EXHIBIT 2003
`EXHIBIT 2003
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`BLAIR.Q01A
`
`PATENT
`
`EXHIBIT 2003
`GZJKDKV!3114
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent Owner: Scott Blair
`Examiner:
`Stephen J. Ralis
`Filing Date: August 16, 2011
`For:
`SUBWAY TV MEDIA SYSTEM
`
`90/011,861
`Control No.;
`Gr, Art Unit: 3992
`
`APPEAL BRIEF PURSUANT TO 37 CFR 41,37
`
`Dear Sir or Madam:
`
`In response to the Final Office Action in Ex Parte Reexamination dated April 25, 2012
`(“Final Ex Parte Office Action”) and the Advisory Action in Ex Parte Reexamination dated
`January 16,2013 (‘Ex Parte Advisory Action’), Patent Ownerherein files an appeal brief for the
`above-identified application.
`
`Real Party in Interest
`
`Scott Blair (the Patent Owner for Reexamination Control No. 90/011,861) is the real
`party in interest.
`
`Related Appeals and Interferences
`
`Not Applicable.
`
`Status of Claims
`
`Claims 1 — 18 and 20 — 30 are now pending in the application.
`
`Per the Ex Parte Advisory Action, Claim 1 stands rejected, Claims 2 — 7 are not subject
`to reexamination and Claims § — 18 and 20 — 30 are patentable and/or confirmed.
`
`Patent Owner herein explicitly appeals the rejection of Claim1.
`
`Status ofAmendments
`
`Patent Owner has not submitted amendments to any of the claims subsequent to the Ex
`Parte Advisory Action (see also the response to the Final Ex Parte Office Action dated June 25,
`2012).
`
`Summary of Claimed Subject Matter
`
`Claim 1 ~ Claim | discloses a subway car for mass transportation including longitudinal
`opposed sidewalls disclosed at, inter alia, FIGS. 1A and 1B, as well as at FIG. 2, along with its
`accompanying disclosure of Patent Owner’s specification. The subway car includes a ceiling
`adjoining the sidewalls disclosed at, inter alia, FIG. 4a, along with its accompanying disclosure
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`EXHIBIT 2003
`GZJKDKV!3114
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`at Col. 5, lines 35 — 49 of Patent Owner’s specification. The subway car also includes a video
`display system comprising a plurality of video display monitors each having a video screen
`disclosed at,
`inter alia, Col. 5,
`lines 35 — 49 and Col. 5,
`lines 4 — 7 of Patent Owner’s
`specification. The subway car further includes a video signal source unit operatively connected to
`the monitors disclosed at; inter alia, Col. 5, lines 4 — 7 of Patent Owner’s specification. The
`monitors are spaced along the length of the car on opposed sides thereof disclosed at, interalia,
`Col. 1, lines 45 — 50 as well as at Col. 4, lines 57 — 59 of Patent Owner’s specification. Each of
`the monitors are mounted at the junction of the sidewall and ceiling disclosed at, inter alia, Col.
`3, line 67 — Col. 4, line 6 and Col. 4, lines 64 — 67 of Patent Owner’s specification. The screen of
`the monitor is substantially flushed with the adjacent wall surface structure of the car disclosed
`at; inter alia, Col. 5, lines 40 — 42 of Patent Owner’s specification. The screen of the monitoris
`further directed obliquely downwardly toward the car seats, so that each video screen is readily
`visible to passengers in the subway car disclosed at, inter alia, Col. 4, line 67 — Col. 5, line 4 of
`Patent Owner's specification.
`
`Grounds ofRejection to be Reviewed
`
`1. Whether Claim 1 is unpatentable under 35 U.S.C. §102(b) as being anticipated by
`Minesaki (Japanese Publication No. JP 63-125984 of Japanese Application No, JP
`61-272668, hereinafter “Minesaki”).
`
`is unpatentable under 35 U.S.C. §102(b) as being anticipated by
`2. Whether Claim 1
`Amano et al. (Japanese Publication No. JP 02-23985A,hereinafter “Amano”).
`
`3. Whether Claim 1 is unpatentable under 35 U.S.C. §103(a) as being unpatentable over
`Maekawaet al. (Japanese Publication No. JP 04-160991A, hereinafter “Maekawa”) in
`view of Amano.
