EXHIBIT 1017
`EXHIBIT 1017
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`Ex. 1017 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
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`Ex. 1017 – TCL Indus Holdings Co., Ltd.
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`Customer No. 035884
`
`Attorney Docket No. 2080-3507
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Art Unit:
`
`2622
`
`Examiner: DESIR, Jean Wicel
`
`Conf. No.:
`
`6246
`
`In re application of:
`Jong Wook Lee
`
`Serial No:
`
`11/401,798
`
`Filed:
`
`April 10, 2006
`
`FOR: AUDIO AND VIDEO SYNCHRONIZING
`APPARATUS AND METHOD
`
`AMENDMENT IN RESPONSE TO AFTER FINAL
`REJECTION UNDER 37 C.F.R. § 1.116
`
`Mail Stop AF
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This paper is in response to the Final Office Action dated July 12, 2010, in
`
`connection with the above-identified application, the response to which is due October
`
`12, 2010.
`
`It is believed that no fee is due in connection with this paper. This paperis
`
`submitted with a Request for Continued Examination (RCE) and the corresponding fee.
`
`Please charge any fees and credit any overpayment to our deposit account No. 502290.
`
`Please enter and consider the following amendments and remarks:
`
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`IN THE CLAIMS:
`
`Please amend claims 1-11, 16 and 17 asfollows:
`
`1.
`
`(Currently amended) An audio and video synchronizing apparatus
`
`comprising:
`
`a video signal processing unit processing a video signal eutputted-outputto a
`
`display device of a-video processing equipment;
`
`an audio signal processing unit outputting an audio signal, the audio signal
`
`eutputtedoutputto an audio device of the video processing equipment and
`
`synchronized with the video signal;
`
`a switching unit selecting paths for thevideo signalandaudie-signatrespectively
`
`inputtedinputto the video signal processing unit precesserand audio signal input to the
`
`audio signal processing unitsrecesser, and pathsferselecting at least a video and/eror
`
`audio signats-outputted-signal output to an external device that is not part of the video
`
`processing equipment:
`
`
`an outputting unit outputting at least the audio and/eror video signal selected by
`
`the switehswitching unit; and
`
`an output selecting unit controlling the switching unit according to a kind of the
`
`external device connected to the outputting unit; and thus-selectively outputtingatleast
`
`the audio and/eror video signal to the external device,
`
`wherein the video signal is output to the display device of the video processing
`
`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external device simultaneously.
`
`2.
`
`(Currently amended) The apparatus according to claim 1, further
`
`comprising a detector detecting athekind of the external device connected to the
`
`outputting unit.
`
`3.
`
`(Currently amended) The apparatus according to claim 1, wherein the
`
`
`
`kind of the external device connected to the outputting unit isdetectedto-determine
`
`
`
`whetherthe-externaldevicecither is-an audio/video device or an audio device.
`
`2
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`Attorney Docket No. 2080-3507
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`Ex. 1017 — TCL Indus Holdings Co., Ltd.
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`A.
`
`(Currently amended) The apparatus according to claim_3-+, wherein when
`
`itis determined that the external device connectedto the outputting unit is aa-theaudio
`
`device, the switching unit seleets-anis controlled to select the audio signal thatis
`
`synchronized with athevideo signal euteuttedoutputto the display device of the video
`
`processing equipment.
`
`5.
`
`(Currently amended) The apparatus according to claim 1, wherein the
`
`kind of the external device connected to the outputting unit is determined according to
`
`whether ernetthe external device is connected to a video output port arnd/eror an audio
`
`output port.
`
`6.
`
`(Currently amended) An audio and video synchronizing apparatus
`
`comprising:
`
`a video signal processing unit processing a video signal eutouttedoutputto a
`
`display device of avideo processing equipment;
`
`an audio signal processing unit outputting an audio signal, the audio signal
`
`eutputtedoutputto an audio device of the video processing equipment and
`
`synchronizedwith the video signal; and
`
`an output selecting unit selecting aa-theaudio signal thatissynchronized with
`
`the video signal and outputting the audio signal to an external device that is not part of
`
`the video processing equipment,
`
`wherein the video signal is output to the display device of the video processing
`
`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external device simultaneously.
