2019000464 (P.T.A.B. May. 28, 2020)

Dawson, Thomas et al.

Patent Trials and Appeals BoardMay 28, 2020

2019000464 (P.T.A.B. May. 28, 2020)

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.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/656,495 07/21/2017 Thomas Dawson 201705762.01 9504 36738 7590 05/28/2020 ROGITZ & ASSOCIATES 4420 Hotel Circle Court SUITE 230 SAN DIEGO, CA 92108 EXAMINER HAIEM, SEAN N ART UNIT PAPER NUMBER 2422 NOTIFICATION DATE DELIVERY MODE 05/28/2020 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): John@rogitz.com Noelle@rogitz.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ _____ BEFORE THE PATENT T RIAL AND APPEAL BOARD _______________ _____ Ex parte THOMAS DAWSON and STEVEN RICHMAN ____________________ Appeal 2019-000464 Application 15/656,495 Technology Center 2400 ____________________ Before ROBERT E. NAPPI, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIRBA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 This Decision uses the following abbreviations: “Spec.” for the original Specification, filed July 21, 2017; “Final Act.” for the Final Office Action, mailed July 24, 2018; “Appeal Br.” for Appellant’s Corrected Appeal Brief, filed Sept. 20, 2018; “Ans.” for Examiner’s Answer, mailed Oct. 17, 2018; and “Reply Br.” for Appellant’s Reply Brief, filed Oct. 24, 2018. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is Sony Corp. Appeal Br. 2. Appeal 2019-000464 Application 15/656,495 2 BACKGROUND Appellant’s disclosed embodiments and claimed invention relate to a projector screen with a multichromic reflective coating. Spec. 1–2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An assembly comprising: at least one substrate against which color video can be projected by at least one projector, the substrate comprising pixels actuatable to establish grayscale values on the substrate; and at least one multichromic reflective coating disposed on the substrate, the multichromic filtering coating reflecting only wavelengths of light produced by the projector. Appeal Br. 13 (Claims App.). RELATED APPEALS Appellant identifies no related appeals (Appeal Br. 2), but the Board is aware of one appeal that may be related. A notice of appeal was filed in copending Application No. 15/656,691, Appeal No. 2019-003970. In our Decision mailed May 26, 2020, we affirmed the Examiner’s rejection in part. REJECTIONS R1. Claims 1–4 and 7–20 stand rejected under the judicially-created doctrine of non-statutory obviousness-type double patenting as being unpatentable over claims 1–4 and 7–20 of Application No. 15/656,691. Final Act. 7. Appeal 2019-000464 Application 15/656,495 3 R2. Claims 1–3, 5–14, and 16–173 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Vincent (US 2008/0100564 A1, published May 1, 2008). Final Act. 7–12. R3. Claims 4 and 15 stand rejected under 35 U.S.C. § 103 as obvious over Vincent and Yamaguchi (US 2017/0269360 A1, filed Nov. 21, 2016, published Sept. 21, 2017). Final Act. 13–14. R4. Claims 18–20 stand rejected under 35 U.S.C. § 103 as obvious over Vincent and Hajjar (US 2007/0014318 A1, published Jan. 18, 2007). Final Act. 14–15. ANALYSIS 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). Obviousness-Type Double Patenting Rejection R1 of Claims 1–4 and 7–20 The Examiner provisionally rejects claims 1–4 and 7–20 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1–4 and 7–20 of co-pending Application No. 15/656,691. Final Act. 7. 3 The rejection’s heading refers to claims “16 – 20” (Final Act. 7), but the rejection itself does not address claims 18–20 (see id. at 12–13), which are instead addressed by obviousness rejection R4 (id. at 14–15). As a result, we deem the heading’s inclusion of claims 18–20 to be a typographical error. Accordingly, Appellants’ argument alleging that claims 18–20 are not anticipated is rendered moot. See Appeal Br. 11; Reply Br. 4; see also Ans. 8 (addressing obviousness, but not anticipation, of claims 18–20). Appeal 2019-000464 Application 15/656,495 4 While Appellant does not address this rejection (see generally Appeal Br.), we determine that this provisional rejection is not ripe for decision by the Board. