Ex Parte Garner et al

Patent Trial and Appeal Board

Sep 6, 2013

11255622 (P.T.A.B. Sep. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GRANT K. GARNER and
MASOUD K. ZAVAREHI1
____________________

Appeal 2011-003169
Application 11/255,622
Technology Center 2600
____________________

Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-32, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Real Party in Interest is Hewlett-Packard Development Company,
LP. (App. Br. 1.)
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention relates to methods for luminance adjustment in
display systems. Spec. ¶ [0001].
Exemplary Claims
Claims 1, 21, 27, and 29, reproduced below, are exemplary claims
representing various aspects of the invention:
1. A method comprising:
adjusting a luminance value of a first pixel using the
different reflectivities of adjacent screen regions.
21. The method of Claim 1 further comprising
applying a low pass filter to different reflectivities of adjacent
screen regions.
27. An apparatus comprising:
a controller configured to adjust a luminance value of a
first pixel using different reflectivities of adjacent screen
regions.
29. A method comprising:
providing screen regions with different reflectivities; and
a step for blending display brightnesses of pixels
proximate boundaries of adjacent regions.

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Apr. 23, 2010); Reply Brief (“Reply Br.,” filed Sep. 23, 2010); Examiner’s
Answer (“Ans.,” mailed Jul. 23, 2010); Final Office Action (“FOA,” mailed
Dec. 2, 2009); and the original Specification (“Spec.,” filed Oct. 21, 2005).
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Cruz-Uribe US 2004/0012849 A1 Jan. 22, 2004
(hereinafter “Cruz”)
Bathiche US 2006/0289760 A1 Dec. 28, 2006
Rejections on Appeal
1. Claims 1-20 and 24-32 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Cruz. Ans. 3.
2. Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cruz and Bathiche. Ans. 7.
ISSUES AND ANALYSIS
1. Anticipation Rejection of Claims 1-20, 24-26, and 31
Issue 1
Appellants argue (App. Br. 10-15; Reply Br. 2-5) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Cruz is
in error. These contentions present us with the following issue:
Did the Examiner err in finding that Cruz discloses the step of
“adjusting a luminance value of a first pixel using the different reflectivities
of adjacent screen regions,” as recited in method claim 1?
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Analysis
We agree with Appellants’ conclusions with respect to claim 1, and
we disagree with (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
Appellants contend “Cruz-Uribe fails to disclose a method, computer-
readable medium or controller that includes adjusting a LUMINANCE value
of a first pixel using different reflectivities of adjacent screen regions. In
contrast, Cruz-Uribe merely discloses a projection screen having individual
elements 24 for which the reflectivity is adjusted.” App. Br. 10.
The Examiner states that Cruz discloses “display controller 28
configured to alter the reflectivity of display surface 14 in coordination with
the image displayed thereon, by selectively altering the reflectivity of
individual display elements 22 to correspond with the content of the
projected image incident upon that individual pixel element.” Ans. 9 (citing
Cruz ¶¶ [0021], [0023], [0025], and [0026]).
We agree that Cruz provides the above-cited disclosure as identified
by the Examiner, but we disagree with the Examiner (Ans. 4 and 9-10) that
this teaching anticipates the limitation in dispute, i.e., “adjusting a luminance
value of a first pixel using the different reflectivities of adjacent screen
regions.” Claim 1 (emphasis added). Although not dispositive to our
Decision, we also agree with the Examiner (Ans. 10) that luminance and
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reflectivity, while not the same optical concept, are related concepts,
particularly in the context of Appellants’ disclosed and claimed invention, as
well as Cruz’s disclosure. Cruz ¶ [0021].
However, we have reviewed Cruz and find no disclosure, teaching, or
suggestion related to using the different reflectivities of adjacent screen
regions to adjust a luminance value of an individual (first) pixel. As cited by
the Examiner (Ans. 10), Cruz also teaches that the reflectivity of a
