Ex Parte 6373537 et alDownload PDFBoard of Patent Appeals and InterferencesApr 19, 201190008146 (B.P.A.I. Apr. 19, 2011) Copy Citation 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. 90/008,146 08/03/2006 6373537 8733.059.60 7795 30827 7590 04/19/2011 MCKENNA LONG & ALDRIDGE LLP 1900 K STREET, NW WASHINGTON, DC 20006 EXAMINER CHOI, WOO H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/19/2011 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 ____________ Ex parte LG DISPLAY CO., LTD. ____________ Appeal 2011-004241 Reexamination Control 90/008,146 United States Patent 6,373,537 B2 Technology Center 3900 ____________ Before SCOTT R. BOALICK, KARL D. EASTHOM, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 2 Patent owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm. STATEMENT OF THE CASE This proceeding arose from a request for ex parte reexamination filed by Bruce K. Lagerman on August 3, 2006, of United States Patent 6,373,537 (the ‘537 Patent) issued to listed inventors Hee Young Yun, Kyo Hun Moon, Byeong Yun Lee, Yong Bum Kim, and Young Un Bang on April 16, 2002. Reexamination of claims 1-16 was requested, which presently stand rejected. Claim 1, which we deem to be representative, reads as follows: 1. A liquid crystal display device comprising: a liquid crystal panel including a display area; a light unit including a light source, joined with the liquid crystal panel; a first frame coupled to a surface of the light unit and sides of the liquid crystal panel; a second frame coupled to edges of the liquid crystal panel and sides of the first frame; an outer casing; and a fastening part joining together the first frame, the second frame, and the outer casino through the sides of the first frame, the second frame and the outer casing. The prior art references relied upon by the Examiner in rejecting the claims are: Komano US 5,375,005 Dec. 20, 1994 Aguilera US 5,666,261 Sep. 9, 1997 Masanori JP 07099394 A Apr. 11, 1995 Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 3 Admitted Prior Art, US Patent No. 6,373,537 B2 (“APA”). The Examiner rejected claims on the following bases: (1) claims 2-6 under 35 U.S.C. § 102(b) as being anticipated by Masanori; (2) claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Komano and Masanori; (3) claims 7, 8, 10-13, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over APA and Masanori; (4) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Masanori and Aguilera; (5) claims 9 and 14 under 35 U.S.C. § 103(a) as being unpatentable over APA, Masanori, and Aguilera; and (6) claim 1 under the judicially created doctrine of obviousness-type double patenting over U.S. Patent No. 5,835,139 (the ‘139 patent). ISSUES Based on Appellant’s arguments, we identify the following issues: (1) Did the Examiner err in finding that Masanori discloses side edges including first and second mounting holes? (2) Did the Examiner err in finding that the combination of Masanori and Komano discloses or suggests a second frame coupled to edges of the liquid crystal panel and sides of the first frame and a fastening part joining together the first frame, second frame, and outer casing through the sides of the first frame, second frame and outer casing? Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 4 (3) Did the Examiner err in finding that the combination of Masanori and Komano discloses or suggests a light unit? (4) Did the Examiner err in finding that Aguilera discloses or suggests an unthreaded fastener? (5) Did the Examiner err in finding that it would have been obvious to one of ordinary skill in the art to have combined APA and Masanori? (6) Did the Examiner err in finding that claim 1 is not patentably distinct from commonly-owned U.S. Patent No. 5,835,139 (the “‘139 patent”)? PRINCIPLES OF LAW Anticipation is established when a single prior art reference discloses, expressly or under the principles of inherency, each and every limitation of the claimed invention. Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994). “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). ANALYSIS (1) Claims 2-6 Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 5 The Examiner finds that Masanori discloses “first and second mounting holes” (Ans. 12) while Appellant argues that “the side penetrating screws 11 in Masanori are . . . not mounting [holes]” (App. Br. 16). Masanori discloses a mounting structure for a liquid crystal module (title) in which the “module 1 supported by the vessel 6” is supported by a supporting member 11 (Abstract, Figs. 1-3). In the absence of an explicit definition of the term “mounting,” we construe the term “mounting hole” using a plain and customary meaning as would have been understood by one of ordinary skill in the art in view of the Specification as an opening (or “hole”) through which components may be connected or secured to each other (i.e., “mounted”). We