`
`4, Whether Claim 1 is unpatentable under 35 U.S.C. §103(a) as being unpatentable over
`Minesaki in view of Mooreet al. (U.S. Patent No. 3,480,727, hereinafter “Moore”).
`
`5. Whether Claim 1 is unpatentable under 35 U.S.C. §103(a) as being unpatentable over
`Amanoin view of Moore.
`
`6. Whether Claim 1 is unpatentable under 35 U.S.C. §103(a) as being unpatentable over
`Maekawa and/or Shinagawa et al.
`(Japanese Publication No. JP 04-160991A,
`hereinafter “Shinagawa”), either in view of Amano and Moore.
`
`Arguments
`
`I.
`
`Rejection of Claim 1 Under 35 U.S.C. § 102 as Being Anticipated by Minesaki
`
`Claim 1 ~ Patent Owner respectfully submits that it is well established that “/a] claim is
`anticipated only if each and every element as set forth in the claim is found, either expressly or
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`EXHIBIT 2003
`GZJKDKV!3114
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`in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of
`inherently described,
`California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). See also MPEP §2131.
`
`With regards to the Office’s rejection of Claim 1 as being anticipated by Minesaki, Patent
`Owner respectfully traverses. Specifically, Minesaki fails to expressly or inherently describe: (1)
`“each of said monitor being mounted at the junction of the sidewall and ceiling”; (2) “with the
`screen ofthe monitor substantiallyflushed with the adjacent wall surface structure ofthe car”; and
`(3) “directed obliquely downwardly toward the car seats”.
`
`With regards to the claimed feature “each ofsaid monitor being mounted at the junction of
`the sidewall and ceiling”, Minesaki appears to only contemplate two configurations for mounting
`the information transmission display (part J). Specifically, one such configuration contemplated by
`Minesaki is an “information display part J ... which is suspended and hangs down, fromthe
`ceiling”. {emphasis added} Such a configuration as described does not expressly or inherently
`describe mounting the monitor at the junction of the sidewall and ceiling.
`
`Minesaki’s second configuration contemplates that the “information transmission display
`part J may also be formed on the sidewall 9 of the train car.” {emphasis added} Accordingly,
`Minesaki only appears to contemplate suspending the information transmission display part from
`the ceiling, or alternatively, forming the information transmission display part on the sidewall of the
`train car, and respectfully does not expressly contemplate mounting the monitor at the junction of
`the sidewall and ceiling. Furthermore, The Office alleges at page 100 of the Final Ex Parte Office
`Action that Fig. 2 of Minesaki illustrates the information transmission display part J at the junction
`of the sidewall and the ceiling.
`
`Furthermore, Patent Ownerrespectfully submits that it is clear that the drawing of Fig. 2 is
`not intended to be to scale, and that the drafting quality of Fig. 2 is poor. Patent Owner notes that
`per MPEP §2125:
`
`“When the reference does not disclose that the drawings are to scale and is silent
`as to dimensions, arguments based on measurementofthe drawingfeatures are of
`little value. See Hockerson-Halberstadt, Inc.
`vy. Avia Group Jnt’l, 222 F.3d 951,
`956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000)”
`
`For example, and asillustrated in Fig. 2, the information transmission display parts J are shown as
`being curved along the top portion of the display. However, Minesaki provides no mention or
`explanation for this curvature in its specification, and it would appear that such a curved feature is
`quite unusual in that it seemingly affects only the very top portion of the display shown in FIG,2,
`which optically would seem to distort the light rays emanating from the display im an inconsistent
`manner (and hence distort at least a portion of any image displayed thereon, akin to a prism).
`Accordingly, it is believed that this drawing (Fig. 2) is at best unreliable (and at worst, inconsistent)
`in its teachings when considered without the context of the two configurations discussed supra
`provided by the written detailed description, and would not expressly or inherently describe a
`monitor being “mounted at the junction of the sidewall and ceiling” to one of ordinary skill in the
`art.
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`Control No.
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`EXHIBIT 2003
`GZJKDKV!3114
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`Furthermore, with regards to the claimed feature “with the screen of the monitor
`substantiallyflushed with the adjacent wall surface structure ofthe car’, the Office alleges that the
`term “substantially” is often used in conjunction with another term to describe a particular
`characteristic of the claimed invention, and is further construed to be a broad term (citing MPEP
`§2173.05). While Patent Owner agrees that the term “substantially” is construed broadly, the use
`of the term “substantially” cannot be construed so broadly as to read the term “flushed”
`completely out of the claim. See e.g., Exxon Chem. Patents v. Lubrizol Corp., 64 F.3d 1553, 1555
`(Fed. Cir, 1995), cert. denied, 518 U.S. 1020 (1996), as it believes the Office’s interpretation has
`done.
