Ex Parte CONWAY et al

Patent Trial and Appeal Board

Sep 18, 2018

13867545 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/867,545 04/22/2013
23619 7590 09/20/2018
Squire Patton Boggs (US) LLP
PHX-IP&T-SPB
8000 Towers Crescent Drive
14th Floor
Tysons Corner, VA 22182
FIRST NAMED INVENTOR
Jerome S. CONWAY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
043010.00233 9112
EXAMINER
TUNG,DAVID
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
09/20/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PHXIPDOCKET@SquirePB.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME S. CONWAY and MARK W. FLETCHER 1
Appeal 2018-001351
Application 13/867 ,545
Technology Center 2600
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is L-3 Communications
Corporation. See App. Br. 3.
Appeal 2018-001351
Application 13/867,545
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
8-10 and 13-15. Claims 1-7, 11, and 12 are canceled. App. Br. 14--15
(Claims App'x.). We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
THE INVENTION
The claims are directed to a touch-screen with front-mounted flexible
display. Spec., Title. Claims 8 and 10, reproduced below with disputed
limitations emphasized in italics, are illustrative of the claimed subject
matter:
8. A touch-screen display system comprising:
a touch-screen integrated with a thin, flexible display
wherein a rear surface of the thin, flexible display is conductive
and serves as the front panel of the touch-screen, and wherein
the thin, flexible display is mounted in front of a touch-screen
rear panel and being flexible enough to allow a user to touch the
thin, flexible display and to operate the touch-screen, wherein the
thin, flexible display comprises a substrate with active
addressable pixel elements.
10. A display system as claimed in Claim 8 wherein the rear
surface of the thin, flexible display is separated from the touch-
screen rear panel only by an air gap.
2 We refer to the Specification filed Apr. 22, 2013 ("Spec."); the Final
Office Action mailed July 6, 2016 ("Final Act."); the Appeal Brief filed June
6, 2017 ("App. Br."); the Examiner's Answer mailed Sept. 21, 2017
("Ans."); and the Reply Brief filed Nov. 21, 2017 ("Reply Br.").
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Application 13/867,545
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Kent
Umemoto
Jeon
US 2005/0174335 Al
US 6,982,432 B2
US 2011/0037576 Al
REJECTIONS
The Examiner made the following rejections:
Aug. 11, 2005
Jan.3,2006
Feb.17,2011
Claim 10 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 2--4.
Claims 8-10, 13, and 14 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Umemoto and Kent. Final Act. 4--7.
Claim 15 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Umemoto, Kent, and Jeon. Final Act. 7-8.
ANALYSIS
Appellants' contentions are unpersuasive of reversible Examiner error.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 2-8) and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief (Ans. 2-14) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
35 USC§ 103(a) Rejection of Claim 8
The Examiner finds Umemoto's colored substrate 31 with electrode
41 (see Fig. 2), combined as an element, form a rear surface of the display
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panel and thus teaches or suggests "a rear surface of the thin, flexible display
[being] conductive and serv[ing] as the front panel of the touch-screen," as
required by the disputed limitation. Final Act. 5; Ans. 9.
Appellants contend Umemoto 's colored substrate 31, not electrode 41,
is the rear surface of the display 3A. App. Br. 10; Reply Br. 7. Appellants
argue Umemoto's electrode 41 is the front surface of touch panel 4, not the
rear surface of display 3A as required by claim 8. Id. Appellants assert
Umemoto's labeling of the elements depicted in Figure 2 using braces (i.e.,
"}")to identify elements belonging to display panel 3A and touch panel 4 is
controlling. Reply Br. 7. Appellants argue Umemoto' s element labels
delineate substrate 31 as part of display 3A and electrode 41 as part of touch
panel 4, which, according to Appellants, means that electrode 41 is not part
of the rear surface of the display. Id.
Appellants' contention is not persuasive of reversible Examiner error
because Appellants fail to respond to the Examiner's findings that the
combination of electrode 41 and substrate 31 teaches or suggests the rear
surface of the display panel that also serves as the front panel of the touch-
screen. See Final Act. 5; Ans. 9. Even though Umemoto depicts braces in
Figure 2 as designating features included in the display panel 3A as opposed
to features included in the touch panel 4, "obviousness is not determined by
what the references expressly state but by what they would reasonably
suggest to one of ordinary skill in the art." In re DeLisle, 406 F.2d 1386,
1389 (CCPA 1969). That is to say, although Appellants argue Umemoto
fails to explicitly disclose electrode 41 as being the rear surface of the
display by showing electrode 41 is part of the touch-screen, Appellants fail
to persuasively argue or present evidence that Umemoto's substrate 31 and
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Application 13/867,545
electrode 41, as a combined element, does not teach or suggest a rear surface
of a display panel that serves as the front panel of the touch-screen, as
required by the disputed limitation. In particular, but for Umemoto's
labeling designating electrode 41 as a component of the touch-screen panel
4, Appellants fail to explain why one skilled in the art would not instead
have considered it to be part of the immediately adjacent display panel 3A.