`
`7.
`
`(Currently amended) An audio and video synchronizing apparatus
`
`comprising:
`
`a video signal processing unit processing a video signal eutputted-outputto a
`
`display device of a-video processing equipment;
`
`3
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`Attorney Docket No. 2080-3507
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`an audio signal processing unit outputting aa-theaudio signal that is
`
`synchronized with the video signal; and
`
`
`an audio output selecting unit selecting an audio signal that is synchronized with
`
`the video signal; and outputting the audio signal to an external device that is not part of
`
`the video processing equipment,
`
`wherein the video signal is output to the display device of the video processing
`
`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external device simultaneously.
`
`8.
`
`(Currently amended) An audio and video synchronizing apparatus
`
`comprising:
`
`a video signal processing unit processing a video signal eutouttedoutputto a
`
`display device of a-video processing equipment;
`
`an audio signal processor outputting an audio signal, the audio signal eutsuted
`
`outputto an audio device of the video processing equipment and synchronized with the
`
`video signal;
`
`an outputting unit outputting at least the audio aad/eror video signal to an
`
`external device that is not part of the video processing equipment; and
`
`an output selecting unit selectively outputting at least the audio and/eror video
`
`signal to the external device according to a kind of the external device connected to the
`
`outputting unit,
`
`wherein the video signal is output to the display device of the video processing
`
`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external device simultaneously.
`
`9.
`
`(Currently amended) An audio and video synchronizing apparatus
`
`comprising:
`
`a video signal processing unit processing a video signal eutputtedoutputto a
`
`display device of a-video processing equipment;
`
`an audio signal processing unit outputting an audio signal, the audio signal
`
`eutputtedoutputto an audio device of the video processing equipment and
`
`4
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`Attorney Docket No. 2080-3507
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`synchronized with the video signal;
`
`an outputting unit outputting at least the audio aad/eror video signal to an
`
`external device that is not part of the video processing equipment;
`
`a detecting unit detecting a kind of the external device connected to the
`
`outputting unit; and
`
`
`an output selecting unit selecting aa-theaudio signal that is synchronized with
`
`the video signal when it is detected that the external device is an audio device; and
`
`transmitting the audio signal to the external audio device through the outputting unit,
`
`wherein the video signal is output to the display device of the video processing
`
`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external device simultaneously.
`
`10.
`
`(Currently amended) A method of controlling audio and video output
`
`comprising:
`
`determining a kind of an external device connected to an output port of a-video
`
`processing equipment; and
`
`
`selecting an audio signal that is synchronized with a video signal eutoutted
`
`outputto a display device of the video processing equipment according to a result of the
`
`determination; and outputting the audio signal to the external device that is not part of
`
`the video processing equipment,
`
`wherein the video signal is output to the display device of the video processing
`
`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external device simultaneously.
`
`
`
`11.the(Currently amended) The method according to claim 10, wherein
`
`
`
`eperation-ofdetermining the kind of the external device determined-comprises
`
`determining whethererretthe external device connected to the output port is an audio
`
`device.
`
`12.
`
`(Original) The method according to claim 10, further comprising selecting
`
`an audio signal outputted to a speaker of the video processing equipment and
`
`3
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`Attorney Docket No. 2080-3507
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`synchronized with the video signal, and outputting the audio signal to the external
`
`device.
`
`13.
`
`(Original) The method according to claim 10, wherein the operation of
`
`selecting the audio signal synchronized with the video signal and outputting the audio
`
`signal to the external device is performed automatically according to a result of the
`
`determination of the kind of the external device.
`
`14.=(Original) The method according to claim 10, wherein the operation of
`
`selecting the audio signal synchronized with the video signal and outputting the audio
`
`signal to the external device is performed by user’s output modesetting.
`
`15.
`
`(Original) The method according to claim 10, wherein the audio signal
`
`synchronized with the video signal is an audio signal delayed corresponding to a video
`
`signal processing path.
`
`16.
`
`(Currently amended) A method of controlling audio and video output
`
`comprising:
`
`selecting an externaldevice-output mode of a-video processing equipment; and
`
`selecting an audio signal synchronized with a video signal euteuttedoutputto a
`
`display device of the video processing equipment whenthe selected output modeis for
`
`an external audio device;; and
`
`outputting the audio signal to the external audio device that is not part of the
`
`video processing equipment,
`
`wherein the video signal is output to the display device of the video processing
`
`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external audio device simultaneously.