`
`Furthermore, Patent Owner notes that terms in its claims must be interpreted in light of
`Patent Owner’s specification as filed; see MPEP § 2111; “During patent examination,
`the
`pending claims must be "given their broadest reasonable interpretation consistent with the
`specification," Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005)”
`femphasis added}). Fig. 2 of Minesaki is reproduced below for the convenience of the Office,
`
`
`
`Figure 2 ofMinesaki
`
`As can be seen,there is not a single part of the information transmission display (part J) illustrated
`in Fig. 2 which can reasonably be considered to be flush with the adjacent wall surface (as Patent
`Owner has used that term in its specification and Claim 1);
`in fact,
`the entire information
`transmission display part J of Minesaki clearly protrudes away from the adjacent wali surface.
`Patent Ownerrefers the Office to FIG. 4a ofits specification (reproduced below for convenience),
`which clearly shows an embodiment of Patent Owner’s invention that has a screen that
`is
`substantially flushed with the adjacent wall surface (as explicitly recited in Claim 1), and with no
`protrusion of the display (as occurs in Minesaki). As indicated in Patent Owner’s specification
`regarding FIG. 4a, (See, e.g. Col 5, lines 42 — 45 of Patent Owner’s specification) this configuration
`gives a better aesthetic appearance to the inside of the subway car as a whole, as well as
`improving the display performance by minimizing the interference effects.
`
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`Control No,
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`96/011,861
`August 16, 2011
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`EXHIBIT 2003
`GZJKDKV!3114
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`9307POYS Ye709°902'9SN
`
`| Monitor
`
`pOOT4
`
`Accordingly, Patent Owner respectfully submits that the Office’s interpretation of the term
`“substantiallyflushed” is improper, as the Office’s interpretation completely reads out the claimed
`“flushed” feature, and obscures what is meant by “substantially flushed” as clearly described
`throughout Patent Owner’s specification and figures. Patent Owner’s specitication clearly describes
`a subway car with video monitors that appear integral with the design of the subway car (see, e.g.,
`Col. 4, lmes 8 — 13 of Patent Owner’s specification). Furthermore, the Patent Ownet’s specification
`and figures are indicative of monitors that are built within the inner spaces and below the surface
`structure of the interior of the subway car so as to achieve the stated goal of making the video
`display monitors appear integral with the inside structure of the subwaycar (see e.g., Col, 3, line 55
`to Col. 4, line 9). No attempt has been made by Minesaki to expressly place the information
`transmission display parts within the inner spaces of the adjacent interior surface structure of the
`car, nor is Minesaki concerned about having the information transmission display parts screen
`“substantially flush” with the adjacent surface structure.
`In response to Patent Owner’s previous
`assertions, the Office states that the term flush is “examined as ‘forming a continuous plane or
`unbroken surface.'” Furthermore,
`the Office alleges that
`the screen of the display monitor
`illustrated in FIG, 4a above can never form a continuous plane or unbroken surface with the
`adjacent wall surface structure. However, the Office alleges that this is the case because the screen
`is further behind the transport screen of the enclosure (see page 103 of the Ex Parte Office Action).
`Patent Owner submits that although the screen of the monitor is behind the transport screen in the
`illustrated embodiment,
`the use of the transport screen would give the appearance of a flush
`mounted monitor(e.g., “substantiallyflush”), even though the screen of the monitor would actually
`be slightly offset from the adjacent wall surface structure of the car. Again, contrast with Minesaki,
`which illustrates information transmission display parts which would clearly not give the
`appearance ofa flush mounted monitor, instead showing its information transmission display parts
`sitting on top of the wall surface. In fact, if the drawings of Minesaki were taken literally, the
`information transmission display parts would protrude out from the wall approximately four (4)
`times the thickness of the wall, or alternatively, would protrude away from the wall at a distance
`approximately equal to the back portion of the seats illustrated in Minesaki. Clearly, such a
`configuration cannot be considered to be “substantiallyflush”.