surrounding bias region may be fixed at time of manufacture or adjusted to
one or more constant values (see Cruz ¶ [0019]). However, we find no
disclosure in Cruz that this bias region or any adjacent screen region is used
in any way to adjust a luminance value of an individual pixel.
Accordingly, Appellants have provided sufficient evidence or
argument to persuade us of reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we cannot sustain the Examiner’s anticipation rejection of independent
claim 1.
For essentially the same reasons as discussed above with respect to
independent claim 1, we reverse the Examiner's rejection of independent
claim 25, which recites the disputed limitation in commensurate form. For
the same reasons, we also reverse the rejections of claims 2-20, 24, 26, and
31 that variously depend therefrom.
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2. Anticipation Rejection of Claims 29, 30, and 32
Issue 2
Appellants argue (App. Br. 18; Reply Br. 7-8) that the Examiner’s
rejection of claim 29 under 35 U.S.C. § 102(b) as being anticipated by Cruz
is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Cruz discloses the step of
“blending display brightnesses of pixels proximate boundaries of adjacent
regions,” as recited in method claim 29?
Analysis
We agree with Appellants’ conclusions with respect to claim 29, and
we disagree with the findings and reasons set forth by the Examiner in the
action from which this appeal is taken. We highlight and address specific
findings and arguments regarding claim 29 for emphasis as follows.
Appellants contend,
Cruz-Uribe fails to disclose a method in which display
brightness is a [sic] pixels are blended adjacent boundaries of
adjacent screen regions . . . Cruz-Uribe merely discloses
adjusting the reflectivity of screen regions, not display
brightness is [sic] a pixels . . . [and] Cruz-Uribe fails to disclose
anything about ‘blending’ such display brightnesses.
App. Br. 18.
In the Answer, the Examiner does not specifically respond to
Appellants’ specific contentions regarding claim 29, but instead merely
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states that claims 29, 30, and 32 are rejected on the same basis as claim 25.
Ans. 4.
We find that the Examiner has not met his burden in establishing a
prima facie case for anticipation. Not only has the Examiner failed to
respond to Appellants’ specific contentions regarding claim 29, the
Examiner ignores the fact that independent claim 29 recites different subject
matter than independent claim 25, i.e., claim 29 recites, inter alia, “blending
display brightnesses of pixels proximate boundaries of adjacent regions.”
We find no disclosure, teaching, or suggestion in Cruz of blending display
brightnesses of pixels in adjacent regions, as recited by claim 29.
Accordingly, Appellants have provided sufficient evidence or
argument to persuade us of reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we cannot sustain the Examiner’s anticipation rejection of independent
claim 29.
For the same reasons, we also reverse the rejections of claims 30 and
32 that depend from claim 29.
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3. Anticipation Rejection of Claims 27-28
Issue 3
Appellants argue3 (App. Br. 10-11; Reply Br. 2-4) that the Examiner’s
rejection of claim 27 under 35 U.S.C. § 102(b) as being anticipated by Cruz
is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Cruz discloses the limitation of “a
controller configured to adjust a luminance value of a first pixel using
different reflectivities of adjacent screen regions,” as recited in claim 27?
Analysis
We disagree with Appellants’ conclusions with respect to claim 27,
and we agree with and adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and
(2) the reasons and rebuttals set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ arguments. However, we highlight and
address specific findings and arguments regarding claim 27 for emphasis as
follows.
Appellants contend “Cruz-Uribe fails to disclose a . . . controller that
includes adjusting a LUMINANCE value of a first pixel using different
reflectivities of adjacent screen regions. In contrast, Cruz-Uribe merely
discloses a projection screen having individual elements 24 for which the
reflectivity is adjusted.” App. Br. 10.

