Ex Parte Cuvillier

Patent Trials and Appeals Board

Jun 24, 2019

13124379 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/124,379
75576 7590
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
09/09/2011
06/26/2019
FIRST NAMED INVENTOR
Christophe Cuvillier
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.
VIST:0018 5806
EXAMINER
MERLIN, JESSICA M
ART UNIT PAPER NUMBER
2871
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
docket@fyiplaw.com
powell@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER CUVILLIER
Appeal2017-007172
Application 13/124,379
Technology Center 2800
Before JULIA HEANEY, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge HEANEY.
Opinion Dissenting-in-Part and Concurring-in-Part filed by
Administrative Patent Judge CASHION.
HEANEY, Administrative Patent Judge.
Appeal2017-007172
Application 13/124,379
DECISION ON APPEAL 1
Appellant2 requests review pursuant to 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 7, 8, 11, 25-29, and 32-39 of
Application 13/124,379. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The subject matter on appeal relates to a display device for an
automotive vehicle, and a method of manufacturing such a display device.
Appeal Br. 2.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A display device comprising a display element, the display
element being backlit by a preassembled back-lighting module,
wherein the preassembled back-lighting module comprises:
a frame formed from a material comprising magnesium;
a light source positioned on a lateral side of a display
area of the display element, wherein the light source is in direct
contact and direct thermal contact with the frame;
a lightguide configured to distribute light emitted by the
light source substantially uniformly over the display area;
1 This Decision refers to the Specification dated Apr. 14, 2011 ("Spec."),
Final Rejection dated Feb. 11, 2016 ("Final Act."), Appeal Brief dated
Aug. 29, 2016 ("Appeal Br."), Examiner's Answer dated Dec. 20, 2016
("Ans."), and Reply Brief dated Feb. 20, 2017 ("Reply Br.").
2 Appellant identifies the real party in interest as Visteon Corporation.
Appeal Br. 2.
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Application 13/124,379
an optical filtering device configured to enable the
preassembled back-lighting module to be used with various
display element types; and
a light scattering device configured to enhance
uniformity of the light distributed over the display area;
wherein the display device is formed by associating the
preassembled back-lighting module with the display element;
and
wherein the light source comprises a light-emitting diode
(LED), and the LED is directly coupled to the frame by an
adhesive.
Appeal Br. 18. Independent claim 26 is directed to a method of
manufacturing a display device, having a first step of preassembling a back-
lighting module comprising the same components as the back-lighting
module of claim 1, and a second step of associating the preassembled back
lighting module with a display element. Id. at 19. Independent claim 3 3 is
directed to a display device having a preassembled back-lighting module
comprising some of the components of the back-lighting module of claim 1,
but not including an optical filtering device or light scattering device. Id. at
20.
According to the Specification, the advantage of placing the light
source, preferably an LED, in direct contact with the frame is that heat
transfer between the light source and the frame is greatly improved.
Spec. ,i,i 8-9.
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Application 13/124,379
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1, 7, 8, 11, 25-29, and 32-39 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement
requirement. Final Act. 4
2. Claims 1, 7, 8, and 25 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over the combination of Suzuki,3
Luettgen,4 Morbieu,5 and Ohta. 6 Id. at 5.
3. Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Suzuki, Luettgen, Morbieu,
Ohta, and Choi. 7 Id. at 9.
4. Claims 26-28 and 32 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hsu,8 Suzuki,
Luettgen, Morbieu, and Ohta. Id. at 10.
5. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Hsu, Suzuki, Luettgen,
Morbieu, Ohta, and Choi. Id. at 14.
6. Claims 33, 34, 36, 37, and 39 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over the combination of
Suzuki, Luettgen, and Ohta. Id. at 15.
3 JP 2007-279593, published October 25, 2007.
4 US 2007/0263374 Al, published November 15, 2007.
5 US 2008/0062116 Al, published March 13, 2008.
6 US 2009/0231513 Al, published September 17, 2009.
7 US 2006/0132670 Al, published June 22, 2006.
8 US 2009/0128730 Al, published May 21, 2009.
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Application 13/124,379
7. Claim 35 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Suzuki, Luettgen, Ohta, and
Choi. Id. at 17.
8. Claim 38 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Suzuki, Luettgen, Ohta, and
Morbieu. Id.
DISCUSSION
§ 112 Enablement Rejection
To be enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed invention without
"undue experimentation." Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561
(Fed. Cir. 1993)). '"The scope of the claims must be less than or equal to the
scope of the enablement' to 'ensure[] that the public knowledge is enriched
by the patent specification to a degree at least commensurate with the scope
of the claims."' Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir.
2008) (quoting Nat'! Recovery Techs., Inc. v. Magnetic Separation Sys., Inc.,
166 F.3d 1190, 1195-96 (Fed. Cir. 1999)) (alteration in original); see also
In re Fisher, 427 F.2d 833, 839 (CCPA 1970) ("[T]he scope of the claims
must bear a reasonable correlation to the scope of enablement provided by
the specification to persons of ordinary skill in the art.").
