Ex Parte Cairns et al

Board of Patent Appeals and Interferences

Jul 5, 2007

09943535 (B.P.A.I. Jul. 5, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte GRAHAM ANDREW CAIRNS,
MICHAEL JAMES BROWNLOW, ANDREW KAY, and
HARRY GARTH WALTON
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Appeal 2007-0600
Application 09/943,535
Technology Center 2600
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Decided: July 5, 2007
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and
JAY P. LUCAS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §§ 6(b) and 134 from the
Examiner's final rejection of claims 1, 2, and 4-16.
We AFFIRM.
Appeal 2007-0600
Application 09/943,535

BACKGROUND
Appellants’ invention relates to driving arrangements for active matrix
LCDs. An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. A driving arrangement for an active matrix liquid crystal display
comprising:

(a) a multi-format digital data driver arranged to operate in a plurality
of different display modes, to receive digital input data in a plurality
of different color formats, and to drive data lines of the liquid crystal
display so as to cause an image to be displayed by the display
corresponding to said input data; and

(b) data analysis means arranged to receive said digital input data, to
determine the color format of the input data, and to control the data
driver to operate in the display mode corresponding to the determined
color format of the input data, wherein the data driver is controlled so
as to consume less power in low resolution display modes and more
power in high resolution display modes based on the determined color
format.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:

Misawa US 5,250,931 Oct. 05, 1993
Daher US 5,327,254 Jul. 05, 1994
Nishioka US 5,390,293 Feb. 14, 1995
Koyama US 5,767,832 Jun. 16, 1998
Cairns EP 0,930,716 B1 Jul. 21, 1999
Nakagiri US 6,396,465 B1 May 28, 2002
(filed Nov. 9, 1999)

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REJECTIONS
Claims 1, 2, 5, 9, 10, and 12-14 are rejected under 35 U.S.C. 102(e) as
being anticipated by Nishioka.
Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Nishioka in view of Daher.
Claims 6-8 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Nishioka in view of Koyama.
Claim 11 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Nakagiri in view of Cairns.
Claims 15-16 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nishioka in view of Misawa.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejections, we make
reference to the Examiner's Answer (mailed Jun. 15, 2006) for the reasoning
in support of the rejections, and to Appellants’ Brief (filed Mar. 27, 2006)
and Reply Brief (filed Aug. 11, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
At the outset, we note that Appellants have not expressly argued or
expressly invoked consideration under 35 U.S.C. § 112, sixth paragraph, in
the Brief or in the Reply Brief. Therefore, we give the “data analysis

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Application 09/943,535

means” an interpretation as broad as would be reasonable in light of
Appellants’ express claim limitations interpreted in light of the disclosure.
Additionally, we note that claim 14 is either an improper dependent
claim since it does not further limit independent claim 1, and it should be
rewritten in independent format or the claim should be rewritten to further
limit the claim as recited in independent claim 1.
35 U.S.C. § 102
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631,
2 USPQ2d 1051, 1053 (Fed. Cir. 1987). The inquiry as to whether a
reference anticipates a claim must focus on what subject matter is
encompassed by the claim and what subject matter is described by the
reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), it is only necessary for
the claims to “‘read on’ something disclosed in the reference, i.e., all
limitations of the claim are found in the reference, or ‘fully met’ by it.”
While all elements of the claimed invention must appear in a single
reference, additional references may be used to interpret the anticipating
reference and to shed light on its meaning, particularly to those skilled in the
art at the relevant time. See Studiengesellschaft Kohle, M.B.H. v. Dart
Indus., Inc., 726 F.2d 724, 726-27, 220 USPQ 841, 842-43 (Fed. Cir. 1984).
From our review of the Examiner’s rejection of independent claim 1,
we find that the Examiner has at least established a prima facie case of
anticipation of independent claim 1 and shown that Nishioka teaches all of

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the limitations recited in independent claim 1. Therefore, we look to
Appellants’ Briefs to show error in the Examiner’s prima facie case.
Appellants argue that the data analysis means controls the particular
display mode of the multi-format digital data driver based on the determined
color format of the input data itself (Br. 6-7). Here, we find a slight
variation of the argument from the express language of independent claim 1
which states “data analysis means arranged to receive said digital input data,
to determine the color format of the input data, and to control the data driver
to operate in the display mode corresponding to the determined color format
of the input data.” Determining the color format of the input data is different
from determining the color format from the input data. The manner in
which the Examiner interprets independent claim 1 seems to imply that if the
format of the input data is varied, then the format of the input data had to
have been determined (Answer 6-7). In Nishioka, it is the manner of the
determination or what values are used in a calculation or computation upon
which the determination is based upon that is of critical importance.
We find no express limitation in the language of independent claim 1
which expressly limits what the determination is based upon. A
determination of the format of the input data is made in Nishioka. The
determination may be either selected by a user or the system as Appellants
agree (Br. 7-10). Nishioka also teaches automatically selecting the number
of colors as taught in embodiments four through six at columns 21-23.
Therefore, we cannot agree with Appellants that Nishioka does not perform
a determination.

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Appellants argue that Nishioka selects a display mode based on other
factors which do not include the color format of the input data itself. (Br. 7
and Reply Br. 5). We agree with Appellants, but do not find that this
specific argument is commensurate in scope with the express language of
independent claim 1 which does not recite “factors.” Appellants argue that
the difference between Nishioka and the claimed invention is in the “how”
the determination is made (Br. 8 and Reply Br. 8). We cannot agree with
Appellants that the “how” in the determination is actually made based upon
the actual data as a factor in the determination since we do not find this level
of specificity in the language of independent claim 1. Therefore, Appellants'
argument is not persuasive, and we will sustain the rejection of independent
claim 1. Appellants have elected to group dependent claims 2, 5, 9, 10, and
12-14 with independent claim 1. Therefore, we will sustain the rejection of
those claims also.
35 U.S.C. § 103
At the outset, we note that to reach a proper conclusion under § 103,
the Examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the Examiner to ascertain
whether the Examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem

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facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006). With respect to the role of the Examiner as finder of fact, the
Court of Appeals for the Federal Circuit has stated: “the examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals
for the Federal Circuit has also noted: “[w]hat the prior art teaches, whether
it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir.
2004) (internal citations omitted). In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness’ . . . . [H]owever, the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l v.
Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
With respect to dependent claims 4, 6-8, 11, 15, and 16, Appellants
have relied upon the same rationale advanced with respect to independent

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claim 1 which we did not find persuasive above. Therefore, we will sustain
the rejection of dependent claims 4, 6-8, 11, 15, and 16 since Appellants
have not shown error in the Examiner’s initial showing.
CONCLUSION
To summarize, we have sustained the rejection of claims 1, 2, 5, 9, 10,
and 12-14 under 35 U.S.C. § 102, and we have sustained the rejections of
claims 4, 6-8, 11, 15, and 16 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

tdl/ce

Neil A. DuChez
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 Euclid Avenue, 19th Floor
Cleveland, OH 44115

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