Herein, whether an element is designated as part of one collection of
elements or another is merely a difference in expression rather than a
structural difference. In either case, the same constituent elements are
organized in the same arrangement as required by claim 8. Thus,
Appellants' argument is based on terminology and the nomenclature used to
describe groups of component elements (i.e., what is included as part of a
touch-screen) without providing sufficient evidence that the claimed
constituent elements or their arrangement differ from the overall structure
disclosed by the prior art. Thus, putting aside nomenclature and/or labeling
used by the prior art, Umemoto's arrangement of a substrate with
addressable pixel elements, a conductive surface, and a touch-screen rear
panel, in that order, teaches or suggests the claimed arrangement of display
and touch-screen.
Furthermore, making elements of a device (e.g., a touch-screen
display) separable (e.g., separating Umemoto's touch-screen panel 4 into
individual components including electrode 41) and making an element
integral (e.g., incorporating electrode 41 into immediately adjacent display
panel 3A) are, in the absence of evidence to the contrary, considered to be
obvious design choices and do not render an invention patentable. See In re
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Larson, 340 F.2d 965, 968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523
(CCPA 1961); MPEP § 2144.04(V)(C).
Accordingly, we agree with the Examiner in finding Umemoto teaches
or suggests the disputed limitations of claim 8.
35 US.C. § 103(a) Motivation
The Examiner finds that although Umemoto does not disclose the
display comprising "active addressable pixel elements," Kent's active matrix
display teaches or suggests a display comprising active addressable pixel
elements. Final Act. 6; Ans. 12. The Examiner finds a person skilled in the
art would have been motivated to use the active addressable pixel elements
of Kent because active addressable pixel elements improve the image quality
of the display panel by providing more precise control of the pixel elements.
Final Act. 6; Ans. 13.
Appellants contend there would be no reason to combine Kent's
OLEDs fabricated on a glass substrate with Umemoto's integrated touch-
screen display panel because Kent's rear surface of the display is not
conductive and would not serve as the front panel of the touch-screen. App.
Br. 10; Reply Br. 8-9. According to Appellants, if the teachings and
suggestions from Kent and Umemoto are combined, Umemoto's electrode
41 is still necessary because the resultant back surface of the combination
would have a non-conductive substrate 62 rather than the claimed
conductive rear surface. Reply Br. 9.
Appellants' contention is not persuasive of examiner error.
Concerning propriety of the combination, we note:
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Any judgment on obviousness is ... necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) ("[A]ny obviousness
inquiry necessarily involves some hindsight."); In re Kahn, 441 F .3 d 977,
988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds ... must
[include] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness."), cited with approval in KSR
Int 'l Co v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the Examiner has
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness. Final Act. 5; Ans. 5, 12-13. In contrast,
Appellants provide insufficient evidence demonstrating one skilled in the art
would not have been motivated to combine the respective teachings of
U memo to and Kent.
We also disagree that combining Kent's display of active addressable
pixel elements with Umemoto's integrated touch-screen display panel would
require U memo to' s electrode 41 to be integral to a touch panel element and
not as part of a display. See Reply Br. 9. "The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981)
(emphasis added). Furthermore, contrary to Appellants' argument and as
discussed above, Umemoto teaches or suggests the claimed arrangement of a
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substrate with addressable pixel elements, a conductive surface, and a touch-
screen rear panel. Therefore, we find the combination ofUmemoto and
Kent teaches or suggests the limitations of independent claim 8 and we
sustain the rejection thereof under 35 U.S.C. § 103(a) together with the
rejections of dependent claims 9 and 13-15 which are not argued separately
with particularity.
35 US.C. § 103(a) Rejection of Claim 10
The Examiner finds Umemoto's colored substrate with electrode (Fig.
2: 31 and 41) forms a rear surface of the display panel and Umemoto's
substrate with electrode (Fig. 2: 44 and 43) forms the touch-screen rear
panel, which are separated only by an air gap. Final Act. 6; Ans. 13.
Therefore, the Examiner finds U memo to teaches or suggests the rear surface
of the display panel being separated from the touch-screen rear panel by only
an air gap as recited by claim 10. Id.
Appellants contend Umemoto 's touch-screen is directly connected to
the display, and therefore does not teach or suggest the rear surface of the
display being separated from the touch-screen rear panel by only an air gap.
