is to reduce
`complexity. Brief 7, 8; Reply Brief, 3, 4. Appellants assert that "it was important to Heinonen that his system include a unitary
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`adaptor that functioned both for transmission of power to recharge the mobile telephone battery, and as a communications link."
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`Reply Brief 5. Thus, Appellants conclude that one would not separate the functions of charging and providing a communications
`pathway, and one would not use Bluetooth protocol as it is not capable of transmitting power. Reply Brief 5 and 6.
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`Appellants' contentions thus present us with the following issue: did the Examiner err in [*4] concluding that it would have been
`obvious to modify Heinonen to use a wireless protocol such as Bluetooth?
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`PRINCIPLES OF LAW
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`"Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior
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`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
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`ordinary skill in the art to which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). The
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`question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the
`prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v.
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`John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 ("While the sequence of these questions might be
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`reordered in any particular case, the [Graham] factors continue to define the inquiry that controls."). "If a court, or patent
`examiner, conducts this analysis and concludes the claimed subject matter was [*5] obvious, the claim is invalid under § 103."
`KSR, 127 S. Ct. at 1734.
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`The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston,
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`425 U.S. 219, 230 (1976). The issue is "whether the difference between the prior art and the subject matter in question 'is a
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`difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.'" Dann, 425 U.S. at 228
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`(citation omitted) (finding system for automatic record keeping of bank checks and deposits obvious in view of nature of
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`extensive use of data processing systems in banking industry and "closely analogous" patent for an automatic data processing
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`system used in a large business organization for keeping and updating system transaction files for each department of the
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`1 Throughout the opinion we refer to the Answer mailed August 10, 2007.
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`2 Throughout the opinion, we make reference to the Brief, received April 19, 2007 and the Reply Brief, received October 10,
`2007.
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`2008 Pat. App. LEXIS 7439
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`Page 3 of 6
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`organization). To be nonobvious, an improvement must be "more than the predictable use of prior art elements according to
`their established functions." KSR, 127 S. Ct. at 1740.
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`In KSR, the Supreme Court emphasized "the need for caution in granting a patent [*6] based on the combination of elements
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`found in the prior art," id. at 1739, and discussed circumstances in which a patent might be determined to be obvious. In
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`particular, the Supreme Court emphasized that "the principles laid down in Graham reaffirmed the 'functional approach' of
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`Hotchkiss, 11 How. 248 [(1850)]." KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis
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`added)), and reaffirmed principles based on its 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. The Court explained:
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`When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it,
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`either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely
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`bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary
`skill in the art would recognize that it would improve [*7] similar devices in the same way, using the technique is obvious
`unless its actual application is beyond his or her skill.
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`Id. at 1740. 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 1740.
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`The Supreme Court made clear that:
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`[f]ollowing these principles may be more difficult in other cases than it is here because the claimed subject matter may
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`involve more than the simple substitution of one known element for another or the mere application of a known technique to
`a piece of prior art ready for the improvement.
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`KSR, 127 S. Ct. at 1740. The Court explained that:
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`[o]ften, it will be necessary . . . to look to interrelated teachings of multiple patents; the effects of demands known to the
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`design community or present in the marketplace; and the background knowledge possessed by a person having ordinary
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`skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.
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`Id. at 1740-41. [*8] The Court noted that "[t]o facilitate review, this analysis should be made explicit." Id. at 1741 (citing In re
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`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion
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`of obviousness" )). However, "the analysis need not seek out precise teachings directed to the specific subject matter of the
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`challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would
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`employ." Id. Further the Court stated "the obviousness analysis cannot be confined by a formalistic conception of the words
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`teaching, suggestion, and motivation." Id. The Court cautioned that "[a] factfinder should be aware, of course, of the distortion
`caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning." Id. at 1742.
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`The Court noted that "[i]n many fields it may be that there is little discussion of obvious techniques or combinations, and it often
`may be the case [*9] that market demand, rather than scientific literature, will drive design trends." KSR, 127 S. Ct. at 1741.
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`"Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the
`patent can provide a reason for combining the elements in the manner claimed." Id. at 1742. The Court also noted that
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`"[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a
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`person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. "A person of
`ordinary skill is also a person of ordinary creativity, not an automaton." Id.
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`Furthermore, the Supreme Court explained that "[w]hen there is a design need or market pressure to solve a problem and there
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`are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options
`within his or her technical grasp." KSR, 127 S. Ct. at 1742. "If this leads to the anticipated success, it is likely the product not of
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`2008 Pat. App. LEXIS 7439
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`innovation but of ordinary [*10] skill and common sense," id. and, in such an instance "the fact that a combination was obvious
`to try might show that it was obvious under § 103" Id.
