EXHIBIT 1016
`EXHIBIT 1016
`
`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 1 of 10
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`Page 1 of 10
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450.
`www.usptlo.gov
`
`
`
`2080-3507
`
`6246
`
`11/401,798
`
`04/10/2006
`
`Jong Wook Lee
`
`LEE
`EC
`"ANG&
`LEE, HONG, DEGERMAN, KANG & WAIMEY Loe
`660 §. FIGUEROA STREET
`DESIR, JEAN WICEL
`Suite 2300
`PS ANGELES, CA 90017
`
`2622
`
`NOTIVICATION DATE
`
`DELIVERY MODE
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`07/12/2010
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`uspto @Ihlaw.com
`ip.[hlaw @ gmail.com
`ip.lhlaw@live.com
`
`PTOL-90A (Rev. 04/07)
`
`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 2 of 10
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`Page 2 of 10
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`
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`Application No.
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`Applicant(s)
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`LEE, JONG WOOK
`11/401,798
`Art Unit
`Examiner
`Office Action Summary
`
`Jean W. Désir 2622
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
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`
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`
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`9)L] The specification is objected to by the Examiner.
`10)X] The drawing(s)filed on 13 October 2009is/are: a)X] accepted or b)_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11)L] The oathor declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) OR THIRTY(30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensionsof time may be available under the provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHSfrom the mailing date of this communication.
`-
`If NO periodfor reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this cornmunication.
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)] Responsive to communication(s) filed on 05 April 2010.
`2a)X] This action is FINAL.
`2b)L] This actionis non-final.
`3)L Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
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`4)X] Claim(s) 1-18 is/are pending in the application.
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`4a) Of the aboveclaim(s)
`is/are withdrawn from consideration.
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`5)L] Claim(s)
`is/are allowed.
`6)X] Claim(s) 1-78 is/are rejected.
`7)L] Claim(s)__ is/are objected to.
`8)L] Claim(s)___ are subjectto restriction and/orelection requirement.
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`Application Papers
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`Priority under 35 U.S.C. § 119
`
`12)L] Acknowledgmentis made ofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f).
`a)LIJAIl 6) Some*c)] Noneof:
`1.[] Certified copiesof the priority documents have been received.
`2.01 Certified copiesof the priority documents have been received in Application No.
`3.0] Copiesofthe certified copies of the priority documents have beenreceivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) CL] Notice of References Cited (PTO-892)
`2) E] Noticeof Draftsperson’s Patent Drawing Review (PTO-948)
`3) [] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`4) CT Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __
`5) L] Notice of Informal Patent Application
`6) Oo Other:
`
`Office Action Summary
`
`Part of Paper No./Mail Date
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
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`Application/Control Number: 11/401,798
`Art Unit: 2622
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`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 102
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`1.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a) the invention was known or used by others in this country, or patented or described in a printed
`publication in this or a foreign country, before the invention thereof by the applicant for a patent.
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`2.
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`Claims 6, 7 are rejected under 35 U.S.C. 102(a) as being anticipated by the
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`Applicant Admitted Prior Art or Related Art (AAPA)Fig. 3.
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`Claim 6:
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`The AAPAFig. 3 discloses:
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`An audio and video synchronizing apparatus (see Fig. 3) comprising:
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`“a video signal processing unit processing a video signal outputted to a display
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`device of a video processing equipment”, see Fig. 3 items 42, 43, 44;
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`“an audio signal processing unit outputting an audio signal, the audio signal
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`outputted to an audio device of the video processing equipment and synchronized with
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`the video signal”, see Fig. 3 items 45, 46, paragraph [0031];
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`“and an output selecting unit selecting an audio signal synchronized with the
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`video signal and outputting the audio signal to an external device”, see Fig. 3 items 41,
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`45, 46.
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`Claim 7 is rejected for the same reasons as claim 6.
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
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`Application/Control Number: 11/401,798
`Art Unit: 2622
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`Page 3
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`Claim Rejections - 35 USC § 103
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`3.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis forall
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`obviousnessrejections setforth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if 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 ordinaryskill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`4.
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`Claims 1-5, 8-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`the Applicant Admitted Prior Art or Related Art (AAPA) Fig. 3 in view of Maeharaetal
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`(US 2005/0147129).
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`Claim 1:
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`The AAPAFig. 3 discloses:
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`An audio and video synchronizing apparatus (see Fig. 3) comprising:
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`“a video signal processing unit processing a video signal outputted to a display
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`device of a video processing equipment”, see Fig. 3 items 42, 43, 44;
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`“an audio signal processing unit outputting an audio signal, the audio signal
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`outputted to an audio device of the video processing equipment and synchronized with
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`the video signal”, see Fig. 3 items 45, 46, paragraph [0031];
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`“a switching unit selecting paths for video signal and audio signal respectively
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`inputted to the video signal processor and the audio signal processor, and paths for
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`video and/or audio signals outputted to an external device”, see Fig. 3 iter 41;
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`“an outputting unit outputting the audio and/or video signal selected by the
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`switch", see Fig. 3 items 44, 46, MONITOR OUTPUT ;
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
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`Application/Control Number: 11/401,798
`Art Unit: 2622
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`Page 4
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`“and an output selecting unit controlling the switching unit according to a kind of
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`the external device connected to the outputting unit, and thus selectively outputting the
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`audio and/or video signal to the external device”, see Fig. 3 item 41, paragraph [0037];
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`the difference between the claimed invention and the AAPA Fig. 3 is that the
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`AAPAdoesnot explicitly teach “according to a kind of the external device” as claimed.