App. Br. 11. According to Appellants, both of U memoto' s electrodes 41 and
43 as depicted in Figure 2 are part of the touch-screen rear panel with
electrodes 41 shown in contact with, not separated from, display panel 3A.
Reply Br. 9.
Appellants' contention is not persuasive of reversible examiner error
because Appellants fail to respond to the Examiner's findings that (i) the
combination of substrate 31 and electrode 41 teaches or suggests the rear
surface of the display panel and (ii) the combination of substrate 44 and
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electrode 43 teaches or suggests the touch-screen rear panel. That is, for the
reasons discussed above, we agree with the Examiner's mapping of claim 8
to Umemoto's display device such that Umemoto's electrodes 41 teach or
suggest the claimed conductive display rear surface. Applying this mapping,
Umemoto's disclosure of "electrodes 41 and 43 ... disposed ... opposite to
each other through a gap" (Umemoto col. 5, 11. 19-21) teaches or suggests
the rear surface of the thin, flexible display (Umemoto 's electrode 41)
separated from the touch-screen rear panel (Umemoto's electrode 42) only
by an air gap as required by claim 10. Therefore, we sustain the rejection of
claim 10 under 35 U.S.C. § 103(a).
35 US.C. § 112,firstparagraph, Rejection of Claim 10
Appellants contend the Examiner improperly rejected amended claim
10 as lacking adequate written description because Appellants' Figure 3
shows "air gap 113 is the only thing separating rear surface 116 of the front-
mounted flexible display 114 and front surface 117 of rear panel 112." App.
Br. 9; Reply Br. 4. Although Appellants acknowledge their Specification
does not expressly disclose the word "only," Appellants assert paragraph 17
implies that only an air gap separates the rear surface of the display from the
rear panel of the touch-screen. App. Br. 9; Reply Br. 4.
The Examiner finds Appellants' Figure 3 does not show sufficient
detail of Appellants' touch-screen display to demonstrate that the rear
surface of the display is completely separated from the touch-screen rear
panel by only an air gap because Figure 3 employs long break lines,
indicating features beyond the break lines are not shown. Ans. 8. The
Examiner finds support structures (e.g., opposing electrodes, structural
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elements) are necessary to maintain the air gap between the display's rear
surface and the touch-screen rear panel. Ans. 7-8. The Examiner further
finds paragraph 1 7, cited by Appellants, does not expressly support
separating the display' s rear surface from the touch-screen rear panel by only
an air gap. 3 Final Act. 3--4; Ans. 8-9.
Appellants' contentions are not persuasive of reversible Examiner
error. Separating two elements by only another element excludes other
separating elements, such as support structures found to be necessary by the
Examiner. We note that negative limitations are supported by adequate
written description when the specification describes a reason to exclude the
relevant limitation. Santarus, Inc. v. Par Pharma., Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355
(Fed. Cir. 2015). Here, we determine Appellants' addition of only to the
claim is analogous to a negative limitation because it eliminates any other
element from separating rear surface 116 of the front-mounted flexible
display 114 and front surface 117 of rear panel 112.
Appellants' Specification does not provide any reasons to exclude
support structures or any other elements ( exclusive of an air gap) to separate
the display from the touch-screen. In this regard, Appellants fail to (i) direct
attention to any disclosure describing, or (ii) present any evidence of or
disadvantages avoided by separating the display's rear surface from the
3 We note Appellants failed to direct attention to where support could be
found in the originally filed disclosure for the disputed limitation when the
limitation was added to claim 10 as part of the Reply filed March 21, 2016.
See Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (holding that
"[MPEP] § 2163.04(I)(B) as written is a lawful formulation of the prima
facie standard for a lack of written description rejection").
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touch-screen rear panel by nothing except for an air gap. In addition to the
Examiner providing reasoned argument that there must be support structures
to separate the surfaces used for the touch-screen, Appellants' Specification
expressly discloses using spacers to separate the surfaces used for the touch-
screen to prevent unintentional deflection (Spec. ,r 22). Similarly,
Appellants' Figures depicting break-lines further indicate that not all features
are shown, such as any support structures between the display' s rear surface
and the touch-screen rear panel. We therefore agree with the Examiner in
finding Appellants' originally filed disclosure fails to describe separating the
rear surface of the display panel from the touch-screen rear panel only by an
air gap as recited by claim 10. According, we sustain the rejection of claim
10 under 35 U.S.C. § 112, first paragraph.
DECISION
We affirm the Examiner's decision to reject claims 8-10 and 13-15
under 35 U.S.C. § 103(a).
We affirm the Examiner's decision to reject claim 10 under 35 U.S.C.
§ 112, first paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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