Ex parte Abileah

Board of Patent Appeals and Interferences

Feb 23, 1999

08177858 (B.P.A.I. Feb. 23, 1999)

Application for patent filed January 5, 1994. 1
According to appellant, the application is a continuation-in-
part of Application 08/031,120, filed March 12, 1993, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ADIEL ABILEAH
________________
Appeal No. 96-0871
Application 08/177,8581
________________
HEARD: FEBRUARY 10, 1999
________________
Before BARRETT, FLEMING and DIXON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 and 3 through 7. Claims 12 and 13 have been allowed
Appeal No. 96-0871
Serial No. 08/177,858
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by the Examiner. Claims 2 and 8 through 11 have been
canceled.
The invention relates to backlit liquid crystal display
devices (LCDs) having a first light source for operation
during the day, and a separate and independent second light
source for operation at night. On page 42 of the
specification, Appellant discloses that Figure 10 illustrates
the proper positioning of an integral image-
splitting/collimating lens 302, an EL night lamp 398 and a
serpentine daytime lamp 300. In particular, on pages 43 and
44 of the specification, Appellant discloses that the spacing
between the parallel daytime light sources 300 is an important
parameter to the achievement of substantially uniform light
from either the daytime light sources 300 or the EL night lamp
398. Appellant discloses that by manufacturing the
backlighting system so that the inner diameter of the daytime
sources 300, "D ", is equal to the gap, "T", between the innerI
peripheries of adjacent daytime light sources, the
backlighting from either the daytime light sources 300 or the
EL night lamp 398 results in substantially uniform
Appeal No. 96-0871
Serial No. 08/177,858
Appellant filed an appeal brief on February 13, 1995. 2
We will refer to this appeal brief as simply the brief.
Appellants filed a reply appeal brief on July 31, 1995. The
Examiner responded to the reply brief with a supplemental
Examiner's answer thereby entering and considering the reply
brief.
The Examiner responded to the brief with an Examiner's3
answer, mailed June 1, 1995. We will refer to the Examiner's
answer as simply the answer. The Examiner responded to the
reply brief with supplemental Examiner's answer mailed
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illumination produced by the integral image-
splitting/collimating lens 302.
The independent claim 1 is reproduced and is appended to
this decision.
The Examiner relies on the following references:
Abileah et al. (Abileah) 5,161,041 Nov. 3,
1992
Farrell 5,143,433 Sept. 1, 1992
Military Standard MIL-L-85762A Aug. 26, 1988
Claims 1 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Abileah in view of Farrell. Claims 3
through 6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Abileah in view of Farrell and Military
Standard MIL-L-85762A.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the briefs and answers for the2 3
Appeal No. 96-0871
Serial No. 08/177,858
September 13, 1995.
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respective details thereof.
OPINION
We will not sustain the rejection of claims 1 and 3
through 7 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg., Inc. v. SGS Importers Int’l,
Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir.
1995), cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appellant argues on pages 6-8 of the brief that neither
Appeal No. 96-0871
Serial No. 08/177,858
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Abileah nor Farrell teach or suggest Appellants' unique
lighting element spacing that ensures uniform and non-
saturating lighting during nighttime activities. Appellant's
independent claim 1 sets forth "two spaced apart light
emitting members each having an inner diameter defining an
inner periphery and an outer diameter defining an outer
periphery thereof, wherein said gap is defined as the distance
between said inner peripheries of said two spaced apart light
emitting members, said gap being of substantially the same
width as each of said inner diameters of said spaced apart
light emitting members." Appellant argues that nowhere is it
taught or suggested to modify Abileah to space the light
emitting members of the first or daytime source a distance T
apart where gap T is substantially equal to the inner diameter
distance of each of the first source light emitting members.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
Appeal No. 96-0871
Serial No. 08/177,858
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n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Upon a closer review of Abileah, we agree with the
Examiner that Abileah fails to teach second light source.
Furthermore, we fail to find that Abileah teaches or suggests
the spacing of the first light source members such that the
gap defined between the inner peripheries of two spaced apart
first light source members a distance that is substantially
the same as the inner diameters of the first light source
members. In particular, we find that Abileah is silent to
this spacing in the specification. We further note that
Abileah does show the spacings in Figures 2A and 7 and these
spacings are much greater than Appellant's claimed spacings.
Turning to Farrell, we fail to find that Farrell teaches
or suggests the spacing of the first light source members such
that the gap defined between the inner peripheries of two
spaced apart first light source members a distance that is
substantially the same as the inner diameters of the first
light source members. As with Abileah, Farrell is silent as
Appeal No. 96-0871
Serial No. 08/177,858
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to this spacing in the specification. However, when Farrell
illustrates the spacing in the drawing, Farrell shows the
spacings that spacings are much greater than Appellant's
claimed spacings. See Farrell's Figures 1, 2, 8 and 9.
The Examiner has failed to show that the prior art
suggested the desirability of the Examiner's proposed
modification. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration. Our reviewing
court requires this evidence in order to establish a prima
facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Therefore, we find that the
Examiner has failed to establish why one having ordinary skill
in the art would have been led to the claimed invention by
teachings or suggestions found in the prior art.
We have not sustained the rejection of claims 1 and 3
through 7 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
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REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Myers, Liniak & Berenato
6550 Rock Spring Drive, Ste. 240
Bethesda, MD 20817
Appeal No. 96-0871
Serial No. 08/177,858
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MRF/ki
Appeal No. 96-0871
Serial No. 08/177,858
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APPENDIX
Appeal No. 96-0871
Serial No. 08/177,858
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