Ex Parte Hamilton

Board of Patent Appeals and Interferences

Apr 14, 2006

09683531 (B.P.A.I. Apr. 14, 2006)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROBERT S. HAMILTON
_______________

Appeal No. 2006-0785
Application No. 09/683,531
_______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH, and RUGGIERO, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-18, which constitute all the
claims pending in this application.
The disclosed invention pertains to an addressable bistable
display device which is usable as a label for recording media.
Representative claim 1 is reproduced as follows:
1. An addressable display useable as a label for recording
media, comprising:
a bistable display device usable as the label, the label
including:
an energy source that generates an operating signal;
an embedded optical data link for bi-directional
communication with a recording/play device; and
Appeal No. 2006-0785
Application No. 09/683,531
2
a microcontroller that receives the operating signal
generated by the energy source and a signal from the optical data
link and provides a control signal to the bistable display device
so that an image is generated on the label of the recording
media, wherein the label is automatically updated by the
recording/play device.
The examiner relies on the following references:
Bloch et al. (Bloch) 5,745,102 Apr. 28, 1998
Albert et al. (Albert) 6,118,426 Sep. 12, 2000
Claims 1-18 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Bloch in view of
Albert.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the examiner and the evidence of
obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
Appeal No. 2006-0785
Application No. 09/683,531
3
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
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 is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227
USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
Appeal No. 2006-0785
Application No. 09/683,531
4
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 41.37(c)(1)(vii)(2004)].
With respect to independent claims 1, 9, 10 and 18, the
examiner essentially finds that Bloch teaches the claimed
invention except for teaching that the display device is a
bistable display device. The examiner cites Albert as teaching a
Appeal No. 2006-0785
Application No. 09/683,531
5
bistable display device. The examiner finds that it would have
been obvious to the artisan to modify Bloch’s display label to be
a bistable display as taught by Albert [answer, pages 3-8].
Appellant argues that the claimed invention is directed to a
label having certain claimed features whereas Bloch teaches these
features incorporated directly on or in a housing of a floppy
disk. Appellant asserts that Bloch does not disclose, suggest or
contemplate a label of any type having the claimed features.
Appellant also argues that Albert fails to disclose or suggest an
addressable display usable as a label for recordable media and
having the claimed features [brief, pages 9-12].
The examiner responds that Bloch and Albert both teach a
display that is usable as a label. The examiner reiterates that
Bloch teaches all the features related to the claimed label and
that Albert teaches the advantages of a bistable display device
[answer, pages 8-13].
Appellant responds that Bloch teaches a specially-designed
floppy disk housing rather than the display label as claimed.
With respect to independent claims 9 and 18, appellant
additionally argues for the first time that Bloch fails to
disclose the claimed user configurable pattern electrodes.
Appeal No. 2006-0785
Application No. 09/683,531
6
Appellant also argues that there is no motivation to combine the
teachings of Bloch and Albert because Albert does not teach an
addressable display having the claimed features and because
Albert relates to a different problem from the claimed invention
[reply brief, pages 2-6].
With respect to independent claims 1 and 10, we will sustain
the examiner’s rejection. We are not persuaded by appellant’s
argument that Bloch fails to teach or suggest a display device
used as a label. Even though neither the examiner nor appellant
has specifically defined what is meant by the term “label,” it is
clear that they disagree on whether the display taught by Bloch
can be considered to be a label within the meaning of the claims.
Bloch indicates that his invention is intended to overcome the
shortcomings of conventional adhesive labels [column 1, lines 57-
58]. Thus, the display disclosed by Bloch replaces the
conventional adhesive label. We agree with the examiner that the
display of Bloch can be called a label within the broadest
reasonable interpretation of that term because the display
indicates the contents of the disk to which it is attached. We
also note that Bloch teaches that the disclosed display mechanism
“could be mounted ... on an adhesive-backed device,... and
Appeal No. 2006-0785
Application No. 09/683,531
7
affixed to a conventional data storage device” [column 11, lines
46-50]. Thus, Bloch specifically suggests that the disclosed
display mechanism could be adhesively attached to a floppy disk
in the same manner as conventional adhesive labels. Therefore,
in our view, Bloch specifically teaches an addressable display
used as a label as asserted by the examiner.
With respect to appellant’s argument that Albert fails to
teach an addressable display usable as a label having the
features recited in claims 1 and 10, this argument is
unpersuasive because Bloch teaches the features of the display
recited in claims 1 and 10. Albert is cited only to show the
advantages of a bistable display and provide the motivation for
modifying the display of Bloch to be a bistable display. Albert
teaches that a bistable display consumes no power [column 2, line
22] and can be used in applications where paper is currently the
display medium of choice [column 7, lines 14-16]. Since Bloch’s
display is intended to replace a conventional paper label, and
since Albert teaches that replacing paper labels with a bistable
display conserves power, we agree with the examiner that the
artisan would have been motivated to modify the Bloch display to
use bistable elements so that power would be conserved as taught
Appeal No. 2006-0785
Application No. 09/683,531
8
by Albert. Appellant’s arguments notwithstanding, we agree with
the examiner that the teachings of Albert are combinable with the
teachings of Bloch for the limited purpose of making the display
label in Bloch a bistable display.
With respect to independent claims 9 and 18, we will sustain
the examiner’s rejection. These claims differ from claims 1 and
10 in the recitation of “user configurable pattern electrodes”
and “configuring a set of electrodes.” Appellant asserts that
configuration of the electrodes in Bloch is transparent to the
user so that they are not user configurable. The examiner
asserts that electrodes 316 in Bloch are shaped to display all
numbers and letters. As with the term “label” discussed above,
it is not clear that the examiner and appellant have interpreted
“user configurable pattern electrodes” in the same manner. We
note that Bloch teaches that the display can use seven segment
devices, 12 segment devices or 5x7 dot matrix elements [column 4,
lines 40-48]. Each of these display configurations would have a
different pattern of electrodes. Thus, we are of the view that
the user selection of the type of display in Bloch, each of which
has a different pattern of electrodes, represents user
configurable pattern electrodes within the broadest reasonable
Appeal No. 2006-0785
Application No. 09/683,531
9
interpretation of the claimed invention. Although the examiner
appears to be relying on the fact that the display elements in
Bloch can display different characters, we do not think it is
necessary to determine whether the different characters in Bloch
meet the recitation of user configurable pattern electrodes since
Bloch specifically teaches that different patterns for displaying
characters can be used.
With respect to the dependent claims, we sustain the
examiner’s rejection of each of the dependent claims because
appellant has offered no arguments with respect to any of these
claims. Therefore, we have sustained the examiner’s rejection
with respect to each of the claims on appeal. Accordingly, the
decision of the examiner rejecting claims 1-18 is affirmed.
Appeal No. 2006-0785
Application No. 09/683,531
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JS/kis
Appeal No. 2006-0785
Application No. 09/683,531
11
OLIFF & BERRIDGE, P.L.C.
P. O. BOX 19928
ALEXANDRIA, VA 22320