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`The Federal Circuit concluded that it would have been obvious to combine (1) a device for actuating a phonograph to play back
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`sounds associated with a letter in a word on a puzzle piece with (2) a processor-driven device capable of playing the sound
`associated with a first letter of a word in a book. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
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`2007). In reaching that conclusion, the Federal Circuit recognized that "[a]n obviousness determine is not the result of a rigid
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`formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art
`demonstrates why some combinations would have been obvious where others would not." Id. at 1161 (citing KSR, 127 S. Ct.
`1727, 1739 (2007)).
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`Although the combination of prior art references lacked a "reader" to automatically identify the book inserted in the device, the
`Federal Circuit found no error in the District Court's [*11] determination that readers were well known in the art at the time of
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`the invention. Id. at 1162. In addition, the Court found that the reasons for adding a reader to the combination of prior art
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`references "are the same as those for using readers in other children's toys-namely, providing an added benefit and simplified
`use of the toy for the child in order to increase its marketability." Id. at 1162. The Federal Circuit relied in part on the fact that
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`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 unobvious step over the prior art." Id. (citing KSR, 127 S. Ct. at 1740-41).
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`FINDINGS OF FACT
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`1. Heinonen teaches an interactive home terminal system which makes use of a television, video tape recorder, and a
`telephone. Abstract.
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`2. Heinonen's system is such that the telephone is connected to an interface, item 7, which makes conversions between
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`data format of the mobile phone and that of the television and video tape recorder. The interface item also includes a
`charger for the phone. Col. 3, ll. 27-33.
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` [*12] 3. The interface connects to the phone via a telephone manufacturer specific connector, item 32, to transfer data.
`Heinonen, col. 3, ll. 50-52.
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`4. Heinonen states that for device 30 to operate as a charger (in Figure 3, interface item 7 of Figure 1 is referred to as item
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`30, see col. 3, ll. 44-45) a power supply must be included. Alternatively, item 30 may just be a desktop stand and it will
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`receive power from a separate battery charger (i.e., one embodiment the data transfer function of item 30 is separate from
`the charger) . Col. 4, ll. 40-48.
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`5. Heinonen also states that connector, item 32, may be a data adaptor, also known as a data card. Col. 4, ll. 48-55.
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`6. Heinonen teaches that the advantage of the system is:
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`[I]t brings certain electrical services requiring bidirectional communications in a new manner available to a very large
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`group of consumers. Consumers can use TVs and video tape recorders already in their homes by acquiring an
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`interface unit by means of which a mobile phone or other terminal of a bidirectional communications system is
`connected to the home terminal equipment.
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`Col. 7, ll. 3-9.
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`7. Tran teaches a data management system which allows a user to store [*13] information on a portable computer
`processing system. Abstract.
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`8. The portable computer is housed in a small enclosure, and includes cellular phone services. Tran, col. 5, ll. 1-5, col. 7, ll.
`59-63.
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`9. The portable computer can communicate with a display device (TV, item 52, Figures 1 & 3) via a wireless link. Tran, col.
`14, ll. 41-56.
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`2008 Pat. App. LEXIS 7439
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`10. The Examiner has found, and Appellants have not contested, that the use of Bluetooth protocol for wireless
`connection between a mobile device and another device is well known. Answer 5.
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`11. The Examiner has further found, and Appellants have not contested, that the general purpose of wireless links using
`Bluetooth is the elimination of wires, cables, and connectors between such links. Answer 5.
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`12. As Facts 10 and 11 are not contested by Appellants, we view them as admitted facts. We additionally note that
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`Appellants' Specification on page 7, line 27 appears to support the Examiner's finding that the Bluetooth protocol was
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`known at the time of the invention. We further note that, as is apparent from the term "wireless" technology, an advantage
`of wireless technology is the elimination of wires.
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`ANALYSIS
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`Initially, we note that Appellants' [*14] Brief has grouped all of the rejected claims together; accordingly we select claim 34 as
`representative of the rejected claims.
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`Appellants' arguments have not persuaded us that the Examiner erred in concluding that it would have been obvious to modify
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`Heinonen to use a wireless protocol such as Bluetooth. Claim 34 recites "transmitting the signal [generated in the phone] that
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`conforms to a Bluetooth-protocol as an output signal from the mobile phone. " Thus, we note that claim 34 does not explicitly
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`recite a wireless link. Nonetheless, both the Examiner and the Appellants agree that that the use of Bluetooth protocol for
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`wireless connection between a mobile device and another device is well known. Fact 10. Thus, we consider it established that
`the scope of the term Bluetooth protocol includes that the transmission is wireless.
