UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMIVEERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 223 1 3- 1450
`www.uspto.gov
`
`14/829,693
`
`08/19/2015
`
`Shojirou KIDO
`
`NIIPP0143US
`
`5564
`
`
`
`
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`
`CLEVELAND, OH 44115
`
`LIU’LI
`
`ART UNIT
`
`2636
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/08/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`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):
`
`ipdocket @rennerott0.c0m
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`UNITED STATES DEPARTMENT OF COMIVEERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 223 1 3- 1450
`www.uspto.gov
`
`14/829,693
`
`08/19/2015
`
`Shojirou KIDO
`
`NIIPP0143US
`
`5564
`
`
`
`
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`
`CLEVELAND, OH 44115
`
`LIU’LI
`
`ART UNIT
`
`2636
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/08/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`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):
`
`ipdocket @rennerott0.c0m
`
`PTOL—90A (Rev. 04/07)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte SHOJIROU KIDO
`
`Appeal 2018-009077
`Application 14/829,693
`Technology Center 2600
`
`BEFORE CAROLYN D. THOMAS, ADAM J. PYONIN, and
`
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
`
`Examiner’s decision to reject claims 1—3, 5, 6, and 11. Claim 4 is canceled;
`
`claims 7—10 are withdrawn. See App. Br. 18—20 (Claims Appendix). We
`
`have jurisdiction under 35 U.S.C. § 6(b).
`
`We AFFIRM.
`
`1 We use the word “Appellant” to refer to “Applicant” as defined in 37
`C.F.R. § 1.42(a). Appellant identifies the real party in interest as Panasonic
`Intellectual Property Management Co., Ltd. Appeal Br. 2.
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`CLAIMED SUBJECT MATTER
`
`The claims are directed to a Visible light communication deVice. See
`
`Spec., Abstract. Claim 1, reproduced below, is illustrative of the claimed
`
`subject matter (emphasis added):
`
`1.
`
`A Visible light communication deVice comprising:
`a light source unit configured to emit Visible light for
`Visible light communication; and
`a control circuit that generates an original signal of the
`Visible light to be emitted by the light source unit, wherein the
`control circuit generates the original signal that includes a
`payload part, a Cyclic Redundancy Check (CRC) part, and a
`recognition part, the payload part including identification
`information identifying the Visible light communication deVice,
`the CRC part being determined according to data indicated in
`the payload part, and the recognition part being arranged
`immediately subsequent to the CRC part, and in the recognition
`part, a time-series pattern including a bright state where the
`light source emits the visible light and a dark state where the
`light source does not emit the visible light has2 a pattern not
`complying with Inverted 4-ary Pulse Position Modulation (l-
`4PPM) coding rule of CP-1223 standard.
`
`REJECTIONS
`
`Claims 1—3, 5, 6, and 11 rejected under 35 U.S.C. § 112(a) or 35
`
`U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
`
`written description requirement. Final Act. 8.
`
`Claims 1—3 stand rejected under 35 U.S.C. § 103 as being
`
`unpatentable over Murayama (US 2013/0343762 A1, Dec. 26, 2013) and
`
`Balasubramanian (US 5,557,634, Sept. 17, 1996). Id. at 9.
`
`2 This phrase appears to be missing a word such as “and” before the word
`“has.”
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
`
`over Murayama, Balasubramanian, and Knapp (US 2013/0183042 A1, July
`
`18, 2013). Id. at 12.
`
`Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
`
`over Murayama, Balasubramanian, and Ryan (US 2015/0147067 A1, May
`
`28,2015). Id. at 13.
`
`Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
`
`over Murayama, Balasubramanian, and Knapp.3 Id. at 14.
`
`Claims 1—3 also stand rejected under 35 U.S.C. § 103 as being
`
`unpatentable over Murayama, Freitas, and Hermann (US 2008/0231434 A1,
`
`Sept. 25, 2008). Id. at 17.
`
`Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
`
`over Murayama, Freitas, Hermann, and Ryan (US 2015/0147067 A1, May
`
`28,2015). Id. at 21.
`
`Claims 5 and 114 also stand rejected under 35 U.S.C. § 103 as being
`
`unpatentable over Murayama, Freitas, Hermann, and Knapp. Id. at 20—22.