When rejecting a claim under the enablement requirement of§ 112,
the Examiner bears an initial burden of setting forth a reasonable explanation
as to why the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification of
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Application 13/124,379
the application; this includes providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement. In re Wright,
999 F.2d 1557, 1561-62 (Fed. Cir. 1993). If the Examiner meets this burden,
the burden then shifts to the Applicant to provide suitable proofs indicating
that the specification is indeed enabling. Id. ( citing In re Marzocchi, 439
F.2d 220, 223-24 (CCPA 1971)).
The Examiner rejects all of the appealed claims as failing to comply
with the enablement requirement because the limitation "the LED is directly
coupled to the frame" in each of the independent claims renders the scope of
the claim unclear. Final Act. ,i 9; see also Ans. 3 ("[T]here is inadequate
written description in order to provide enablement of the limitation 'the LED
is directly coupled to the frame."'). Specifically, the Examiner finds it is not
clear how the LED is oriented and constructed to allow direct contact with
the frame, and in Figure 2, "the flexible circuit appears to be directly
contacting the frame, with the LEDs directing contacting the flexible circuit.
Therefore, it is not clear how the backlighting of the display may be
implemented with the LED attached directly to the frame." Final Act. ,i 13.
The Examiner concludes "it is not clear how the backlighting of the display
may be implemented with the LED attached directly to the frame." Id.
Appellant argues as follows:
[O]ne skilled in the art would understand how to connect one
surface/side of the LED to a flexible printed circuit and to
couple another surface/side of the LED to a frame, while a
further side of the LED may emit light. By way of example
only, a bottom side of an LED may be connected to a flexible
printed circuit, a left side of the LED may be directly coupled to
a frame, and light may be emitted from a right side of the LED
(e.g., side-emitting LED).
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Application 13/124,379
Appeal Br. 8.
In the Reply Brief, Appellant further argues that the Specification
includes disclosure, in addition to Figure 2, that the light source preferably
makes direct thermal contact with the frame, especially by way of an
adhesive. Reply Br. 3 ( citing Spec. ,i,i 8-9). Appellant further argues that
because the light source is an LED, and because the light source is in direct
contact with the frame, therefore the LED is in direct contact with the frame.
Id.
Appellant's arguments are persuasive of reversible error in the
rejection. The Examiner has not met the burden of providing a reasonable
explanation why the Specification would not have enabled a person of
ordinary skill in the art to implement an LED directly coupled to the frame
of a backlight device. The Examiner's conclusion that it is not clear how an
LED would be attached directly to the frame is not supported by sufficient
reasoning, and does not take into consideration whether undue
experimentation would have been necessary. In re Wands, 858 F.2d 731,
737 (Fed. Cir. 1988). Accordingly, we reverse the rejection of claims 1, 7,
8, 11, 25-29, and 32-39 for lack of enablement.
§ 103 Rejections
Each of Rejections 2-8 is based in part on the Examiner's finding that
Ohta teaches an LED light source directly coupled to the frame of a
backlight device by an adhesive. Final Act. 8, 13, 16. The Examiner finds
that Ohta' s LED unit 20 corresponds to the LED recited in each of the
independent claims 1, 26, and 33. Id.; Ans. 3. In addressing this finding for
Rejections 2-8, Appellant argues that Ohta does not teach this recitation
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(Appeal Br. 10-11). Accordingly, we limit our discussion to Appellant's
argument against the Examiner's finding as to Ohta.
Appellant argues that Ohta does not teach the LED is directly coupled
to the frame by an adhesive, but rather discloses a board of an LED unit
fixed to a frame. Appeal Br. 10 (citing Ohta ,i 36, Fig. 2). Appellant argues
that Ohta considers its LEDs 22 and the board 21 to which LEDs 22 are
connected as separate elements. Id. at 11 ( citing Ohta ,i 8). Appellant
further argues that a person of ordinary skill in the art would consider the
LED recited in the independent claims to correspond to one of the LEDs 22
of Ohta, not to LED unit 20, and that the Examiner provides no objective
evidence why the LED unit 20 corresponds to the claimed LED. Reply
Br. 4.
Appellant's argument is not persuasive of reversible error. Ohta's
disclosure in Figure 2 and paragraph 36 of LED unit 20 fixed to the sidewall
of frame 14 supports the Examiner's finding that Ohta's LED unit 20
corresponds to the LED recited in the claims. Although Ohta expressly
describes LEDs 22 and board 21 to which LEDs 22 are connected as
separate elements, we do not consider this disclosure to be dispositive in an
obviousness determination. The Examiner's correspondence of Ohta's LED
unit 20 (including board 21) to the claimed LED is consistent with a
reasonable interpretation of Ohta by a person of ordinary skill in the art and
Appellant does not explain why a person of ordinary skill in the art would
not have understood Ohta to have an LED directly coupled to its frame. On
this record, we discern no basis to reject the Examiner's relevant findings.
