Ex Parte Feng et al

Patent Trial and Appeal Board

Feb 3, 2016

12462300 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/462,300 0713012009 Xiao-fan Feng
55648 7590 02/04/2016
CHERNOFF VILHAUER MCCLUNG & STENZEL, LLP
601 SW Second Ave., Suite 1600
PORTLAND, OR 97204
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.
SLA2464.l (7146.0416) 6002
EXAMINER
SIM, MATTHEW Y
ART UNIT PAPER NUMBER
2621
MAILDATE DELIVERY MODE
02/04/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte XIAO-FAN FENG and KOHJI FUJIWARA
Appeal2014-000150
Application 12/462,300
Technology Center 2600
Before DANIEL N. FISHMAN, ROBERT L. KINDER, and
JESSICA C. KAISER, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing under 37 C.F.R. § 41.52 of our Decision
mailed November 9, 2015 ("Decision"), in which we affirmed the
Examiner's decision rejecting all claims (claims 1---6 and 8-14). Appellants
timely filed the Request for Rehearing ("Request") on January 11, 2016.
ANALYSIS
Our rules require a "request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked by the
Board." 37 C.F.R. § 41.52(a)(l). Our rules further state a request for
rehearing cannot contain any new arguments or evidence not presented in
the Appeal or Reply Briefs. Id. In reviewing Appellants' Request, we have
not found any persuasive contentions identifying points misapprehended or
Appeal2014-000150
Application 12/462,300
overlooked. Instead, Appellants appear to simply disagree with our findings
and ultimate conclusion. Regardless, we have reviewed Appellants'
arguments as discussed below and we are not persuaded that the Decision
misapprehended or overlooked any points.
"PTAB Misidentified the Issues Raised on Appeal"
Initially, Appellants contend our Decision is in error because we
incorrectly characterized the dispositive issue of Appellants' arguments.
Request 2-8. Specifically, Appellants argue
[T]he applicant never argued that the combination of Muthu
and Edelbrock failed to teach limitation (a). The applicant
conceded this, as Edelbrock clearly discloses this limitation.
Applicant's appeal brief and reply brief were exclusively
devoted to attacking the Examiner's assertions that the cited
prior art disclosed limitations (b) and (c) - not (a) and (b ).
Request 2. Appellants similarly argue "The Examiner's final rejection was
premised on the express factual finding that Muthu alone actually disclosed
limitation (b) in its entirety."
We are not persuaded that our Decision misapprehended or
overlooked ("misidentified") Appellants' argument. The Examiner's
rejection and further explanation in the Answer makes clear that Muthu
teaches all steps of claim 1 (steps (a) through ( c) - including "sensing a
light output" using a sensor) but fails to disclose use of an external sensor to
sense the light at the outer surface of a display. Final Act. 9-10; Ans. 3-5.
In other words, Muthu teaches sensing light from a sensor (step (a)), using
that sensed value to determine a mura characteristic (step (b)), and "jointly
modifying . . . and reducing said mura characteristic" of the display (step
( c)) as claimed. However, Muthu fails to use a light sensor external to the
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outer surface of the display in performing those steps. Final Act. 9-10.
Edelbrock, in combination with Muthu, discloses that it is known to use a
light sensor at the outer surface of the display and, thus, the Examiner finds
that the combination teaches or suggests the claimed features. Final Act. 10.
Our Decision adopted the findings of the Examiner. Decision 4 ("We agree
with, and adopt as our own, the Examiner's findings and reasons regarding
obviousness as set forth in the Examiner's rejections (Final Act. 8-15) and as
set forth by the Examiner in the Examiner's Answer (Ans. 3---6).")
Therefore, our Decision addressed Appellants' arguments regarding all
recited steps of claim 1.
"The Board Adopted Contradictory Findings of Fact"
Appellants suggest our Decision adopted inconsistent positions by the
Examiner. Specifically, Appellants argue the Examiner's rejection finds
Muthu teaches all elements of claim 1 "relying solely upon Edelbrock for its
disclosure of 'sensing a light output from said outer surface."' Request 8.
Appellants then contend "[i]n the Examiner's Answer, however, the
Examiner indicates that 'Muthu discloses all the limitations of claim 1
except 'determining a mura characteristic by sensing light output from an
outer surface of a display' - i.e. limitation (b ). Answer at p. 4. These findings
cannot both be true." Id.
We perceive no inconsistencies in the Examiner's findings. As
discussed supra, we adopted the Examiner's findings that Muthu teaches all
features of claim 1 except use of a sensor that senses light from the outer
surface of a display, which the Examiner finds is taught by Edelbrock. The
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Application 12/462,300
Examiner's findings in the Final Otlice Action (Final Act. 9-10) and in the
Answer (Ans. 3-5) are consistent.
"The Board Took Applicant's Argument Out of Context"
As noted above, we have not found particular statements identifying
