Ex Parte Harris et al

Patent Trial and Appeal Board

May 31, 2016

11949316 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111949,316 12/03/2007
26245 7590 06/02/2016
E INK CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
1000 Technology Park Drive
Billerica, MA 01821-4165
FIRST NAMED INVENTOR
George G. Harris
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.
H-479 4542
EXAMINER
SOTO LOPEZ, JOSE R
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
IP@eink.com
dcole@eink.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE G. HARRIS, RICHARD J. PAOLINI JR., THOMAS H.
WHITESIDES, MICHAEL D. MCCREARY, and CHARLES HOWIE
HONEYMAN
Appeal2014--001292
Application 11/949,316
Technology Center 2600
Before KRISTEN L. DROESCH, DAVID M. KOHUT, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
KOHUT, 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 and 3-9. 1' 2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the Examiner's rejection of these claims.
1 Our decision makes reference to Appellants' Appeal Brief ("App. Br.,"
filed April 5, 2013), the Examiner's Answer ("Ans.," mailed August 16,
2013) and Final Office Action ("Final Act.," mailed May 3, 2012).
2 Claims 2 and 10-17 were cancelled in an Amendment filed February 29,
2012.
Appeal2014-001292
Application 11/949,316
fNVENTION
Appellants' disclosed invention consists of a display and a method for
driving electrophoretic displays using dielectrophoretic forces by switching
particle based electrophoretic displays between various optical states. Spec.
ii 8.
An understanding of the invention can be derived from a
reading of exemplary claim 1, which is reproduced below:
1. A method for operating a dielectrophoretic display,
the method comprising:
providing a dielectrophoretic medium comprising a fluid
and a plurality of at least one type of particle within the fluid;
applying to the medium an electric field having a first
frequency, thereby causing the particles to undergo
electrophoretic motion and producing a first optical state;
applying to the medium electric fields having multiple
second frequencies higher than the first frequency, thereby
causing the particles to undergo dielectrophoretic motion and
applying to the medium an electric field having a third
frequency higher than the second frequencies, thereby causing
the particles to undergo dielectrophoretic motion and producing
a second optical state different from the first optical state,
the multiple second frequencies differing from each other
such that within the transition range (as defined herein) no
frequency step between successive applied electric fields
exceeds about 10 per cent of the total frequency difference
between the first and third frequencies.
App. Br. 14.
REFERENCES
The Examiner relies on the following prior art:
Shannon et al.
Becker et al.
US 2003/0070929 Al
US 2004/0011651 Al
2
April 17, 2003
Jan.22,2004
Appeal2014-001292
Application 11/949,316
REJECTION AT ISSUE
Claims 1 and 3-9 stand rejected under U.S.C. § 103(a) as being
unpatentable over the combination of Shannon and Becker. Final Act. 6-12.
ISSUES
Did the Examiner err in finding that the combination of Shannon and
Becker teaches or suggests "the multiple second frequencies differing from
each other such that within the transition range (as defined herein) no
frequency step between successive applied electric fields exceeds about 10
per cent of the total frequency difference between the first and third
frequencies," as recited in claims 1 and 8?
Did the Examiner err in determining it would have been obvious to
combine Shannon and Becker?
ANALYSIS
Appellants argue that Shannon does not teach "multiple second
frequencies ... the multiple second frequencies differing from each other
such that within the transition range (as defined herein) no frequency step
between successive applied electric fields exceeds about 10 per cent [sic] of
the total frequency difference between the first and third frequencies," as
recited in claims 1 and 8. 3 App. Br. 10-12. We disagree with Appellants
for the reasons indicated below.
3 While Appellants recite the entire limitation (App. Br. 10-11 ), we note that
Appellants neither specifically address the 10 percent limitation nor indicate
whether the Examiner's findings were wrong with respect to the 10 percent
limitation.
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Appeal2014-001292
Application 11/949,316
First, Appellants recite the disputed claim limitation, indicated above,
and assert that the limitation is not taught by the Shannon reference. App.
10-11. As such, Appellants' statements are considered to be nothing more
than general allegations of patentability and are not considered separate
patentability arguments. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(vii) ("A statement
Appeal which merely points out what a claim recites will not be considered
an argument for separate patentability of the claim."); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (" [T]he Board reasonably interpreted Rule
41.3 7 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art."). Additionally, the Shannon
reference was not cited by the Examiner to teach the disputed limitation.
Second, Appellants also argue that Becker does not teach the disputed
limitation recited above. App. Br. 12. Appellants specifically contend that
Figure 6e and paragraph 141 of Becker, cited by the Examiner, teaches a
constant second frequency and a variation in the third frequency, whereas
the claims require variations in the multiple second frequencies. App. Br.
12.
The Examiner indicates that the citation to paragraph 141 of Becker
was a typographical error that was clarified as paragraph 144 in the Final
Rejection. Ans. 11-12. In reference to paragraph 144, the Examiner finds
that Becker teaches a middle amplitude waveform that has a frequency
dependent upon time. Ans. 11. We agree with the Examiner's finding
because Becker teaches the middle frequency changes over time and because
Appellants have not provided sufficient evidence to show that the
Examiner's finding is in error.
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Appeal2014-001292
Application 11/949,316
Lastly, Appellants contend that the Examiner erred in combining
Shannon and Becker. App. Br. 12. Specifically, Appellants contend that
"there is no reason why a skilled worker would apply the frequency
variation of Becker in the Shannon display, which is a conventional
dielectrophoretic display dependent upon changing particle position to
change optical states; more specifically, there is nothing in Becker to suggest
that this frequency variation would produce any useful results whatsoever in
the Shannon display." App. Br. 12.
However, Appellants have not provided sufficient evidence to
demonstrate that one of ordinary skill in the art would not have made the
combination. Additionally, Appellants have not specifically addressed why
the Examiner's stated reasoning for the combination of the references is in
error. The Examiner determined that it would have been obvious to one of
ordinary skill in the art to adjust the frequencies of the applied waveforms in
the Shannon display in the manner taught by Becker for the purpose of
providing for better separation performance. Ans. 12. We find that the
Examiner's reasoning to combine the teachings of the references is
reasonable and, in addition, note that the combination is nothing more than a
combination of familiar elements according to known methods that yield
predictable results. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
Therefore, for all the reasons stated supra, we sustain the Examiner's
rejection of independent claims 1 and 8 and dependent claims 3-7 and 9 that
are not argued separately.
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Appeal2014-001292
Application 11/949,316
CONCLUSION
The Examiner did not err in finding that Becker teaches or suggests
"the multiple second frequencies differing from each other such that within
the transition range (as defined herein) no frequency step between
successive applied electric fields exceeds about 10 per cent of the total
frequency difference between the first and third frequencies," as recited in
claims 1 and 8.
The Examiner did not err in determining it would have been obvious
to combine Shannon and Becker.
SUMMARY
The Examiner's decision to reject claims 1 and 3-9 is affirmed.
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).
AFFIRMED
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