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). Accordingly, we do not reach a decision on the merits of Rejection R1. Obviousness Rejection R2 of Claims 1–3, 5–14, and 16–17 Claims 1–3, 5–14, and 16–17 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Vincent. Final Act. 7–12. Appellant argues claims 1–2, 5, 7–10, 12–14, and 17 together as a group, and Appellant presents separate arguments for dependent claims 3, 6, 11, and 16. See Appeal Br. 6–11. We are persuaded by Appellant’s arguments regarding independent claim 1. Because this determination resolves the § 102 rejection for all pending claims, we need not address Appellant’s other arguments regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may render a decision based on “a single dispositive issue”). Claim 1 Claim 1 recites a “substrate against which color video can be projected by at least one projector,” where the “substrate compris[es] pixels actuatable to establish grayscale values.” Appeal Br. 13 (Claims App.). Claim 1 further recites a coating disposed on the substrate that “reflect[s] only the wavelengths of light produced by the projector.” Id. (referred to in this Decision as the “disputed limitation”). Appeal 2019-000464 Application 15/656,495 5 The Examiner found Vincent discloses all limitations of claim 1. Final Act. 8–9 (citing Vincent ¶¶ 37, 40–41, 44, 46, 48, 52–54, 57–58, 70). As to the disputed limitation, the Examiner states: (0057) discloses a color filter, projection, and a single molecular colorant with mosaic colorant (ink, filters) as cited “These approaches allow full color without inherent color, switched molecules (e.g., yellow/transparent state, and the like)[”]; reads on the limitation of “reflecting only the wavelengths of light produced by the projector.” Final Act. 8–9 (citing Vincent ¶ 57); see also id. at 2–4 (referencing understanding of a person of skill in the art and further citing Vincent ¶¶ 41– 42, 56). Appellant argues that Vincent fails to disclose the disputed limitation. Appeal Br. 6–8. Appellant asserts that paragraph 57, cited by the Examiner for this limitation, refers to “mosaic filters” and “color filters,” but neither is “said to reflect only light wavelengths emitted from a projector and no other wavelengths.” Id. at 7. The Examiner does not directly respond to this argument in the Answer, other than to rephrase the explanation previously provided in the Final Office Action. Compare Ans. 3–5, with Final Act. 2– 4, 8–9. We are persuaded of Examiner error. The rejection does not articulate specific findings,4 but the Examiner appears to point to Vincent’s substrate 4 Appellant contends that the Examiner fails to clearly map the elements of Vincent to the limitations of the claim and errs by “mix[ing] and match[ing]” different embodiments. Appeal Br. 7–8. We agree. The Examiner responds to Appellant’s critique by stating that each of the cited embodiments meets the claim limitations (Ans. 4); however, the Examiner’s rejection is unclear because it fails to clearly map the limitations of claim 1 to any embodiment. This ambiguity is exacerbated by the rejection’s discussion of multiple disparate embodiments. In this Decision, we discuss Appeal 2019-000464 Application 15/656,495 6 and valve layer, collectively, as disclosing the claimed “substrate,” and to its mosaic layer as disclosing the claimed “coating.” See Final Act. 2–4, 8–9; see also Vincent, Fig. 5 (illustrating substrate 403, valve layer 405, and mosaic layer 404). In particular, the Examiner appears to find that Vincent’s mosaic layer “reflect[s] only wavelengths of light produced by the projector,” as required, because: (1) mosaic layer 404 includes color, and (2) color reflects only certain wavelengths of light. See Final Act. 3–4 (“[W]hen the molecular colorant valve is actuated it allows the light to reflect its pixel color (as cited e.g. yellow), when for example the color is yellow, the filter only reflects yellow, that means, ‘reflecting only the wavelengths of light (e.g. yellow) produced by the projector.’”). But, even if we were to agree with the Examiner that Vincent’s mosaic layer 404 reflects only the wavelengths of light corresponding to the respective color, the Examiner fails to explain how or why Vincent discloses that Vincent’s mosaic layer reflects “only the wavelengths of light produced by the projector,” as required by the disputed limitation. In fact, the Examiner does not refer the “projector” recited in the claim, other than to include this term as part of the recited claim language and to note that Vincent refers to “projection” twice. See generally Final Act. 2–4, 8–9 (citing Vincent ¶¶ 53, 57). However, neither of Vincent’s references to a “projection” display system disclose the disputed limitation. See Vincent ¶¶ 53 (noting