Ex Parte 6373537 et al

Board of Patent Appeals and Interferences

Apr 19, 2011

90008146 (B.P.A.I. Apr. 19, 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.
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
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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

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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?
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(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

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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.”
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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.
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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).
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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.

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(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
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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]
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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
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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).
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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.

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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