`
`We review the appealed rejections for error based upon the issues
`
`identified by Appellant and in light of the arguments and eVidence produced
`
`thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
`
`3 The Final Action states that claim 11 is rejected under Murayama,
`Balasubramanian, and Ryan but applies Knapp instead of Ryan. Final Act.
`1 6.
`
`4 The Final Action also states that claim 11 is rejected under Murayama,
`Freitas, Hermann, and Ryan but applies Knapp instead of Ryan. Final Act.
`25.
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`ANALYSIS
`
`Rejections under § 112
`
`The Examiner rejects claims 1 and 11, finding the phrase “the
`
`recognition part .
`
`.
`
`. has a pattern not complying with Inverted 4-ary Pulse
`
`Position Modulation (I-4PMM) coding rule of CP-1223 standard” lacks
`
`written description support in the original disclosure. Final Act. 8—9. The
`
`Examiner finds, “according to the original disclosure, the recognition part
`
`has a pattern [that] does not comply with 4PPM coding rule of CP-1223
`
`standard. The original disclosure does not state that the recognition part has
`
`a pattern not complying with Inverted 4-ary Pulse Position Modulation gI-
`
`w) coding rule of CP-1223 standard.” Id.
`
`The originally filed Specification discloses a “preamble has a pattern
`
`that cannot be generated by coding according to 4-ary Pulse Position
`
`Modulation (4PPM) coding rule, in other words, a pattern not complying
`
`with 4PPM coding rule.” Spec. 9:24—10:2. During prosecution, Appellant
`
`amended the Specification to read, “the preamble has a pattern that cannot
`
`
`be generated by coding according to Inverted 4-ary Pulse Position
`
`Modulation {441111549 gI-4PPM2 coding rule, in other words, a pattern not
`
`
`complying with 4—P—PM I-4PPM coding rule.” February 10, 2017 Amdt.
`
`(“Amdt.”), 2.5
`
`On appeal, Appellant argues its amendment was to correct an
`
`“obvious error.” App. Br. 5. Appellant relies on In re Oda, asserting “[a]n
`
`amendment to correct an obvious error does not constitute new matter where
`
`one skilled in the art would not only recognize the existence of the error in
`
`5 Appellant similarly amended other portions of the Specification. Amdt. 2—
`3.
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`the specification but also recognize the appropriate correction.” Id. (citing
`
`In re Odd, 443 F.2d 1200 (CCPA 1971); MPEP § 2163.07). According to
`
`Appellant, the original disclosure of 4PPM, rather than I-4PPM, was
`
`obvious error because “the coding rule of CP-1223 standard is not 4-ary
`
`Pulse Position Modulation, as that sentence stated, but Inverted 4-ary Pulse
`
`Position Modulation (I-4PPM).” App. Br. 5. Appellant reproduces a page
`
`purportedly from the CP-1223 standard (in Japanese) and asserts the
`
`following:
`
`The English translation of section 5.3 is as follows:
`5.3 Transmission method
`
`As a coding method of modulating the intensity of visible
`light which is a carrier wave, logically inverted 4-ary Pulse
`Position Modulation (4PPM) is used. Such a modulation
`method is called I-4PPM (Inverted 4PPM).
`
`Id. at 6—7 (citing http://www.jeita.or.jp/japanese/standard/book/CP-
`
`1223/#page=7). Appellant concludes that in light of this translation, “[o]ne
`
`skilled in the art would not only recognize the existence of this error in the
`
`specification but also recognize the appropriate correction.” Id. at 7.
`
`Appellant also contests the Final Action’s characterization of the
`
`Specification’s Figure 5 as “clearly an Inverted-4PPM.” Id. at 8 (citing
`
`Final Act. 3—6). Appellant asserts that CP-1223 defines I-4PPM in a certain
`
`way and asserts that the pattern shown in Figure 5 is not compliant with I-
`
`4PPM. Id. at 8—9.
`
`In the Answer, the Examiner finds, “[t]he CP-1223 standard does not
`
`state that all fields are in I-4PPM, some fields are in 4PPM.” Ans. 22 (citing
`
`JEITA CP-I223 Visible Light Beacon System, 6). “That is,” the Examiner
`
`finds, “according to CP-1223, some fields [are] complying with 4PPM and
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`some fields are according to .