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`EXHIBIT 2003
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`is well established that patent drawings do not define the precise
`“it
`Furthermore,
`proportions ofthe elements and may not be relied on to show particularsizes ifthe spectfication is
`completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int'l, 222 F.3d 93],
`956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) Per page 7 of the Ex Parte Advisory Action, the
`Office alleges that Minesaki discloses a “liquid crystal panel” that would have a low profile and
`hence would be “substantially flush” as claimed. However, Patent Owner notes that Minesaki
`never states that the liquid crystal panels are low profile and even assuming, arguendo, that they
`are low profile, a low profile monitor would notbyitself be “substantiallyflush” as claimed.
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`Finally, Patent Owner respectfully submits that Minesaki does not expressly or inherently
`describe that “the screen of the monitor ... [is] directed obliquely downwardly toward the car
`seats’. While Patent Owner admits that the information transmission display parts J of Minesaki
`appear curved with the top portion seemingly directed obliquely downwardly, the majority portion
`of the information transmission display part J is directed perpendicular to the sidewall of the
`Minesakitrain (see Fig. 2 reproduced above). Furthermore, Patent Owner has set forth and claimed
`in Claim 1 that “the screen of the monitor ... [is] directed obliquely downwardly toward the car
`seats” as opposed to setting forth and claiming that only portions of the screen of the monitor are
`directed obliquely downwardly. In response, the Office states that since portions of the monitor
`screen of Minesaki are directed obliquely downward toward the car seats, Minesaki fully meets
`Patent Owner’s claimed language. However, Patent Ownerhas actually claimed “the screen of the
`monitor ... directed obliquely downwardly toward the car seats, so that each video screen_is
`readily visible to passengers in the subway car.” Furthermore, the stated reasoning in Patent
`Owner’s specification states that the screen is: “suitably angled downwardly, for best viewing by
`passengers seated opposite the screen” (Col. 4,
`lines 6 -— 7 of the ‘602 Patent); “angled
`downwardlyfor ease ofviewing ofpassengers 24 seated in such inwardfacing seats 16" (Col, 5,
`lines 1 — 2 of the ‘602 Patent); and “angled downwardly for best viewing by a passenger 24
`seated opposite” (Col. 5, lines 30 — 32 of the ‘602 Patent). Patent Owner respectfully submits
`that the arrangement illustrated in Minesaki would frustrate the ability for each video screen to be
`readily visible to passengers if only a portion of the screen were directed obliquely downwardly
`(due to inter alia, optical distortion associated with only the very top portion of light emanating
`from the screen), and that the Office’s interpretation of Patent Owner’s language is imconsistent
`with Patent Owner’s specification.
`
`Accordingly, Patent Owner submits that Claim 1 distinguishes on this independent and
`distinct basis as weil.
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`I.
`
`Rejection of Claim 1 Under 35 U.S.C.§102 as Being Anticipated by Amano
`
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`Claim 1 ~ With regards to the Office’s rejection of Claim 1 as being anticipated by Amano,
`Patent Owner respectfully traverses. Specifically, Patent Owner respectfully submits that Amano
`fails to expressly or inherently describe “the screen of the monitor substantially flushed with the
`adjacent wall surface structure ofthe car”.
`
`Again, the Office alleges that the term “substantially” is often used in conjunction with
`another term to describe a particular characteristic of the claimed invention and is further construed
`to be a broad term (citing MPEP §2173.05). Again, Patent Owner respectfully submits that the use
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`of the term “substantially” cannot be construed so broadly as to read the term “flushed”
`completely out of the claim. Figures 4 — 6 of Amano are reproduced below for the convenience of
`the Office.
`
`Figure 4
`
`Figure 4 ofAmano
`Figure §
`
`
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`Figure ¢
`
`Figure 5 ofAmano
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`As can be seen, there is not a single part of the information display device 8 illustrated in Figures 4
`~ 6 that can reasonably be considered to be “flush with the adjacent wall surface” as recited in
`Claim 1. In fact, the entire information display device 8 of Amano(including the screen, which is
`the component Patent Owner’s Claim | recites as being substantially flushed with the wall surface)
`clearly protrudes away from the adjacent wall surface. Patent Owner respectfully submits that the
`Office’s interpretation of the term “substantiallyflushed” is improper, as the Office’s interpretation
`completely reads out the “flushed” feature and obscures what is meant by “substantially flushed”
`as clearly described throughout Patent Owner’s specification and figures. Patent Owner’s
`specification clearly describes a subway car with video monitors that appear integral with the design
`of the subwaycar (see, e.g., Col. 4, lines 8 — 13 of Patent Owner’s specification). Furthermore, the
`Patent Owner’s specification and figures are indicative of monitors that are built within the inner
`spaces and below the surface structure of the interior of the subway car so as to achieve the stated
`goal of making the video display monitors appear integral with the inside structure of the subway
`car (see e.g., Col. 3, line 55 to Col. 4, line 9). No attempt has been made by Amano to expressly
`place the information transmission display parts within the inner spaces of the adjacent interior
`surface structure of the car, nor is Amano concerned about having the information transmission
`display parts screen “substantiallyflush” with the adjacent surface structure. See again FIG. 4a of
`the ‘602 Patent discussed supra.