3 Appellants’ arguments against the rejection of independent claim 27 is
grouped in a general argument concerning the patentability of independent
claims 1, 25, and 27.
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The Examiner finds that Cruz discloses a controller configured to
adjust a luminance value of a first pixel. Ans. 4 (citing Cruz ¶¶ [0018],
[0021], [0024]; and Fig. 3, element 28).
We first note that the first and only limitation of claim 27 recites “a
controller configured to adjust a luminance value of a first pixel using
different reflectivities of adjacent screen regions.” The claim does not
positively recite that the controller adjusts the luminance value of a first
pixel. Rather, the claim calls for only a controller configured to (i.e.,
capable of) making such adjustments to a pixel’s luminance value, such that
we do not give any patentable weight to this limitation of claim 27.
This limitation in dispute in independent claim 27 merely expresses an
intended use of the recited “controller.” Under a broad but reasonable
interpretation of claim 27, we conclude that the disputed limitation of
“adjust[ing] a luminance value of a first pixel using different reflectivities of
adjacent screen regions” is not positively recited as actually occurring, given
that the claim merely requires that the “controller is configured to adjust a
luminance value of a first pixel . . . .” Although “[s]uch statements often . . .
appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987), a statement of intended use or purpose can appear elsewhere in a
claim. Id. “An intended use or purpose usually will not limit the scope of
the claim because such statements usually do no more than define a context
in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Furthermore, in the context of anticipation of a claimed apparatus, our
reviewing court has held that the absence of disclosure relating to function
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does not defeat a finding of anticipation if all the claimed structural
limitations are found in the reference. In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997). In this case, claim 27 merely recites the structure as being
“a controller,” and the cited art clearly discloses a controller. See Cruz
Fig. 3, display controller 28, and ¶ [0023].
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s anticipation rejection of independent claim 27.
As Appellants have not provided separate arguments with respect to
dependent claim 28, we similarly sustain the Examiner’s rejection of
claim 28 under 35 U.S.C. § 102(b).
4. Unpatentability Rejection of Claim 21-23
In addition to depending from claim 1 for which the anticipation
rejection was reversed, we provide the following additional analysis with
respect to the unpatentability rejection of claim 21:
Issue 4
Appellants argue (App. Br. 19; Reply Br. 8-9) that the Examiner’s
rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Cruz and Bathiche is in error. These contentions present
us with the following issue:
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Did the Examiner err in finding that the combination of Cruz and
Bathiche teaches or suggests the limitation of “applying a low pass filter to
different reflectivities of adjacent screen regions,” as recited in claim 21?
Analysis
Appellants contend “[n]either Cruz-Uribe nor Bathiche, alone or in
combination, disclose applying a low pass filter to different reflectivities of
adjacent screen regions.” App. Br. 19. Appellants further contend,
Bathiche says nothing about applying a low pass filter to
different reflectivities of adjacent screen regions. In contrast,
Paragraph [0056] a [sic] Bathiche merely discloses the use of a
bandpass mirror 382 which is used as a low pass filter that
includes red light. The only thing that Paragraph [0056] of
Bathiche has in common with the actual claim limitations is the
words “low pass filter”.
App. Br. 19 (citing Bathiche ¶ [0056]).
In response, the Examiner asserts,
Paragraph [0056] of Bathiche shows that the low pass filter is
configured to pass certain wavebands of visible light. It would
be obvious to one of an ordinary skill in the art at the time the
invention was made to put Bathiche low pass filter to every
screen regions of Cruz’s projection screen. This response is
valuable for claims 22 and 23 of Appellant’s arguments . . . .
Ans. 11 (citing Bathiche ¶ [0056]).
We agree with Appellants’ contentions, as discussed below. Bathiche
is directed to a system for selectively redirecting and/or filtering spectral
components of a light source used to generate images in which the same
light source and lensing device can be used both to project images on the
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display surface, and to evenly distribute IR light to detect potential user
inputs. Bathiche ¶ [0006]. We agree with Appellants, since bandpass mirror
382 is used to pass certain wavebands of light, while redirecting other
wavebands of light. Even when bandpass mirror 382 is configured as a low
pass filter which passes red light (id.), Bathiche does not teach or suggest
“applying a low pass filter to different reflectivities of adjacent screen
regions.” Instead, Bathiche teaches applying the output of bandpass mirror
382 to first spatial light modulator 388a, and then to
collimator 390 to produce a modulated visible light 392.
Modulated visible light 392 passes through a hot mirror 395 to
reach a lensing device 397. Lensing device 397 focuses
modulated visible light 392 to project a focused visible light
398 on display surface 64a.
Bathiche ¶ [0057].
Accordingly, Appellants have provided sufficient evidence or
argument to persuade us of reversible error in the Examiner’s
characterization of the cited art and related claim construction. Since claim
21 depends from claim 1, for which the anticipation rejection has been
reversed, as well as the above-cited alternative reasoning, we cannot sustain
the Examiner’s obviousness rejection of dependent claim 21.
For essentially the same reasons argued by Appellants (App.
Br. 20-21), as well as their dependence on claim 1, we reverse the
Examiner's rejection of dependent claims 22 and 23, which variously recite
applying a low pass filter to a number of pixels, in a similar fashion as
recited in dependent claim 21.
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CONCLUSIONS
(1) The Examiner erred with respect to the anticipation rejection of
claims 1-20, 24-26, and 29-32 under 35 U.S.C. § 102(b), and the rejection is
not sustained.
(2) The Examiner did not err with respect to the anticipation
rejection of claims 27-28 under 35 U.S.C. § 102(b), and the rejection is
sustained.
(3) The Examiner erred with respect to the unpatentability rejection
of claims 21-23 under 35 U.S.C. § 103(a), and the rejection is not sustained.
DECISION
The decision of the Examiner to reject claims 27 and 28 is affirmed,
and the decision of the Examiner to reject claims 1-26 and 29-32 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED-IN-PART

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