`
`17.|(Currently amended) The method according to claim 16, further
`
`comprising:
`
`selecting an audio signal eutouttedoutput to a speaker of the video processing
`
`6
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`Attorney Docket No. 2080-3507
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`equipment and synchronized with the video signal-;_and
`
`outputting the audio signal to the external audio device.
`
`18.
`
`(Original) The method according to claim 16, wherein the audio signal
`
`synchronized with the video signal is an audio signal delayed corresponding to a video
`
`signal processing path.
`
`7
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`Attorney Docket No. 2080-3507
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`REMARKS
`
`Applicant has studied the Office Action dated July 12, 2010. Claims 1-18 are
`
`pending. Claims 1-11, 16 and 17 have been amended. Claims 1, 6-10 and 16 are
`
`independentclaims. No new matter has been added as the amendments have support
`
`in the specification as originally filed.
`
`lt is submitted that the application, as amended, is in condition for allowance.
`
`Reconsideration and reexamination are respectfully requested.
`
`Amendments to the Claims
`
`Claims 2-5, 11 and 17 have been amended to correct grammatical errors or to
`
`more clearly disclose the invention.
`
`It is respectfully submitted that the amendments
`
`have support in the application as originally filed and are not related to patentability.
`
`§ 102 Rejections
`
`Claims 6 and 7 were rejected under 35 U.S.C. § 102(a) as being anticipated by
`
`the Applicant Admitted Prior Art or Related Art (AAPA). Applicant respectfully disagrees
`
`with the Examinerinterpretation of the AAPA and traversesthe rejection.
`
`It is noted that a proper rejection for anticipation under § 102 requires complete
`
`identity of invention. The claimed invention, including each element thereof as recited in
`
`the claims, must be disclosed or embodied, either expressly or inherently, in a single
`
`reference. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576,
`
`18 U.S.P.Q.2d 1001, 1010 (Fed. Cir. 1991); Standard Havens Prods.,
`Inc. v. Gencor
`
`Indus.,
`Inc., 953 F.2d 1360, 1369, 21 U.S.P.Q.2d 1321, 1328 (Fed. Cir. 1991).
`
`As waspreviously noted in the response submitted on April 5, 2010 to the
`
`Office Action issued January 6, 2010, the Examiner, at page 2 of the Final Office Action,
`
`baseshis entire rejection of independent claims 6 and 7 on the disclosure in “FIG. 3”
`
`and the related disclosure of the AAPA. As wasfurther previously submitted in the
`
`response submitted on April 5, 2010, “FIG. 3” of the AAPA wasinadvertently labeled as
`
`“Related Art” but was re-labeled as not being “Related Art” and it is again respecttully
`
`submitted that “FIG. 3” is not part of the AAPA and, therefore, the Examiner has actually
`
`8
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`Attorney Docket No. 2080-3507
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`based his rejection on the disclosure of the present invention to which independent
`
`claims 6 and 7 are properly directed andit is respectfully requested that the rejection be
`
`withdrawn.
`
`It is noted that the Examiner, in the Response to Arguments on pages5-7 of the
`
`Final Office Action, asserts that the Applicant’s prior inadvertent labeling of “FIG. 3” as
`
`“Related Art” in the response submitted on October 13, 2009 was not accidental and
`
`again asserts that “FIG. 3” is “Prior Art” or “Related Art.” It is further noted that the
`
`Examinerfurther asserts that “paragraphs [0038]-[0040] of the specification clearly
`
`describe the problems cause[d] by the Related Art or Prior Art Fig. 3 that the Applicant
`
`tries to solve through Figs. 4 and/or 5; see paragraphs [0041]-[0042] where the
`
`Applicant clearly describes Fig. 4, which shows the improvement from the Related Art
`
`Fig. 3 according to an embodimentof the present invention; nowherein the specification
`
`[has Fig. 3] been described according to an embodimentof the present invention.