`
`In response to Patent Owner’s previous assertions, the Office states that the term flush is
`“examined as ‘forming a continuous plane or unbroken surface.” Furthermore, the Office alleges
`that the screen of the display monitor illustrated in FIG. 4a above can never form a continuous
`plane or unbroken surface with the adjacent wall surface structure. However, the Office alleges that
`
`this is the case because the screen is further behind the transport screen of the enclosure (see page
`108 of the Ex Parte Office Action). Patent Owner submits that although the screen of the monitoris
`behind the transport screen in the illustrated embodiment, the use of the transport screen would give
`the appearance of a flush mounted monitor(e.g., “substantially flush’), even though the screen of
`the monitor would actually be slightly offset from the adjacent wall surface structure of the car.
`Again, contrast with Amano whichillustrates information display devices which would clearly not
`give the appearance of a flush mounted monitor.
`
`Accordingly, Patent Owner respectfully submits that the Office’s rejection of Claim 1 as
`being anticipated by Amanois improper, and should be withdrawn.
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`Ill.
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`Rejection of Claim 1 Under 35 U.S.C. § 103 as Being Obvious over Maekawa in
`View of Amano
`
`Claim 1 — With regards to Claim 1, the Office admits that Mackawa does not specifically
`disclose monitors that are mounted at the junction of the sidewail and ceiling and directed obliquely
`downwardly toward the car seats (see pages 8 — 9 of the Final Ex Parte Office Action). However,
`the Office alleges that such a feature is taught by Amano. Patent Owner respectfully directs the
`Office’s attention towards the discussion of Amano supra. Furthermore, the Office alleges that
`Maekawa expressly discloses that the screen of the monitor is substantially flushed with the
`adjacent wall surface structure of the car, citing features 101 — 124, page 738, column 2, and
`Figures | and 2 of Maekawa. Patent Ownerrespectfully traverses.
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`that “the screen of the monitor [is]
`Specifically, Maekawa fails to teach or suggest
`substantially flushed with the adjacent wall surface structure of the car”. Page 738, column 2 of
`Maekawastates in relevant part: “...each ofthe television receivers (101), (102), (103) ... (124) is
`made low profile using liquid crystal panels or the like.” Accordingly, while Maekawa clearly
`contemplates low profile displays, Maekawa is completely silent as to these liquid crystal panels
`being “substantiallyflush” with the adjacent wall surface structure of the car.
`
`Again, the Office alleges that the term “substantially” is often used in conjunction with
`another term to describe a particular characteristic of the claimed invention andis further construed
`to be a broad term (citing MPEP §2173.05). However, Patent Owner respectfully submits that the
`use of the term “substantially” cannot be construed so broadly as to read the term “flushed”
`completely out of the claim; see discussion provided supra. Figure 2 of Maekawaillustrates that no
`part of these low profile displays are “flush” with the adjacent wall surface structure of the car as
`Patent Owner has used that term in its specification and Claim 1. Figure 2 of Maekawa is
`reproduced below for the convenience of the Office.
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`| Television Receivers not
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`[__
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`| “substantiallyflush”
`118 - 120 television recetver
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`1 car body
`2 rooftop
`3 - 5 ventilator
`30a - 30d antenna
`40 under-floor tut
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`Figure 2 ofMaekawa
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`As can be seen, there is not a single part of the television receiverillustrated in Figure 2 (includmg
`especially its screen) that is flush with the adjacent wall surface structure of the car; in fact, the
`entire television receiver of Maekawaclearly protrudes from the adjacent car wall surface, or sits on
`top of the adjacent wall surface, by an amount roughly equal to the thickness of the wall itself.
