E Ink Corporation

Patent Trials and Appeals Board

Sep 24, 2020

14991397 - (D) (P.T.A.B. Sep. 24, 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.
14/991,397 01/08/2016 Robert W. Zehner H-326CON5 9988
26245 7590 09/24/2020
E INK CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
1000 TECHNOLOGY PARK DRIVE
BILLERICA, MA 01821-4165
EXAMINER
BUKOWSKI, KENNETH
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
IP@eink.com
bbean@eink.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT W. ZEHNER, HOLLY G. GATES,
KARL RAYMOND AMUNDSON, JOANNA F. AU, ARA N. KNAIAN,
ALEXANDROS COSMOS ARANGO, and JONATHAN L. ZALESKY

Appeal 2019-003880
Application 14/991,397
Technology Center 2600
____________

Before JOHN A. EVANS, JUSTIN BUSCH, and
JOHN P. PINKERTON, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject Claims 1–8, which are all of the claims pending in the
present application. Appeal Br. 1; see also Claims App. 15–17. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.2

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as E Ink
Corporation, a wholly owned subsidiary of E Ink Holdings Ltd. Appeal Br.
3.
2 Rather than reiterate the arguments of Appellant and the findings and
conclusions of the Examiner, we refer to the Appeal Brief (“Appeal Br.”)
and Claims Appendix (Claims App.), filed April 28, 2018 and revised June
5, 2018; the Examiner’s Answer (“Ans.”), mailed July 24, 2018; the Final
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Application 14/991,397

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STATEMENT OF THE CASE
CLAIMED SUBJECT MATTER
The claims relate to “driving bistable electro-optic displays.” Spec.
¶ 5.
CLAIMS
Claims 1, 7, and 8 are independent. Claim 1 is illustrative and
reproduced below with some formatting added:
1. A method of driving a bistable electrophoretic
display having at least one pixel with two extreme optical states,
the electrophoretic display containing electrophoretically-mobile
particles suspended in a liquid suspension medium, the method
comprising:
(a) driving the pixel from an initial gray level to one
extreme optical state different from the initial gray level; and
(b) immediately driving the pixel from the one extreme
optical state to the opposed extreme optical state and
immediately thereafter driving the pixel to a final gray level
different from the one extreme optical state.
REFERENCES AND REJECTION
Claims 1–8 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sheridon et al. (US 6,137,467; issued Oct. 24, 2000)
(“Sheridon”) and Kondoh (US 5,838,293; issued Nov. 17, 1998). Final 4–8.
ANALYSIS
CLAIMS 1–8:
OBVIOUSNESS BASED ON SHERIDON AND KONDOH
The Examiner rejects claims 1–8 under 35 U.S.C. 103(a) for
obviousness over Sheridon and Kondoh. Final 4–8. Appellant argues that