`
`Paragraph [0026] recites ‘Fig. 3 ...., a video processing equipment employing the
`
`present invention’; that does not mean Fig. 3 in not ‘Related Art’ or ‘Prior Art’ [as]
`
`argued by the Applicant, the Applicant uses the Related Art Fig. 3 to come [up] with an
`
`improvement which clearly showsin Fig. 4.” (emphasis in original).
`
`Applicant respectfully questions the basis for the Examiner's statement, at page
`
`6 of the Final Office Action, that “the Applicant has labeled Figures 1-3 ‘Related Art’ not
`
`accidentally, but because Figures 1-3 were objected to for only that which is illustrated
`
`(see the Office Action mailed on 9/3/09).” Applicant respectfully directs the Examiner’s
`
`attention to the response submitted on April 5, 2010 to the Office Action mailed on
`
`January 6, 2010, specifically the remarks on page7 that are reproduced for the
`
`Examiner's convenience:
`
`With this paper, amended Figure 3 has been submitted that has the label
`
`“Related Art” removed.
`
`It is respectfully submitted that he previous response
`
`submitted on October 13, 2009 to the Office Action issued September 3, 2009
`
`inadvertently added the label “Related Art” to FIG 3.
`
`It is noted that the application as originally filed indicated at paragraph
`
`0026 that “Fig. 3 illustrates the configuration of an audio and video signal
`
`9
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`Attorney Docket No. 2080-3507
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`processing unit 40 of a digital TV, a video processing equipment employing the
`
`present invention.” It is further noted that the only references to “FIG. 3”in the
`
`application as originally tiled are in the section labeled “SETIAILED
`
`DESCRIPTION OF THE INVENTION”andthat the only figures referred to in the
`
`section labeled “Description of the Related Art’ Are FIGS. 1 and 2. Thereforeit is
`
`respectfully asserted that “FIG. 3” is not “Related Art’ or “Prior Art.”
`
`It is noted that the Examiner appears to be asserting that the Applicant has in
`
`some way attempted to deceive the Examinerin the response submitted on April 5,
`
`2010.
`
`Itis further noted that the application as originally filed did not label “FIG. 3” as
`
`“Prior Art” or “Related Art” and the inadvertent labeling of “FIG. 3” as “Related Art”
`
`occurred in response to the Examiner's objection to the drawings in the Office Action
`
`issued September 3, 2009 and “FIG. 3” was not labeled as “Related Art” voluntarily.
`
`lt is respectfully submitted that the Applicant, when drafting the patent
`
`application, is free to determine which disclosure is believed to be “Prior Art” or “Related
`
`Art” and which disclosure relates to the Applicant's invention.
`
`It is further respectfully
`
`submitted that very disclosure that the Examiner has cited at paragraph [0026]of the
`
`application as originally filed is “a video processing equipment employing the present
`
`invention” and the useof the word “employing”clearly indicates that FIG. 3 is directed to
`
`incorporating the present invention. Moreover,it is respectfully submitted that the
`
`Examiner has not provided any reference to support his assertion that the disclosure in
`
`“FIG. 3” is “Prior Art” or “Related Art” other than the Applicant’s own disclosure and that,
`
`if “FIG. 3” were truly representative of “Prior Art” or “Related Art,” the Examiner would
`
`be able to provide such a “Prior Art” reference other than the Applicant’s own disclosure.
`
`Notwithstanding that Applicant maintains the assertion that the Examiner has
`
`improperly based his rejection of independent claims 6 and 7 on the Applicant’s
`
`disclosure of the invention, independent claims 6 and 7 have been amendedwiththis
`
`paperto further prosecution and to better disclose the invention by reciting an output
`
`selecting unit selecting the audio signal that is synchronized with the video signal and
`
`outputting the audio signal to an external device that is not part of the video processing
`
`equipment and the video signal is output to the display device of the video processing
`
`10
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`Attorney Docket No. 2080-3507
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`equipment and the audio signal that is synchronized with the video signal is output to
`
`the external device simultaneously.
`
`It is respectfully submitted that support for the
`
`amendments may be found in the application as originally filed at at least paragraphs
`
`[0044]-[0050] and FIG. 4.