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`The Examiner has found that Heinonen discloses transmitting a signal from a mobile phone to a module which in turn
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`converts the signal to a format that is displayed on the television. Answer 4. We find ample evidence to support this finding by
`the Examiner. Facts 1 and 2. The Examiner identifies that Heinonen does not teach using Bluetooth, but finds that Tran [*15]
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`is analogous art, in that it teaches a telecommunications device that communicates video information wirelessly to a
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`television. Answer 4. We find the evidence supports the Examiner's findings directed to Tran. Facts 7 through 9. The Examiner
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`further finds that the use of the specific Bluetooth protocol is well known. Answer 5. This finding is not contested. Fact 10.
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`Based upon these findings the Examiner has found that it would have been obvious to use a Bluetooth wireless protocol in
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`Heinonen's system to communicate the video signals to the module. Answer 5. The Examiner provides several reasons why
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`one skilled in the art would perform this modification, i.e., providing greater mobility and flexibility and allowing the system to
`conform to a widely known protocol without the need for physical connections. Answer 5.
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`We concur with the Examiner's conclusion of obviousness. Appellants' contentions focus on the Heinonen reference in
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`asserting that one would not use Bluetooth protocol in the device, however this line of argument overlooks that there are other
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`teachings in the art which are also relied upon in the Examiner's rejection of claim 34. The Examiner in rejecting claim 34
`has [*16] conformed to the requirements set forth in Graham. As discussed in the preceding paragraph, the Examiner has
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`identified the scope and content of the prior art, the differences between the claim and the prior art, and determined that the
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`differences are within the level of skill in the art. Further, the Examiner has provided an articulated rationale for combining the
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`features taught by the prior art, i.e., providing greater mobility and flexibility and allowing the system to conform to a widely
`known protocol without the need for physical connections.
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`Appellants' assertion that the combination is improper because the prior art does not provide the motivation for the combination
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`is not well founded since the Supreme Court has discouraged such a rigid test for obviousness. See KSR, 127 S. Ct. at 1741.
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`Rather, the question is whether it is a predictable use of the prior art elements according to their established functions. In
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`Heinonen, one of the purposes of the connector, item 32, is to communicate video information from the telecommunications
`device to the module. Fact 3. Tran teaches that it is known to use wireless transmission of video information [*17] from a
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`telecommunication device to the module. Fact 9. Additionally, it was known in the art that Bluetooth is a wireless
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`communication protocol used by telecommunications devices to communicate wirelessly with another device. Fact 10. The
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`purpose of wireless communication, such as wireless communication using the Bluetooth protocol, is to eliminate wired
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`communication. Facts 11 and 12. Given these facts, we consider it to be predictable that one skilled in the art would use
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`wireless communication using the Bluetooth wireless protocol as a substitute for Heinonen's wired connection, via connector,
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`2008 Pat. App. LEXIS 7439
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`item 32, as such a modification would just be using the prior art communications methods for their established functions with no
`unpredictable results.
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`That the connector, item 32, is also used in conjunction with the charging of the phone, a function that Bluetooth wireless
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`communication can not accomplish, does not detract from this conclusion. Heinonen also teaches that in one embodiment the
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`module, item 30, may be just a desktop stand with a data transfer function and the charger can be separate. Facts 4 and 5.
`Thus, we find that the skilled artisan would recognize that the data and [*18] power transfer connections can be separated.
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`Further, Appellants' assertion that the combination would defeat the purpose of Heinonen as it adds complexity, which is
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`contrary to Heinonen's purpose, is not persuasive of error. Heinonen's statements regarding reducing complexity are directed to
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`allowing a user to use existing television and VCR equipment in the system. Fact 6. In Heinonen's system the module 30 is the
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`new element to the user, thus, using the module with a wired or wireless connection to the phone would not introduce any
`additional complexity to the user as the module 30 will be a new piece of equipment in either case.
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`For the all of the above reasons, Appellants' arguments have not persuaded us that the Examiner erred in concluding that it
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`would have been obvious to modify Heinonen to use a wireless protocol such as Bluetooth. Thus, we sustain the Examiner's
`rejection of claims 34 through 37 under 35 U.S.C. § 103(a) as being unpatentable over Heinonen in view of Tran.
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`ORDER
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`The decision of the Examiner is affirmed.
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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)(iv). [*19]
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`AFFIRMED
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`End of Document
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