`
`.
`
`. I-4PPM.” Id. Appellant does not dispute
`
`this finding, as Appellant did not file a Reply Brief. Further, the Examiner
`
`also finds, and Appellants do not dispute, that the foreign application (JP
`
`2014-183714) upon which Appellant relies for priority “also clear[ly] states
`
`that the preamble and A1 field are not complying with 4PPM coding rule.”
`
`Id.
`
`At the outset, we agree with Appellant that an amendment to correct
`
`an obvious error does not constitute new matter where one skilled in the art
`
`would not only recognize the existence of the error in the specification, but
`
`also recognize the appropriate correction. See Odd, 443 F.2d at 1205—1206.
`
`Where we disagree with Appellant is in the application of Odd to the present
`
`case. In Odd, the appellant produced an affidavit from a qualified chemist
`
`showing that the passage at issue in the written description was “obviously
`
`in error.” Id. Based on this evidence, the court concluded that one of
`
`ordinary skill in the art would have “appreciate[d] not only the existence of
`
`error in the specification but what the error is.” Id. at 1206. The court also
`
`found there was “adequate evidence in the record to show that the error .
`
`.
`
`.
`
`was a translation error” from an earlier-filed application, based on a reissue
`
`oath and affidavit. Id.
`
`Unlike Odd, Appellant here presents no affidavit or declaration
`
`evidence to support its assertions. Instead, Appellant reproduces a page in
`
`Japanese, allegedly from the CP-1223 standard, provides an alleged
`
`translation without evidentiary support (such as a declaration attesting to its
`
`authenticity), and asserts that Figure 5 of the Specification is not compliant
`
`with I-4PPM, again without evidentiary support. Attorney argument is not
`
`evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). And
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`counsel’s argument “cannot take the place of evidence lacking in the
`
`record.” Estee Lauder Inc. v. L ’Oreal, SA, 129 F.3d 588, 595 (Fed. Cir.
`
`1997). Moreover, in view of the Examiner’s undisputed finding that CP-
`
`1223 also refers to 4PPM (Ans. 22), one of ordinary skill in the art would
`
`not have appreciated that there was an obvious error in the Specification and
`
`claims and that the Specification and claim amendments were the
`
`appropriate corrections. See Oda, 443 F.2d at 1206.
`
`We, therefore, sustain the Examiner’s § 112 rejection of claims 1—3,
`
`5,6 and 11.
`
`Rejections under § 103
`
`The Examiner rejected independent claim 1 under two separate
`
`combinations: (1) Murayama and Balasubramanian and (2) Murayama,
`
`Freitas, and Hermann.6 Final Act. 9, 17. We address each in turn.
`
`I.
`
`Rejection over Murayama and Balasubramanian
`
`Appellant contends Murayama and Balasubramanian fail to teach or
`
`suggest claim 1’s “in the recognition part, a time-series pattern including a
`
`bright state where the light source emits the visible light and a dark state
`
`where the light source does not emit the visible light.” App. Br. 10—11
`
`(emphasis omitted). Initially, Appellant argues “the CF [closing flag]
`
`disclosed by Balasubramanian is a bit sequence ‘01 1 11110’ [that] complies
`
`. avoid an unnecessary number of
`.
`6 We note, “the examiner should .
`rejections over similar references. The examiner is not called upon to cite
`all references that may be available, but only the ‘best.’ .
`.
`. Multiplying
`references, any one of which is as good as, but no better than, the others,
`adds to the burden and cost of prosecution and should therefore be avoided.”
`MPEP § 904.03.
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`with Inverted 4-ary Pulse Position Modulation coding rule because in each
`
`of the first four bits ‘01 l l ’ and the next four bits ‘ l l lO,’ only one of the four
`
`consecutive bits is 0.” Id. at 10.
`
`The Examiner finds, “[t]he modulation schemes used by
`
`Balasubramanian are: ASK, NRZI etc., but not the 4PPM. And more,
`
`Balasubramanian does not state that the ‘01 l l ’ is used to encode two
`
`message bits (e. g., ‘00’ etc.).” Ans. 23. The Examiner finds that
`
`Balasubramanian’s bit sequence “is based on IBM’s SDLC protocol,” not “a
`
`PPM or I-PPM coding rule.” Id. Appellant does not challenge this finding,
`
`as Appellant did not file a Reply Brief. Arguments not made are waived.