Accordingly, we affirm each of Rejections 2-8.
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SUMMARY
We reverse the rejection of claims 1, 7, 8, 11, 25-29, and 32-39 under
35 U.S.C. § 112, first paragraph.
We affirm the rejections of claims 1, 7, 8, 11, 25-29, and 32-39 as
unpatentable 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. § l.136(a)(l). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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Appeal2017-007172
Application 13/124,379
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER CUVILLIER
Appeal2017-007172
Application 13/124,379
Technology Center 2800
CASHION, Administrative Patent Judge, dissenting-in-part and concurring-
in-part.
I concur with the reversal of the appealed rejection of claims 1, 7, 8,
11, 25-29, and 32-39 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement for the reasons given above.
However, I respectfully dissent from the decision of my colleagues
affirming the rejections of claims 1, 7, 8, 11, 25-29, and 32-39 under 35
U.S.C. § 103(a) (Rejections 2-8). In my opinion, Appellant has identified a
reversible error in the Examiner's finding that Ohta teaches directly coupling
an LED to a frame as required by the subject matter of independent claim 1.
Therefore, I would reverse the Examiner's prior art rejections. My
reasoning follows.
Claim 1 is directed to a display device having a "light source
compris[ing] a light-emitting diode (LED), and the LED is directly coupled
to the frame by an adhesive."
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Application 13/124,379
There is no dispute that Ohta discloses an LED unit 20 directly
coupled to a frame 14 by an adhesive. Appeal Br. 10; Ans. 3; Ohta Figure 2,
,i 36. Specifically, Ohta discloses LED unit 20 as comprising a board 21 and
LED 22. Ohta Figure 2, ,i 36. Ohta also discloses that board 21 of LED unit
20 is directly coupled to frame 14. Id. The Examiner finds Ohta's noted
disclosure meets the disputed claim limitation because "the LED unit of
Ohta et al. corresponds to the LED of the instant application." Ans. 3.
Appellant argues that Ohta does not teach or suggest an LED directly
coupled to the frame by an adhesive, as claimed. Appeal Br. 10. Appellant
contends that Ohta instead teaches fixing the board 21 of the LED unit 20,
and not the LED 22, directly to the frame 14 with an adhesive. Appeal Br.
10; Ohta iJ 36.
I agree with Appellant that the Examiner has not met the burden to
establish a prima facie case of obviousness.
The dispositive issue for this rejection is whether the claimed
language "LED is directly coupled to the frame by an adhesive"
encompasses Ohta's direct coupling of an LED 20 to a frame 14. Thus, the
review of this ground of rejection of the appealed claims necessarily entails
the interpretation of the scope of the appealed claims, giving the broadest
reasonable interpretation to the terms thereof consistent with the written
description provided in Appellant's Specification as it would be interpreted
by one of ordinary skill in this art. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). Terms in the appealed claims must be given their broadest
reasonable interpretation including the ordinary meaning unless another
meaning is intended by Appellant as established in the written description of
their Specification. See, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir.
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Application 13/124,379
1989). When the Specification does not contain an express definition, a
reasonable, supported interpretation of the appealed claims that differs from
that urged by applicants can be used to determine the patentability of the
claims. Morris, 127 F.3d at 1055-56 ("Absent an express definition in their
specification, the fact that appellants can point to definitions or usages that
conform to their interpretation does not make the PTO's definition
unreasonable when the PTO can point to other sources that support its
interpretation."). Indeed, "[i]t is the applicants' burden to precisely define
the invention, not the PTO's. See 35 U.S.C. § 112 ,-J 2 [statute omitted]."
Morris, 127 F.3d at 1055-56.
The Specification discloses that placing a light source in direct contact
with the frame by way of an adhesive improves advantageously the heat
transfer between the back-lighting light source and the frame. Spec. ,-J 8.
The Specification also discloses that the light source is a light-emitting diode
(LED) that is connected to a flexible printed circuit. Id. ,-i 9. In other words,
the Specification distinguishes between a light source (LED) and a unit
comprising an LED and a support (akin to Ohta's LED unit 20). This
description, together with the description of the Application's Figure 2 (id.
,-J 27), would have reasonably led one skilled in the art to interpret the
disputed language of claim 1 as requiring the LED (light source) to be
directly coupled to the frame with an adhesive.
In view of this interpretation, I agree with Appellant that the Examiner
has not explained adequately why Ohta' s LED unit 20 is considered to
correspond to the claimed LED. Reply Br. 4. The Examiner has also not
directed us to any portion of Ohta that teaches or suggests coupling an LED
directly to a frame.
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Based on this, I would also not sustain the Examiner's prior art
rejections.
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