`
`Itis further respectfully submitted the AAPA, and specifically
`
`FIG. 3 cited by the Examiner, fails to disclose this limitation. Therefore, it is respectfully
`
`asserted that independent claims 6 and 7 are allowable over the cited reference.
`
`§ 103 Rejections
`
`Claims 1-5 and 8-18 were rejected under 35 U.S.C. § 103(a) as being
`
`unpatentable over the AAPA in view of Maeharaetal. (“Maehara” U.S. Pub. No.
`
`2005/0147129). Applicant respectfully disagrees with the Examiner’s interpretation of
`
`the AAPA and traverses the rejections.
`
`It is noted that the Federal Circuit has provided that an Examiner mustestablish
`
`a caseof prima facie obviousness. Otherwise the rejection is incorrect and must be
`
`overturned. As the court recently stated in In re Rijkaert, 28 USPQ2d 1955, 1956 (Fed.
`
`Cir. 1993):
`
`“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
`
`of presenting a prima facie case of obviousness. Only if that burden is met, does the
`
`burden of coming forward with evidence or argument shift to the applicant.
`
`‘A prima
`
`facie case of obviousnessis established when the teachings from the prior art itself
`
`would appear to have suggested the claimed subject matter to a person of ordinaryskill
`
`in the art.’
`
`If the examiner fails to establish a prima facie case, the rejection is improper
`
`and will be overturned.” (citations omitted.)
`
`It is noted that the Examiner, at pages 3-5 of the Final Office Action, asserts that
`
`the AAPAdiscloses both the “outputting unit” and “output selecting unit” as recited in
`
`independent claims 1, 8-10 and 16. As previously respectfully submitted, “FIG. 3”is not
`
`“Related Art” or part of the AAPA.
`
`Notwithstanding that Applicant maintains the assertion that the Examiner has
`
`improperly based his rejection of independent claims 1, 8-10 and 16 on the Applicant's
`
`disclosure of the invention, independentclaims 1, 8-10 and 16 have been amended with
`
`this paperto recite limitations similar to those of independent claims 6 and 7, specifically
`
`11
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`Attorney Docket No. 2080-3507
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`outputting at least the audio or video signal to an external device that is not part of the
`
`video processing equipment and the videosignal is output to the display device of the
`
`video processing equipment and the audio signal that is synchronized with the video
`
`signal is output to the external device simultaneously. As previously respectfully
`
`submitted, the AAPAfails to disclose theselimitations.
`
`It is further respectfully
`
`submitted that Maeharafails to cure the deficiency of the AAPA with regard to outputting
`
`at least the audio or video signal to an external device that is not part of the video
`
`processing equipment and the video signal is output to the display device of the video
`
`processing equipment and the audio signal that is synchronized with the video signalis
`
`output to the external device simultaneously.
`
`Therefore, it is respectfully asserted that independent claims 1, 8-10 and 16 are
`
`allowable over the asserted combination of references.
`
`It is further respectfully asserted
`
`that claims 2-5, 11-15, 17 and 18 also are allowable over the cited combination of
`
`referencesatleast by virtue of their dependence from an allowable independent claim.
`
`12
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`CONCLUSION
`
`In view of the above remarks, Applicant submits that claims 1-18 of the present
`
`application are in condition for allowance. Reexamination and reconsideration of the
`
`application, as originally filed, are requested.
`
`No amendment made wasrelated to the statutory requirements of patentability
`
`unless expressly stated herein; and no amendment made wasfor the purpose of
`
`narrowing the scope of any claim, unless Applicant has argued herein that such
`
`amendment was made to distinguish over a particular reference or combination of
`
`references.
`
`lf for any reason the Examinerfinds the application other than in condition for
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`allowance, the Examiner is requested to call the undersigned attorney at the Los
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`Angeles, California telephone number (213) 623-2221 to discuss the steps necessary
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`for placing the application in condition for allowance.
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`LEE, HONG, DEGERMAN, KANG & WAIMEY
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`Date: October 11, 2010 By:__/Richard C. Salfelder/
`Richard C. Salfelder
`Registration No. 51,127
`Attorney for Applicant(s)
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`Customer No. 035884
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`13
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`Attorney Docket No. 2080-3507
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`Ex. 1017 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 14 of 14
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`Ex. 1017 – TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`Page 14 of 14
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