`
`Accordingly, we do not find error in the Examiner’s reasonable findings
`
`regarding Balasubramanian’s CF not complying with 4PPM or I-4PPM.
`
`Further, Appellant contends Balasubramanian discloses an “infrared
`
`(IR) data link, not the bright and dark states of visible light of claim 1.”
`
`App. Br. 11. Appellant also contends Murayama discloses
`
`superimposition of data on spatial light through modulation of a
`carrier wave, again, not the bright and dark states of visible
`light of claim l[.] In fact, Murayama is explicit [i]n paragraph
`58 that “the PPM circuit is to irradiate visible light having
`constant luminance, irrespective of the data to be transmitted.”
`
`Id.
`
`The Examiner finds with respect to Balasubramanian, “[a]n IR light
`
`source can have a bright state when it emits light although a human eye does
`
`not see it, and a dark state when it does not emit light.” Ans. 24. With
`
`respect to Murayama, the Examiner finds, “Murayama clearly discloses a
`
`visible light communications.” Id. at 25. According to the Examiner, “[t]he
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`combination of Murayama and Balasubramanian reads on the claimed
`
`limitations.” Id. at 24.
`
`We agree with the Examiner. Appellant’s arguments attacking
`
`Murayama and Balasubramanian in isolation do not persuasively challenge
`
`the underlying factual findings made by the Examiner, which are based upon
`
`the combined teachings and suggestions of the cited references. One cannot
`
`show non-obviousness by attacking references individually, where the
`
`rejections are based on combinations of references. In re Merck & C0., Inc,
`
`800 F.2d 1091, 1097 (Fed. Cir. 1986).
`
`Appellant next attacks the rationale to combine Murayama and
`
`Balasubramanian. App. Br. 12. Appellant asserts, “it is not clear why the
`
`system of Murayama, unmodified, would have a problem with recognizing
`
`the end of the frame or recognizing the CRC.” Id. Appellant further asserts,
`
`“[t]he system of Murayama as disclosed seems perfectly capable of
`
`recognizing the end of the frame or recognizing the CRC as most
`
`transmission systems in the art do.” Id.
`
`The Examiner finds, and we agree, “Murayama discloses a CRC near
`
`the end of the frame, but a receiver needs to know the length of CRC. A
`
`close flag (CF) can clearly indicate the end of the CRC and the end of a
`
`frame.” Ans. 27. The Examiner further finds, “[w]hen the receiver detects
`
`the CF, the CRC can be conveniently recognized and the length of the CRC
`
`can be determined, and also the frame length can be determined.” Id.
`
`Appellant’s argument that Murayama “seems perfectly capable of
`
`recognizing the end of the frame” is conclusory and, in any event,
`
`unpersuasively addresses the Examiner’s contention that Balasubramanian’s
`
`closing flag “can clearly indicate the end of the CRC.” See id.; App. Br. 12.
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`Accordingly, we sustain the Examiner’s rejection of claim 1 in View
`
`of Murayama and Balasubramanian.
`
`II.
`
`Rejection over Murayama, Freitas, and Hermann
`
`Appellant also contends Murayama, Freitas, and Hermann fail to
`
`teach or suggest the same limitation of claim 1 discussed above. App. Br.
`
`12—13. For example, as with Balasubramanian, Appellant asserts Freitas
`
`“discloses an infrared (IR) data link,” not the “bright and dark states of
`
`Visible light of claim 1.” Id. at 13. But, as before, the Examiner relies on
`
`Murayama for “clearly disclos[ing] a Visible light communications.” Ans.
`
`28. The Examiner relies on Freitas for disclosing that “[a]n IR light source
`
`can ha[ve] a bright state when it emits light although a human eye does not
`
`see it, and a dark state when it does not emit light.” Id. Specifically, Freitas
`
`discloses an “infrared (IR) data link” using “on-off pulsing,” where
`
`“modulation is preferably on-off.” Freitas, 4:7—8, 5:25, 37. Appellant’s
`
`arguments attacking the references individually are again unpersuasive.