find no substantial difference between the liquid crystal module of Masanori being “mounted” or supported/secured to another component by “supporting member 11” and the claimed “mounting hole” (i.e., an opening through which components are connected to each other). Appellant argues that connecting the liquid crystal module to a chassis unit is “added for reinforcing support to prevent deformation” (App. Br. 16) but Appellant has not sufficiently demonstrated that the screw holes of Masanori (i.e., component 13, Figs. 1-3) are different from the “mounting holes” as claimed. Given that Masanori’s screws (i.e., component 11, Figs. 1-3) connect and secure the liquid crystal module to the chassis through holes (component 13, Figs. 1-3), we find no substantial differences between Masanori’s disclosure of holes through which the liquid crystal display is secured to a chassis or casing and the disputed claim element of “mounting holes.” Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 6 Appellant argues that Aguilera fails to disclose “an unthreaded fastener” as recited in claim 4. The Examiner finds that Aguilera discloses “double-sided adhesive foam tape” (Ans. 10). We agree with the Examiner that double-sided tape is a “fastener” since tape “fastens” components together by adhering the components to each other and that tape is “unthreaded” since tape does not contain threads. Appellant fails to point out any meaningful differences between the tape of Aguilera and an “unthreaded fastener” as claimed. We therefore find that the Examiner did not err in rejecting claims 2- 6. (2) Claim 1 Claim 1 recites a second frame that is coupled to edges of a liquid crystal panel and sides of a first frame. Appellant argues that Komano discloses a “front frame 43 [that] is not ‘coupled to edges of the liquid crystal display and sides of the first frame’” (App. Br. 17). We note that the Specification discloses a first support frame (element 190, Fig. 6), a second support frame (element 400, Fig. 6), and a liquid crystal panel (element 300, Fig. 6) in which the second support frame “is mounted at the side surface of the first support frame 190” (col. 4, ll. 42-43) “[i]n order to join the first support frame 190, the liquid crystal panel 300, and the lamp housing 120” (col. 4, ll. 40-41). Hence, the Specification discloses that the second support frame is coupled to the edges of the liquid crystal panel and sides of the first frame when the second frame is mounted to the first frame and the liquid crystal panel is positioned between the first and second frame. Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 7 Komano also discloses “a liquid crystal display plate 11” (col. 3, l. 67; Fig. 1) and a “pair [of] frame members 43, 44” (col. 4, l. 51) with “claw portions for engaging the front and rear frame members 43 and 44 of the supporting frames 13 with each other” (col. 6, ll. 61-63). The claw portions of Komano are at the “sides of the first frame” (see Fig. 1) and the liquid crystal display plate of Komano is positioned between the first and second frame. We find no meaningful difference between the second frame as recited in claim 1 and the frames (and liquid crystal display) of Komano. Appellant argues that Komano fails to disclose the second frame coupled to edges of the liquid crystal panel and sides of the first frame. However, as described above, Appellant does not demonstrate any meaningful difference between the “coupling” (or “joining”) of the second frame to the sides of a first frame and edges of a liquid crystal panel as disclosed in the Specification (and described above) and the “coupling” of such components as disclosed by Komano. We therefore agree with the Examiner that Komano discloses or suggests the disputed feature. Appellant further argues that Komano and Masanori fails to disclose or suggest that the “three separate elements (the first frame, the second frame, and the outer casing) must be joined together using a fastening part” (App. Br. 19). Claim 1 requires a fastening part joining a first frame, a second frame, and an outer casing through their respective sides. Masanori discloses connecting a side aspect of one frame (element 6, Figs. 2-3) of a liquid crystal device with a side aspect of a casing (element 8, Figs. 1-2) and Komano discloses a first frame of a liquid crystal device joining a second frame via side edges (FF 1). Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 8 The Examiner finds that “mounting Komano’s LCD using the side mounting screws to mount the LCD to an outer casing as taught by Masanori would join the overlapping side edges of the two frames with the outer casing as claimed” (Ans. 15). We agree. As described above, Komano discloses a liquid crystal display in which two frames are joined via side edges. Masanori also discloses a liquid crystal device in which a casing attaches to the liquid crystal device via side edges. It would at least have been obvious to one of ordinary skill in the art given that a liquid crystal device has two frames that are connected via side edges (Komano) to have joined the liquid crystal device via its side edge to a side edge of a casing since Masanori discloses that liquid crystal devices are connected via their side edges to side edges of casings (the side edges of the liquid crystal device already formed by the joining of the side edges of two frames, as disclosed by Komano). Such a combination would have entailed no more than common sense in combining known elements in known ways to achieve an expected result or a liquid crystal device connecting via side edges to a casing, as disclosed by Masanori. Appellant also argues that “the Office Action fails to specifically point to any teaching in Komano or Masanori as teaching . . . ‘a light unit . . .’” (App. Br. 20). The Examiner finds that Komano discloses “a light unit (12) including a light source (22)” (Ans. 6). Since the Examiner explicitly indicates that Komano discloses the claimed “light unit,” we are not persuaded by Appellant’s argument that the Examiner failed to do so. Therefore, the Examiner did not err in rejecting claim 1. Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 9 (3) Claims 7-16 Appellant argues that Masanori fails to disclose “the liquid display module with sides edges having ‘mounting holes’” (App. Br. 20) and that Aguilera fails to disclose “an unthreaded fastener” (App. Br. 25). For at least the reasons set forth above, we disagree with Appellant. Appellant also argues that “[t]he combination of the APA and Masanori is improper . . . [because the] device of the APA does not require any modification to solve any issues” (App. Br. 21). APA discloses a computer liquid crystal display including a liquid crystal panel within attached supporting frames that is attached to a casing (Figs. 1-5) while Masanori discloses a computer liquid crystal display device that includes a liquid crystal panel within attached supporting frames attached to a casing (Abstract, Figs 1-3). We agree with the Examiner that the combination of the known methods and structures of APA and Masanori would have been obvious to one of ordinary skill in the art since such a combination of known elements would have produced no more than a predictable result – namely, a computer liquid crystal panel device containing a liquid crystal display and supporting frames attached to a casing. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. We therefore find that the Examiner did not err in rejecting claims 7- 16. (4) Claims 1, 4, and 7-16 – Secondary Considerations Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 10 Appellant also argues that the claimed invention “is directly responsible for the commercial success of products embodying Appellant’s invention” (App. Br. 30). In support of this contention, Appellant states that “shipments of large display notebooks (13.3 inch and greater) rose to 65% [citing Display Search Quarterly Supply vs. Demand Study: Notebook PC Report 4Q], including 43.5% growth for 14.1-inch laptops” (App. Br. 33) and that a “dramatic, unprecedented growth in sales of 14.1-inch laptops [is attributable] . . . to the worldwide adoption of the sidemount invention” (App. Br. 33). Appellant also argues that manufacturers “have also experienced great commercial success in the sale of LCD modules incorporating the distinguishing features of the sidemount invention” (App. Br. 34). However, as the Examiner states, Appellant fails to establish a nexus between the alleged increase in sales of 14.1-inch laptops and the claimed invention. “[T]he law deems evidence of . . . some causal relation or ‘nexus’ between an invention and commercial success of a product embodying that invention, probative of whether an invention was non-obvious.” Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). Appellant cites data from “DisplaySearch Quarterly Supply vs. Demand Study: Notebook PC Report 4Q” (hereinafter, “DisplaySearch I”) as allegedly demonstrating market demand for the disputed sidemount technology (App. Br. 33-34). DisplaySearch states that “to introduce a greater number of [15-inch] display-based notebooks, [14-inch notebooks] will become more dominant in the mid-range space pushing [13.3-inch] Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 11 products out of the market as the price differential between [13.3-inch] and [12.1-inch products] will hurt its chances in the low end. [14.1-inch] products, which have a better dot pitch for viewing XGA, are expected to boost their market share from 18% in Q3’98 to 38% in Q3’00” (DisplaySearch Quarterly Supply Vs. Demand Study: Notebook Panels, Q4’98 – hereinafter “DisplaySearch II” – p. 11). Thus, DisplaySearch II predicted a sharp increase in sales over the time period in