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In re Andros

Decided: January 28, 1993.

IN RE RICHARD P. ANDROS, JR.


Appeal from the Patent and Trademark Office Board of Patent Appeals and Interferences. Appeal No. 90-3364.

Before Michel, Plager, and Lourie, Circuit Judges.

Michel

DECISION

Richard P. Andros, Jr. appeals from the March 22, 1991 decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences, Appeal No. 90-3364, as supplemented on Reconsideration, on June 27, 1991, rejecting all claims of application Serial No. 282,550 as being unpatentable on the ground of obviousness under 35 U.S.C. § 103 (1988). We affirm.

Discussion

The claimed invention relates to a radio having a display means capable of electronically displaying certain operating values (e.g., frequency) in either an inverted or a non-inverted display mode. This allows the characters on the display to be read in either an upside down or right-side up orientation, depending upon which mode is selected. The invention also features selecting means or switches that enable a user to "scroll" through a menu of operating values in order to select a particular value. One switch is used to scroll up and another is used to scroll down. Arrows or "indicia," one facing up and one facing down, are placed adjacent to the appropriate switch to indicate its scrolling direction. When the inverted display mode is selected, the scrolling directions of each switch are reversed so that the switches continue to correspond to the directions indicated by their respective indicia.

The Board affirmed the examiner's rejection of all the claims of the patent application as being obvious over U.S. Patent 4,306,294 to Hashimoto, in view of a Japanese reference by Yamanaka. Hashimoto is directed to a device which performs the combined functions of a calculator, a clock and a digitally tuning radio receiver. The Hashimoto patent teaches a display that, when operating as a radio, may be used for displaying tuning frequencies selected by the actuation of an up key, a down key, or preset channel keys. Yamanaka teaches a digital timepiece "which can display the [time] in four directions such as upward, downward, left, and right directions . . . ." These display directions are selected by the user by means of an external display switch. The invention claimed by Andros functions in a similar manner to the radio function of the Hashimoto device, but includes an invertible display controlled by the user, as taught by Yamanaka.

Obviousness is a question of law which we review de novo. In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed. Cir. 1990). In addressing the issue of obviousness, we review the totality of the evidence of record to determine whether the prior art would have made obvious the claimed invention. See In re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985). The burden of persuasion is on the appellant to show that the Board's Conclusion of obviousness is in error or that the factual findings underlying that Conclusion are clearly erroneous. See Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 872, 228 USPQ 90, 97 (Fed. Cir. 1985) (stating that obviousness is a question of law based upon underlying fact findings).

The law is well settled that "obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestion or incentive to do so." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). However, the motivation to modify the prior art to produce the claimed invention "need not be expressly stated in one or all of the references used to show obviousness." Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886 (Fed. Cir. 1985); In re Bozek, 416 F.2d 1385, 163 USPQ 545 (CCPA 1969). "Rather the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Cable Electric, 770 F.2d at 1025, 226 USPQ at 886-87 (quoting In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)).

I. Claim 1

First, Andros asserts that the Board erred in concluding that there was motivation to use the invertible display taught by the Yamanaka reference in the radio disclosed by Hashimoto. But in determining that the examiner had established a prima facie case of obviousness, the Board stated:

While we agree with [Andros] that there is no explicit statement by either of the applied references to the effect that one should replace the display in Hashimoto with the invertible display of Yamanaka, to suggest that the artisan would not have been led by the totality of the teachings of the reference to employ an invertible display in the Hashimoto radio presumes less than ordinary skill on the part of the artisan.

Ex parte Andros, No. 90-3364, Reconsideration slip op. at 3 (Bd. Pat. App. and Int. June 27, 1991). Appellant has not shown that the Board's implicit findings with respect to the knowledge of the artisan and the level of ordinary skill in the art are clearly erroneous.

Second, Andros argues that the Hashimoto reference teaches away from his invention, because the combination clock, radio, calculator would not be used in an inverted or alternate position. This argument fails because Andros is attempting to establish nonobviousness by attacking the references individually where the rejection is based upon the combined teachings of Hashimoto and Yamanaka. See In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). Therefore, ...


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