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`However, the reference to Maehara showsthe structure of the claimed invention is a
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`notoriously well known technique in the art, as evidence see Maehara at paragraphs
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`[0009], [0047], and [0050], where Maehara teaches detecting and/or recognizing a kind
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`of the external device. Hence, becauseof these teachings, an artisan would be
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`motivated to combine the referencesto arrive at the claimed invention; and
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`synchronization between audio and video signal would be advantageously obtained.
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`Therefore, the claimed invention would have been obvious to a person of ordinaryskill
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`in the art at the time the invention was made.
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`Claim 2 is disclosed in view of the above combination, as pointed out above Maehara
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`detects a kind of the external device.
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`Claims 3-5 are disclosed in view of the above combination, see again Maeharaat
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`paragraphs [0009], [0047], [0050], and the AAPA Fig. 3, paragraph [0031].
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`Claim 8 is rejected for the same reasons asclaim 1.
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`Claim 9 is rejected for the same reasons as claims 1, 4.
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`Claim 10 is rejected for the same reasons as claim 9.
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`Claim 11 is disclosed, see Maehara at paragraphs [0009], [0047], [0050], and the AAPA
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`Fig. 3.
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
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`Application/Control Number: 11/401,798
`Art Unit: 2622
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`Page 5
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`Claims 12, 13 are disclosed, see the AAPA Fig. 3, and Maehara at paragraphs [0009],
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`[0047].
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`Claim 14 is disclosed, see the AAPAFig. 3 item 41, and Maeharaat paragraphs [0009],
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`[0047].
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`Claim 15 is disclosed, see the AAPAFig. 3 item 41, page 16 lines 1-9.
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`Claim 16 is rejected for the same reasons as claim 10.
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`Claim 17 is disclosed, see the AAPA Fig. 3 item 41.
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`Claim 18 is disclosed, see the AAPA Fig. 3 item 41, page 16 lines 1-9.
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`Responseto Arguments
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`5.
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`Applicant's arguments have beenfully considered but they are not persuasive.
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`The Applicant argues on pages 7and 8 of the REMARKSthat-it is respecttully
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`requestedthat the rejections (102 and 103 rejections) be withdrawn- because-It is
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`noted that the application as originally filed indicated at paragraph 0026 that "Fig. 3
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`illustrates the configuration of an audio and video signal processing unit 40 ofa digital
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`TV, a video processing equipment employing the present invention." It is further noted
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`that the only references to "FIG. 3” in the application as originally filed are in the section
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`labeled "DETIAILED DESCRIPTION OF THE INVENTION"and that the only figures
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`referred to in the section labeled "Description of the Related Art" Are FIGS. 1 and 2.
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`Thereforeit is respectfully asserted that "FIG. 3" is not "Related Art" or "Prior Art."-
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`These arguments are not persuasive for the following reasons:
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
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`Application/Control Number: 11/401,798
`Art Unit: 2622
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`Page 6
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`In the Responsefiled on 10/13/09, the Applicant clearly stated that -The
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`Examiner objected to the drawings. Specifically, the Examiner asserted that
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`Figures 1-3 should be designated with a legend such as "Prior Art." With this paper,
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`amended Figures 1-3 have been submitted that are labeled as "Related Art.”It is
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`respectfully submitted that the grounds for objection have been overcome andit is
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`respectfully requested that the Examiner withdraw the objection.- Thus, the Applicant
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`has labeled Figures 1-3 “Related Art” not accidentally, but because Figures 1-3 were
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`objected to for only that which old is illustrated (see the Office Action mailed on 9/3/09).
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`And the objection to the drawing of Figures 1-3 that have been labeled “Related Art” has
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`been withdrawn; and Fig. 3 (Related Art or Prior Art) has been used in the Office Action
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`mailed on 1/6/10 because Fig. 3 labeled “Related Art” by the Applicant illustrates only
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`that which is old or Knownto one ordinary skill in the art; paragraphs [0038]-[0040] of
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`the specification clearly describe the problems cause by the Related Art or Prior Art Fig.
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`3 that the Applicant tries to solve through Figs. 4 and/or 5; see paragraphs [0041]-
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`[0042] where the Applicant clearly describes Fig. 4, which shows the improvement from
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`the Related Art Fig. 3, according to an embodiment of the present invention; nowhere in
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`the specification Fig. 3 has been described according to an embodiment of the present
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`invention. Paragraph [0026] recites “Fig. 3 ...., a video processing equipment
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`employing the present invention"; that does not mean Fig. 3 is not "Related Art" or
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`"Prior Art" are argued by the Applicant, the Applicant uses the Related Art Fig. 3 to
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`come with an improvement which clearly showsin Fig. 4. And the Applicant should also
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`note that because a device is described in the "DETAILED DESCRIPTION OF THE
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
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`Application/Control Number: 11/401,798
`Art Unit: 2622
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`Page 7
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`INVENTION", it does not necessarily mean that the device is not generally known to
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`one skill in the art. Thus, Fig. 3 is "Related Art" or "Prior Art" as amended by the
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`Applicant in the amendmentfiled on 10/13/09. The Applicant argumentsare not
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`persuasive the rejections are maintained before the Office.
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`Conclusion
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`6.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`
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`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
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`TWO MONTHS ofthe mailing cate of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however,will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date ofthis final action.
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`7.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jean W. Désir whose telephone number is (571) 272
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`7344. The examiner can normally be reached on 5/4/9 - First Friday Off.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, David L. Ometz can be reached on (571) 272 7593. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
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`Application/Control Number: 11/401,798
`Art Unit: 2622
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`Page 8
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`8.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on accessto the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free).
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`JWD
`6-23-10
`
`[David L. Ometz/
`Supervisory Patent Examiner, Art Unit 2622
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`Ex. 1016 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1016 – TCL Indus Holdings Co., Ltd.
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