`
`Appellant also argues against the Examiner’s finding of design choice
`
`with respect to Freitas. App. Br. 13—14. In the Final Action, the Examiner
`
`f1nds, “although Freitas et al[.] doesn't specifically disclose the time-series
`
`pattern of the trailer part can have a pattern not complying [with] I-4PPM
`
`coding rule of CP-1223 standard, such limitation are merely a matter of
`
`design choice and would have been obVious in the system of Murayama and
`
`Freitas.” Final Act. 18. Appellant contends the Examiner “provides nothing
`
`more than conclusory statements.” App. Br. 14. Further, Appellant
`
`contends,
`
`as in Zimmer and In re Gal, the structure of the recognition part
`of claim 1 (“a time-series pattern .
`. .”) and the function it
`performs (allowing the recognition part to be easily
`
`10
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`recognizable from the other fields in the original signal) .
`different from the prior art.
`
`.
`
`. are
`
`Id. at 14—15 (citing Spec. 11:21—12:18; Zimmer, Inc v. Bonalti Skeletal
`
`Innovations, LLC, IPR20l4-01078; In re Gal, 980 F.2d 717, 719 (Fed. Cir.
`
`1992)).
`
`Although Appellant’s design choice argument may have merit, the
`
`Examiner additionally finds that Hermann discloses “a frame can have a
`
`recognition part .
`
`.
`
`. which may have 7 bits (EOF) or 9 bits (ACK+EOF),
`
`which is not complying with [I-4PPM].” Ans. 29; see also Final Act. 19.
`
`Appellant’s only argument against Hermann contends that Hermann
`
`“appears to disclose nothing regarding a ‘bright state .
`
`.
`
`. and a dark state.”
`
`App. Br. 15. Thus, regardless of whether Appellant’s design choice
`
`argument has merit, Appellant ignores the Examiner’s reliance on Hermann
`
`for the same limitation (non-compliance with I-4PPM). Accordingly,
`
`Appellant’s argument attacking the references individually is unpersuasive.
`
`Finally, Appellant contends one of ordinary skill in the art would not
`
`have combined Murayama, Freitas, and Hermann. App. Br. 16. But as
`
`above, Appellant makes the conclusory argument that “[t]he system of
`
`Murayama as disclosed seems perfectly capable of recognizing the end of
`
`the frame or recognizing the CRC as most transmission systems in the art
`
`do.” Id. The Examiner finds, Freitas’s “trailer field .
`
`.
`
`. is normally used to
`
`indicate the starting or ending position of a frame. By using the trailer field
`
`or ‘delimiter,’ the CRC can be easily recognized.” Ans. 29. Thus, for
`
`similar reasons as those set forth above under the Murayama-
`
`Balasubramanian combination, Appellant’s argument is unpersuasive.
`
`11
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`Thus, we sustain the Examiner’s rejection of claim 1 in View of
`
`Murayama, Freitas, and Hermann.
`
`Accordingly, we sustain the Examiner’s obViousness rejections of
`
`claim 1. Appellant’s arguments regarding the rejection of independent claim
`
`11 rely on the same arguments as for claim 1, and Appellant does not argue
`
`separate patentability for the dependent claims. See App. Br. 11, 16. We
`
`therefore also sustain the Examiner’s rejection of claims 2—3, 5, 6, and 11.
`
`See 37 C.F.R. §41.37(c)(1)(iV) (2013).
`
`In summary:
`
`CONCLUSION
`
`11
`
`5
`
`103
`
`11
`
`5
`
`
`
`Balasubramanian
`
`Murayama,
`Balasubramanian,
`
`Knapp
`
`Balasubramanian, R an
`
`Balasubramanian,
`Kna. n
`
`Hermann
`
`Hermann, and R an
`
`Hermann, Kna u
`
`--——-
`
`Outcome
`
`11
`
`12
`
`
`
`Appeal 2018-009077
`Application 14/829,693
`
`No time period for taking any subsequent action in connection with
`
`this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
`
`§ l.l36(a)(l)(iV).
`
`AFFIRMED
`
`l3
`
`
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