points misapprehended or overlooked related to this alleged error. Rather, it
appears Appellants merely suggest we erred by not agreeing with
Appellants' arguments that Muthu could not function if an external sensor
replaced its internal sensors:
The applicant argued that such a substitution would improperly
change the principle of operation of Muthu, which should be
deemed an irrefutable observation given that Muthu' s feedback
controller requires color information received in the immediate
proximity to the LEDs, and uses photodiodes mounted
integrally with the LED substrate - two features that cannot be
obtained by a distant luminance sensor outside the glass of a
flat panel screen. Even moving Muthu's filtered colorimetric
sensors from the LED substrate to the outside of a display (a
combination not remotely suggested by either the Examiner or
the Board), where those sensors are intended to each provide
feedback for an individual LED subpixel would by definition
change the principle of operation of Muthu as simple geometry
dictates that at that distance, light from adjacent pixels would
intermingle before reaching a photodiode outside the glass of a
flat panel display.
Request 9.
Initially, we note the Examiner's rejection specifically finds "it would
have been obvious to a person having ordinary skill in the art to incorporate
the idea of sensing the light output from an outer surface of a flat panel
display as taught by Edelbrock into . . . [Muthu]." Final Act. 10 (emphasis
added). Thus, the Examiner did not propose any specific substitution or
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Application 12/462,300
addition of Edelbrock' s external light sensor into the circuits of Muthu.
Instead, the Examiner finds it would be obvious to the ordinary skilled
artisan to use external sensors in Muthu as suggested by Edelbrock.
Furthermore, Appellants' "irrefutable observation" is not supported
by persuasive evidence but rather merely consists of conclusory attorney
arguments and statements. For example, Appellants argue Muthu requires
sensing in the "immediate proximity" of the LED and the combination with
Edelbrock, where Muthu' s "sensors are intended to each provide feedback
for an individual LED subpixel, would by definition change the principle of
operation of Muthu as simple geometry dictates that at that distance."
Request 9. However, Appellants provide no persuasive evidence that Muthu
requires any particular maximum distance or that Edelbrock necessarily
exceeds that distance. In our Decision at page 6, we reminded Appellants
that mere attorney arguments and conclusory statements unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). Attorney argument is not evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Such conclusory statements
cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977). Appellants' arguments in the Appeal
Brief provided no persuasive evidence to rebut the Examiner's findings that
the combination of Muthu and Edelbrock teaches or suggests the claimed
features.
Additionally, as noted in our Decision at page 7, bodily incorporation
ofEdelbrock's external sensor with Muthu's feedback control of individual
LEDs is not the standard for obviousness but, instead, the standard is what
would have been suggested to the ordinary skilled artisan. See, e.g., In re
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Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants' conclusory remarks
contend, in essence, that Edelbrock' s external sensor would be useless in
Muthu' s structure or would change Muthu' s principle of operation and, thus,
Appellants' arguments presume the physical, bodily incorporation of
Edelbrock's sensor into the structures of Muthu. No such incorporation of
structures is required to determine obviousness.
"The Board Misapplied Federal Case Law"
Appellants argue our Decision improperly shifts a burden to the
Appellants to prove non-obviousness. Request 10. We disagree with
Appellants' characterization of our Decision. In patent examination, the
Examiner bears the initial burden of showing a prima facie case of
obviousness.
[A] ll that is required of the [Patent] [ 0] ffice to meet its prima
facie burden of production is to set forth the statutory basis of
the rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of [35 U.S.C.] § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). The burden to rebut this
prima facie case, thereafter, shifts to Appellants. Id. at 1362. The Examiner
met this burden of presenting a prima facie case of obviousness and our
Decision makes clear that Appellants' arguments are insufficient to persuade
us of error. Decision 8.
CONCLUSION
We have considered all arguments in Appellants' Request for
Rehearing, but they do not persuade us that we misapprehended or
overlooked any points in reaching our decision.
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DECISION
We have granted Appellants' Request to the extent that we have
reconsidered our Decision affirming the Examiner's decision rejecting all
claims (claims 1---6 and 8-14). Our Decision is maintained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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