`Accordingly, Patent Owner respectfully submits that
`the Office’s interpretation of the term
`“substantially flushed” is improper, as the Office’s interpretation completely reads out
`the
`“flushed” feature.
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`Patent Owner further submits that Amano does not cure the deficiencies present
`Maekawa(see discussion of Amano with regards to the Office’s 35 U.S.C. § 102 rejection above).
`
`in
`
`In response to Patent Owner’s previous assertions, the Office states that the term flush is
`“examined as ‘forming a continuous plane or unbroken surface.’” Furthermore, the Office alleges
`that the screen of the display monitor illustrated in FIG. 4a above can never form a continuous
`plane or unbroken surface with the adjacent wall surface structure. However, the Office alleges that
`this is the case because the screen is further behind the transport screen of the enclosure (see page
`112 of the Ex Parte Office Action). Patent Owner submits that although the screen of the monitor.
`is behind the transport screen in the iustrated embodiment, the use of the transport screen would
`give the appearance of a flush mounted monitor (“substantially flush”), even though the screen of
`the monitor would actually be slightly offset from the adjacent wall surface structure of the car.
`Again, contrast with Maekawa which illustrates information display devices which would clearly
`not give the appearance of a flush mounted monitor, instead showing its monitors sitting on top of
`the wall surface,
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`Accordingly, the Office’s rejection of Claim | as being obvious over Maekawain view of
`Amano is respectfully improper and should be withdrawn.
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`of Moore
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`is
`Claim | — Patent Owner respectfully traverses the Office’s contention that Claim 1
`obvious over Minesaki in view of Moore. Specifically, and as discussed previously herein with
`regards to Patent Owner’s discussion of Minesaki supra, Minesaki fails to teach or suggest: (1)
`“each ofsaid monitor being mounted at the junction ofthe sidewall and ceiling”; and (2) “directed
`obliquely downwardly toward the car seats”. See, ¢.g., the discussion with regards to the 35 U.S.C.
`§ 102 rejection of Minesaki discussed supra.
`
`Furthermore, Patent Owner submits that Moore does not cure the deficiencies found in
`Minesaki, as Moore is only being utilized for its teaching of a monitor adapted to be mounted flush
`with a surrounding wall, and teaches nothing of the placement of the monitor within the wall (e.g.,
`at a junction or otherwise).
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`Patent Owneralso submits that the Office’s combination of Minesaki and Moore constitutes
`impermissible hindsight reasoning. Specifically, Patent Ownernotesthat:
`
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`sense necessarily a
`a
`in
`is
`obviousness
`“fajny judgement on
`reconstruction based on hindsight reasoning, but so long as it takes into account
`only knowledge which was within the level of ordinary skill in the art at the time
`the claimed invention was made and does not include knowledge gleaned only
`from applicant's disclosure, such a reconstruction is proper.’ In re McLaughlin,
`443 F.2d 1392, 1395 (CCPA 1971).
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`Per page 11 of the Final Ex Parte Office Action, the Office alleges that:
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`Control No.
`Filed
`
`:
`:
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`90/011,861
`August 16, 2011
`
`EXHIBIT 2003
`GZJKDKV!3114
`
`“Tt would have been obvious to one of ordinary skill in the art at the time
`of the invention as made to modify the monitor being projecting slightly beyond
`the adjacent wall surface structure of the car ofMinesaki with the screen of the
`monitor being substantially flushed with the adjacent wall surface structure of
`Moore et al. in order to provide a means to compensate for wall thickness or, the
`availability of space beyond the surface of the wall.” {emphasis added}
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`10
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`15
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`The requisite motivation (i.e., “fo provide a means to compensatefor wall thickness ...."") is alleged
`to be disclosed at Col. 7, lines 44 — 47. However, Col. 7, lines 44 — 47 of Moore actually states:
`“[t]he type of installation depends on the available wall thickness, or the availability of space
`beyond the wall into which the rear end of the monitor may project.” However, nothing within the
`teachings of Minesaki teaches or suggests the availability of space beyond the wall into which the
`rear end of the monitor may project. Accordingly, Patent Owner submits that the only such
`reasoning for making such a combination is gleaned entirely from Patent Owner’s disclosure, as
`nothing within the teachings of Minesaki suggests the availability of space or the desirability of the
`proposed combination. Accordingly, Patent Owner respectfully submits that the Office’s reasoning
`constitutes impermissible hindsight reasoning.