its invention may be implemented in “projection display the embodiment described in paragraph 57 of Vincent (describing Figure 5) because the Examiner primarily relies on this paragraph to disclose the disputed limitation. Appeal 2019-000464 Application 15/656,495 7 systems”), 57 (noting use of a “conventional color filter . . . for backlit or projection displaying of an image can be implemented”). The Examiner references the knowledge of a person of ordinary skill in the art, and may have relied on this knowledge to provide the missing disclosure. Final Act. 2–3. However, even though the disclosure of a reference is understood from the perspective of a person of ordinary skill in the art, an anticipation rejection cannot rely on that knowledge for disclosure that is missing from the reference itself. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“A single [anticipatory] reference must describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.”); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“[I]t is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.”). Moreover, we perceive no disclosure of the disputed limitation in the cited portions of Vincent. As Vincent explains, the valves in valve layer 405 are selectively switchable between a transparent state and a white state, and the mosaic color imaging layer 404 includes “a regular pattern of color pixels.” Vincent ¶¶ 55–56. When a valve is set to the transparent state, the corresponding color in the mosaic shows through. Id. ¶¶ 56, 58. This approach allows for the display of a “full color” image without requiring the use of “inherent color, switched molecules (e.g., yellow/transparent state, and the like).” Id. ¶ 57; cf. id. ¶ 48 (describing a multilayer display with a plurality of colorant layers, which each have a different color switchable Appeal 2019-000464 Application 15/656,495 8 molecule array). We perceive no disclosure in any of these passages of “wavelengths of light produced by [a] projector,” or reflection of only those wavelengths, as required by the disputed limitation. Accordingly, we do not perceive (and the Examiner does not sufficiently identify) a disclosure of the disputed limitation in Vincent. Conclusion Therefore, based upon the findings above, on this record, we are persuaded of error in the Examiner’s reliance on the cited prior art to disclose the disputed limitation of claim 1. As a result, we do not sustain the Examiner’s anticipation rejection of independent claim 1, and likewise, we do not sustain the anticipation rejection of independent claims 7 and 12, which include commensurate limitations. Accordingly, we reverse the Examiner’s rejection of independent claims 1, 7, and 12 (and their respective dependent claims). Obviousness Rejection R3 & R4 of Claims 4, 15, and 18–20 The Examiner rejects dependent claims 4, 15, and 18–20 as obvious over Vincent and either Yamaguchi or Hajjar. Final Act. 13–15. For these claims, the Examiner relies on Vincent to disclose the limitations of the base claims (from which these claims depend), and the Examiner points to either Yamaguchi or Hajjar for the limitations additionally recited in these dependent claims. Id. The Examiner’s rejection relies on Vincent in the same erroneous manner discussed above in the context of independent claim 1. In addition, the Examiner does not rely on the additional references in any manner that remedies the deficiencies of the predicate anticipation rejection, and the Appeal 2019-000464 Application 15/656,495 9 Examiner provides no rationale to explain why the disputed limitation would have been obvious in view of Vincent, Yamaguchi, and/or Hajjar. See Final Act. 13–15. Accordingly, we reverse the Examiner’s obviousness rejections R3 and R3 of dependent claims 4, 15, and 18–20. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 7–20 Provisional Obviousness-Type Double Patenting5 1–3, 5– 14, 16–17 102 Vincent 1–3, 5– 14, 16– 17 4, 15 103 Vincent, Yamaguchi 4, 15 18–20 103 Vincent, Hajjar 18–20 Overall Outcome 1–20 REVERSED 5 Our Decision does not address the merits of this provisional rejection. Accordingly, the Examiner “must act upon” this rejection if Appellant has not filed a proper terminal disclaimer. MPEP 804(I)(B)(1)(b)(iii); see id. at 804(I)(B)(1)(b)(ii) (“If both applications are actually filed on the same day . . . the provisional nonstatutory double patenting rejection made in each application should be maintained until the rejection is overcome.”).