question of 14.1- inch laptops by pushing 13.3-inch products out of the market and providing a better dot pitch for viewing XGA, neither of which Appellant asserts to be related to the claimed invention. Appellant has not shown that any increase in sales was caused by “sidemount” technology rather than being caused instead by any number of other factors including, for example, notebooks having “a better dot pitch for viewing XGA” or “pushing [13.3-inch] products out of the market” as predicted by DisplaySearch. Indeed, according to the Declaration of Thomas R. Varner, Ph.D. dated February 3, 2009, (“Varner Declaration”), shipments of 14.1-inch LCD panels rose from 18.9% (in 1999) to 59.2% (2002) while 12.1/13.3 inch LCDs decreased from 61.5% (1999) to 13.2% (2002) (Varner Dec’l ¶ 5) supporting predictions set forth by DisplaySearch that sales of 14.1-inch laptops would increase while sales of 13.3-inch laptops would decrease based on factors other than the “sidemount technology.” We also find Appellant’s argument that competitors “incorporated the sidemount invention claimed” (App. Br. 35) to be only minimally probative of nonobviousness since Appellant has not provided any convincing evidence indicating any significance of such alleged use by competitors or Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 12 that the competitors were, in fact, even copying the claimed invention in the first place. For example, Appellant argues that “Mr. Phillips found that the structures of the [inspected] modules . . . incorporated the sidemount invention” and that “Mr. Choi likewise found that every single notebook LCD panel over 14.0 inches that he inspected . . . was constructed with sidemount holes for sidemounting the LCD to the notebook” (App. Br. 35), but these declarants fail to indicate how many notebooks were inspected with respect to the total number of notebook LCD panels on the market. Thus, no statistical significance can be attributed to the data presented in the argument, even if true, that “[t]he LCD modules that Messrs. Phillips and Choi inspected were incorporated into laptop or notebook computers sold by major computer manufacturers” (App. Br. 35). In addition, Appellant argues a nexus between the claimed “sidemount technology” of “moving the mounting holes to the side surface of the module” (Declaration of Samuel R. Phillips ¶16) with competitor copying and adopting into an industry standard. However, as we stated above, Masanori (which predates the ‘942 patent) discloses a frame in a liquid crystal panel device that has a fastening part at a side edge and is fixable to a housing through the side edge (i.e., Masanori discloses the “sidemount technology”). Appellant has not demonstrated that any alleged copying or adopting into an industry standard could not have resulted from copying or adopting from the earlier Masanori disclosure rather than from the ‘942 patent. In fact, if any copying occurred, it would appear that such copying would have been from an earlier published reference source (e.g., the Masanori reference). Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 13 We therefore find that the Examiner did not err in rejecting claims 1, 4, and 7-16. (5) Claim 1 – Obviousness-type double patenting Appellant states that “Appellant will consider filing a Terminal Disclaimer” (App. Br. 15) and presents no arguments against this rejection. As such, we summarily sustain this rejection. We therefore find that the Examiner did not err in rejecting claim 1. CONCLUSION The Examiner did not err in rejecting claim 1 under the judicially created doctrine of obviousness-type double patenting over U.S. Patent No. 5,835,139 and finding that the combination of Masanori and Komano discloses or suggests side edges including first and second mounting holes; that the combination of Masanori and Komano discloses or suggests a second frame coupled to edges of the liquid crystal panel and sides of the first frame and a fastening part joining together the first frame, second frame, and outer casing through the sides of the first frame, second frame and outer casing; that the combination of Masanori and Komano discloses or suggests a light unit; that Aguilera discloses or suggests an unthreaded fastener, that it would have been obvious to one of ordinary skill in the art to have combined APA and Masanori, and that claims 1, 4, and 7-16 would have been obvious to one of ordinary skill in the art. Appeal 2011-004241 Reexamination Control 90/008,146 Patent 6,373,537 B2 14 DECISION The Examiner’s decision to reject appealed claims 1-16 is affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED Patent Owner: McKenna Long & Aldridge LLC 1900 K Street, Nw Washington, DC 20006 Third Party Requesters: Bruce K. Lagerman, Lagerman and Associates, PLLC 11921 Freedom Drive, Suite 550 Reston, VA 20190 Copy with citationCopy as parenthetical citation