Office Action (“Final”), mailed June 29, 2017; and the Specification
(“Spec.”), filed January 8, 2016, for their respective details.
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the Examiner’s rejection is erroneous because there is no adequate reason to
combine the asserted teachings of Sheridon and Kondoh. Appeal Br. 11–13.
For the reasons that follow, we are persuaded of Examiner error.
In rejecting Claim 1, the Examiner cites Sheridon’s method for
recording an image on an electronic paper sheet for teaching a method of
driving pixels of a bistable electrophoretic display between gray levels and
two extreme optical states. Final 4–5 (citing Sheridon 3:6–20, 3:32–44, Fig.
8). Sheridon describes an optically sensitive sheet of electric paper made up
of a number of bichromal balls, each having a fluid-filled cavity and a
sphere therein. Sheridon, Title, 3:6–8, 3:11–12, 6:19–21. Each sphere has
two hemispheres, one whose surface is made of a white insulative material,
and the other whose surface is made of a photosensitive material with a
contrasting color. Id. at 3:13–17. Because the hemispheres are made from
different materials, they behave differently when in the presence of an
electric field. Id. at 3:21–23. For example, when in contact with a dielectric
plasticizing liquid, each hemisphere of a given bichromal ball will develop a
different surface charge density. Id. at 3:26–27. According to an
embodiment of Sheridon, a light source may be generated and focused on
the electric paper sheet by a lens. Id. at 3:8–9. The photosensitive
hemisphere of a given bichromal ball may respond electrically to actinic
light exposure such that a corresponding change in surface charge density
will superimpose on the dark surface charge condition. Id. at 3:32–36. A
stored image may be produced by applying a uniform electrical field at the
surfaces of the sheet to orient all the balls in one direction and, thereafter,
applying actinic radiation such that the field is reversed to orient only the
exposed or only the unexposed balls in the other direction. Id. at 3:37–42.
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The Examiner explains that although Sheridon’s “display can be reset
over and over to achieve” a pixel “being driv[en] into extreme optical state
to opposed extreme optical state and thereafter driv[en] . . . to the final gray
level, and then reset[] to an opposed extreme optical state and so forth,”
Sheridon “does not expressly teach resetting to two opposite extremes and
driving to a gray level.” Final 5. The Examiner finds, however, that
“Kondoh teaches a bi-stable display device wherein the display is reset to
one extreme and then immediately reset to the opposite extreme and then
immediately drives to a final gray level.” Id. (citing Kondoh, Fig. 2).
Kondoh describes a driving method for an antiferroelectric liquid-crystal
display (LCD) device. Kondoh 1:6–9. According to one embodiment, the
driving method may undergo a reset period, during which a bipolar reset
pulse of a sufficiently high voltage may be applied continuously to bring the
antiferroelectric liquid-crystal into first and second ferroelectric states, as
well as into an antiferroelectric state, thereby resolving an after-image
phenomenon. Id. at 13:9–13, 13:23–31, Fig. 2. The Examiner asserts that
“it would have been obvious . . . to incorporate the idea of resetting a
bistable display twice to two different extremes before finally driving the
gray level as taught by Kondoh into the method of driving a bistable electro-
optic display as taught by Sheridon . . . to reduce after-image.” Final 5.
Appellant argues there is no rationale to combine the asserted
teachings of Sheridon and Kondoh. Appeal Br. 11–13. In support of its
argument, Appellant makes the following assertions. First, “it would not
occur to anyone skilled in the technology of electro-optic media that the
teaching of Kondoh has any application outside AFE-LC displays.” Id. at
12. Second, “there is no reason why a skilled person would apply the
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teaching of Kondoh to Sheridan’s [sic] rotating bichromal ball type of
medium which has nothing corresponding to the random, first and second
ferroelectric and antiferroelectric states of the Kondoh medium.” Id. Third,
“there is no reason for anyone skilled in this field of technology to believe
that improvements in image quality in antiferroelectric liquid crystal
displays will translate to the rotating bichromal ball medium of Sheridon.”
Id. at 13. And fourth, “it would make no sense to first drive all the balls to
one extreme optical state (say black) and then to the opposed extreme optical
state (say white) before imagewise driving of some balls to their final optical
state,” which “would have no apparent advantage over the single extreme
optical state method actually used in Sheridon, and would result in increase
in switching time and power consumption.” Id.
In response to Appellant’s arguments, the Examiner maintains that it
would have been obvious to combine the asserted teachings of Sheridon and
Kondoh and provides the following explanation:
[B]oth Sheridon and Kondoh employ bi-stable material. It is
already well known in the field of bi-stable optical displays to
utilize different driving schemes to achieve improvement in
image quality. Bi-stable display devices, regardless of the
material, are susceptible to after-image problems depending the
way the displays are driven. The prior art is replete with varying
types of reset schemes to reduce such after-image problems
across various bi-stable display utilizing different materials.
Where there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasps.
Ans. 2 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–18 (2007)).
The Examiner explains further that it would make sense to drive the balls in
Sheridon as proposed because “[a]fter-image or image sticking effects occur
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when not all of the pixels in a display device are rotated as driven,” and the
“[m]ultiple resetting of electrophoretic bichromal balls assures that all of the
bichromal balls are aligned in one direction,” which “would reduce the
likelihood of some of the bichromal balls causing artifacts or after-image
due to insufficient rotations caused when the pixels are driven.” Ans. 3.
“A patent composed of several elements is not proved obvious
merely by demonstrating that each element was, independently, known in
the prior art.” KSR, 550 U.S. at 401. Although it may “be necessary for a
court to look to interrelated teachings of multiple patents,” in order to
“facilitate review, this analysis should be made explicit.” Id. at 418.
Accordingly, “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We are persuaded of Examiner error because the Examiner has not
provided an adequate rationale to combine the asserted teachings of
Sheridon and Kondoh. In particular, the Examiner has not articulated
adequate reasoning, with sufficient rational underpinning, to support the
proposed combination of Sheridon and Kondoh. As an initial matter, the
Examiner asserts it would have been obvious to apply the reset schemes of
Kondoh to the display of Sheridon “to reduce after-image effects.” Ans. 2;
Final 2. But the Examiner fails to present any persuasive evidence that
Sheridon’s bichromal ball teachings would have been compatible—or
otherwise combinable—with Kondoh’s antiferroelectric LCD teachings,
with a reasonable expectation of success. Similarly, we find no persuasive
evidence that the improvements in image quality achieved by Kondoh’s
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antiferroelectric liquid crystal display would translate to the rotating
bichromal ball medium of Sheridon.
Moreover, the Examiner’s explanations do not provide a sufficient
rational underpinning of the proposed reason to combine Sheridon and
Kondoh. Rather, the Examiner merely strings together a number of
speculative and conclusory assertions and asserts them as facts without any
supporting evidence. For example, the Examiner fails to cite any prior art
references to show that “it was already well known in the field of bi-stable
optical displays to utilize different driving schemes to achieve improvement
in image quality,” or that “[t]he prior art is replete with varying types of
reset schemes to reduce such after-image problems across various bi-stable
display utilizing different materials.” Without such supporting evidence, the
Examiner’s position that there was a design need or market pressure for a
skilled artisan to make the proposed combination rings hollow.
For similar reasons, we are not convinced by the Examiner’s
unsupported assertion that it would make sense to drive the bichromal balls
in Sheridon according to the antiferroelectric, LCD-based driving technique
of Kondoh in order to reduce artifacts or afterimage effects. And the
Examiner does not even address Appellant’s argument that the proposed
combination undesirably “would result in [an] increase in switching time
and power consumption.”
Therefore, constrained by the record, we decline to sustain the
Examiner’s § 103(a) rejection of Claim 1 over the combination of Sheridon
and Kondoh. We also decline to sustain the Examiner’s § 103(a) rejection
of claims 2–8, for which the Examiner relies on the same defective
reasoning. See Final 6–8; Ans. 3–4.
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CONCLUSION
We reverse the Examiner’s rejection of Claims 1–8 under pre-AIA 35
U.S.C. § 103(a).

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103(a) Sheridon, Kondoh 1–8
Overall
Outcome 1–8

REVERSED