`
`Accordingly, Patent Owner respectfully submits that the Office’s rejection of Claim 1 as
`being unpatentable over Minesaki in view of Moore is improper and should be withdrawn.
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`20
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`
`
`Vv.
`Rejection of Claim 1 Under 35 U.S.C,§103 as Being Obvious over Amano in View
`ot Moore
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`30
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`35
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`AQ
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`45
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`Claim 1 — Patent Owner respectfully traverses the Office’s rejection of Claim I as being
`unpatentable over Amano in view of Moore. Specifically, and as discussed previously herein with
`regards to Patent Owner’s discussion of Amano supra, Amano fails to teach or suggest “each of
`said monitor being mounted at the junction of the sidewall and ceiling”. See, e.g., the discussion
`with regards to the 35 U.S.C. § 102 rejection of Amano discussed supra.
`
`in part, that it would have been obvious for one of
`Furthermore, the Office alleges,
`ordinary skill in the art to arrive at “the screen of the monitor [being] substantially flushed with
`the adjacent wall surface structure of the car” by combining the monitors mounted near the
`Junction of the sidewall and ceiling of Amano (see Figures 4 — 6 of Amano) with the teaching of
`a monitor adapted to be mounted flush with a surrounding wall as taught by Moore. Patent Owner
`respectfully disagrees and traverses.
`
`MPEP §2143.03(VD) states that: "fa/ prior art reference must be considered in its
`entirety, i.e., as a whole, including portions that would lead away from the claimed invention,"
`Accordingly, where cited art teaches away from a claimed feature, the cited art is not available
`for the purposes of an obviousnessrejection.
`
`Furthermore, if the “proposed modification would render the prior art invention being
`modified unsatisfactory for its intended purpose,
`then there is no suggestion or motivation to
`
`make the proposed modification. In_re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir.
`1984)’. See also MPEP §2143.01.
`
`~l]-
`
`

`

`Control No.
`Filed
`
`:
`:
`
`90/011,861
`August 16, 2011
`
`EXHIBIT 2003
`GZJKDKV!3114
`
`In the instant case, Amanofails to teach or suggest “the screen of the monitor [being]
`substantially flushed with the adjacent wall surface structure of the car”. However, the Office
`states that the monitor of Amano can readily and predictably be substituted with the flush
`monitor of Moore. To the contrary, Patent Owner respectfully submits that the wall structure of
`Amano (in particular, the area near the junction of the sidewall and ceiling) would need to be
`appreciably modified in order to accommodate a flush monitor. See also, for example, FIG. 4a of
`the ‘602 Patent. However, Amanoalso illustrates storage areas on the upper areas of the train.
`See for example, Figure 4 of Amano reproduced below.
`Figura 4
`
` i
`
`Figure 4 ofAmano
`
`Accordingly, modifications to the area near the junction of the sidewall and ceiling of the Amano
`train would render the Amano train unsatisfactory for its intended purpose. For example, if the
`wall surface structure near the information display device 8 were to be extended so that the screen
`of the information display device 8 were “substantiallyflushed” with its adjacent walls, the storage
`areas would need to be substantially reduced in size or eliminated entirely. It is not clear to Patent
`Owner why one would be motivated to make such a modification, where the modification would
`remove desirable storage area on the train of Amano, thereby leading to a situation where no
`overhead storage is available for passengers’ luggage or other items. By analogy, one would not
`design a commercial airliner such that no overhead storage was available (thereby requiring
`passengers to check all baggage).
`
`Note also that the cross-sectional view in FIG. 4 of Amano reproduced above shows a
`thin outer shell or body for the train car with seemingly little or no interior volume of space,
`thereby frustrating mounting of the monitor screen flush therewith (otherwise, the back of the
`monitor, wiring, etc., would protrude through the car body and be exposed on the outside), which
`is clearly undesirable.
`
`Furthermore,it is a stated purpose of Amanoto take the opportunity to effectively use the
`time on a transportation vehicle to provide various information to people who are using various
`cited transportation vehicles(i.e., airplane, train and bus). Accordingly, if Amano were modified
`so that the display devices 8 were flush with the adjacent wall surface structure of the car, and the
`storage areas were modified to protrude further away from the sidewall to accommodate for the
`space taken up by the flush mounted monitors, passengers would place luggage or other articies
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