Ex Parte 6304236 et al

Board of Patent Appeals and Interferences

Mar 18, 2011

95000460 (B.P.A.I. Mar. 18, 2011)

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.
95/000,460 05/04/2009 6304236 INNL-002/00US 7144
37509 7590 03/21/2011
DECHERT LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/21/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

CHIMEI INNOLUX CORP.,
Requester and Appellant

v.

Patent of MONDIS TECHNOLOGY, LTD.,
Patent Owner and Respondent
____________________

Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1
Technology Center 3900
____________________

Before RICHARD TORCZON, ALLEN R. MacDONALD and
SCOTT R. BOALICK, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in 37 C.F.R. §
41.79, and the two-month time period for filing an appeal, as recited in 37 C.F.R. § 1.304
(see 37 C.F.R. § 1.983(b)(1)), both begin to run from the “MAIL DATE” shown on the
PTOL-90A cover letter attached to this decision.
Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1

2
STATEMENT OF THE CASE2
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final decision of the
primary examiner favorable to the patentability of claims 1 and 2. We have
jurisdiction under 35 U.S.C. § 315(b). We reverse.

Exemplary Claim in the Present Appeal
Exemplary independent claim 1 under appeal reads as follows:
1. A display apparatus which receives a video signal and a
synchronization signal from an external computer, and which displays
an image in accordance with the video signal and synchronization
signal on a screen, the display apparatus comprising:
an interface circuit which receives a control signal which is
generated by a program that is previously programmed in software
used for operating the external computer; and
a memory which stores control data concerning display control,
the stored control data is read out by the control signal from the
interface circuit;
wherein the displayed image is adjusted in accordance with the
control data which is read out from the memory; and
wherein said interface circuit transmits a reception confirmation
signal to the external computer, the reception confirmation signal
indicates receiving the control signal from the external computer..

Appellant’s Contentions
Appellant contends that the Examiner erred in making a final decision
favorable to the patentability of claims 1 and 2 because:
(1) The preambles of claims 1 and 2 do not affirmatively
limit the claims. (App. Br. 4).

2 Hearing held on February 16, 2011.
Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1

3
(2) The phrase “software used for operating [an] external
computer” does not distinguish operation during manufacture
from other operating environments. (App. Br. 10).3
(3) Claims 1 and 2 are obvious over Takahashi. (App.
Br. 13).
(4) Claims 1 and 2 are obvious over the combination of
Webb and the RS-232 specification. (App. Br. 18).

Issues on Appeal
Did the Examiner err in making a final decision favorable to the
patentability of claims 1 and 2?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
above-stated contentions 1-4 that the Examiner has erred. We agree with
Appellant’s conclusions. We disagree with the Examiner’s favorable final
decision as to the patentability of claims 1 and 2.
Preambles of Claims 1 and 2
Appellant contends that the preambles of claims 1 and 2 do not
affirmatively limit the claims. (App. Br. 4). Respondent counters that the
preambles inform the patentability of the claims. (Resp. Br. 4).

3 Respondent (Patent Owner) agrees with Appellant that the Examiner erred
on this point because the phrase “software used for operating [an] external
computer” does not limit the claims. (Resp. Br. 5). Because the parties agree
on this point we do not address it further.
Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1

4
The preamble of claim 1 reads:4
A display apparatus which receives a video signal and a
synchronization signal from an external computer, and which
displays an image in accordance with the video signal and
synchronization signal on a screen, the display apparatus
comprising:
(emphasis added). We construe the claim preamble to limit the display to
using a particular signal format (video and synchronization signals) for
displaying images. We construe the phrase “from an external computer” to
merely recite the source of the signals (see ‘236 patent figure 7) or the
source of the image data that will be used to generate the signals (see ‘236
patent figure 8). Appellant is correct in arguing that the Examiner erred in
finding that the preamble language “from an external computer”
affirmatively limited the claims.
Unlike the particular signal format used by the display, the source is
not structurally part of the claimed display apparatus and should not be
given weight in determining patentability. Stated differently, the preamble
requires the claimed apparatus to be configured for and capable of receiving
such signals. (Resp. Br. 4). However, the preamble does not require the
structure of the claimed apparatus to include the external computer.5

4 Other than a minor typographical difference (“which display an image”),
the preamble of claim 2 is identical.
5 We also note that even if we were to construe the preamble of the claims
to require the structure of the external computer, by Patent Owner’s own
admission, the preamble would not serve to distinguish over the prior art.
The 6,304,236 patent, at column 1, lines 20-47, shows that the entire subject
matter found in this preamble is known in the prior art.

Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1

5
New Ground of Rejection - Takahashi 6
We reject claims 1 and 2 under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi for the reasons set forth at pages 19-25 of the
Requester’s Corrected Request For Inter Partes Reexamination filed May 4,
2009.
Further, contrary to the Examiner’s finding in the Action Closing
Prosecution at page 5, the first full paragraph, Takahashi at figure 3 clearly
teaches a PC 74 (an external computer) that supplies inspection standards
data (image data) via I/O interface 22 to the CPU 20. The CPU 20 in turn
outputs adjustment signals to the respective adjustment circuits (imaging
system circuit 14 and deflecting system circuit 18) “so as to obtain the
provided inspection standards data” on the display 12. Takahashi describes
an imaging system circuit 14 and a deflecting system circuit 18. (Takahashi
766 at lower left and 767 at lower right). We conclude that Takahashi’s
imaging system circuit 14 and deflecting system circuit 18 correspond to
video circuit 20 and deflection circuit 21 respectively in figure 1 of the ‘236
patent. For this reason, Takahashi’s imaging system circuit 14 and
deflecting system circuit 18 are deemed to operate based on conventional
video and synchronization signals respectively.

6 The footnote, at page 5 of the Action Closing Prosecution, mistakenly
states that the English translation of Takahashi appears to be missing text on
page 767. We disagree. The translation is not structured as two columns per
page as presumed by the Examiner. Rather, the structure is four columns per
page. Each column is in one of the four quadrants of the page. The order to
read the columns is upper left, upper right, lower left, and lower right.

Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1

6
At the hearing, the Patent Owner questioned whether Takahashi’s
“inspection standards data” is “image data” (such as the image data
disclosed as being sent between the computer (1e) and the display unit (1f)
in figure 8 of the patent under reexamination). (Hr’g Tr. 22:12-17). We find
that Takahashi’s “inspection standards data” teaches or suggests “image
data” because Takahashi states that the PC 74 compares image data sensed
by image sensor 70 to the inspection standards data and outputs an
adjustment request signal (a control signal) so as to eliminate any deviation
there-between. Comparison of the inspection standards data to the sensed
image data suggests that either the inspection standards data is itself image
data or that the inspection standards data is some known substitute for image
data which can be compared to the sensed image data. Given Takahashi’s
supplying of inspection standards data via I/O interface 22 to the CPU 20, it
is either explicitly taught or would be obvious to supply image data via I/O
interface 22 to the CPU 20.

New Ground of Rejection - Webb and the RS-232 Specification
We reject claims 1 and 2 under 35 U.S.C. § 103(a) as being
unpatentable over Webb and the RS-232 specification for the reasons set
forth at pages 35-38 of the Requester’s Corrected Request For Inter Partes
Reexamination filed May 4, 2009.

Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1

7
New Ground of Rejection 7
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.77(b). 37 C.F.R. § 41.77(b) provides “a new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.77(b) also provides that Appellant, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner of the patent may
file a response requesting reopening of prosecution before the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.79 by the Board upon the same record. . . .

CONCLUSIONS
The Examiner erred in making a final decision favorable to the
patentability of claims 1 and 2.

DECISION
The Examiner’s final decision favorable to the patentability of claims
1 and 2 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

7 The DATE OF THE DECISION is the “MAIL DATE” (paper delivery
mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown
on the PTOL-90A cover letter attached to this decision.
Appeal 2011-002708
Reexamination Control 95/000,460
U.S. Patent 6,304,236 B1

8

REVERSED
37 C.F.R. § 41.77(b)

bim

FOR PATENT OWNER:

DECHERT, LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460

FOR THIRD-PARTY REQUESTER:

COOLEY GODWARD KRONISH, LLP
ATTN: PATENT GROUP
777 6TH STREET, NW
SUITE 1100
WASHINGTON, DC 20001