Ex Parte Hsu et al

Patent Trial and Appeal Board

Jun 4, 2013

11217457 (P.T.A.B. Jun. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/217,457 09/02/2005 Pin-Hung Hsu 4698-006 9036
22429 7590 06/05/2013
LOWE HAUPTMAN HAM & BERNER, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
NGUYEN, LAUREN
ART UNIT PAPER NUMBER
2871
MAIL DATE DELIVERY MODE
06/05/2013 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 PIN-HUNG HSU and I-LUNG YANG
____________________

Appeal 2011-0008701
Application 11/217,457
Technology Center 2800
____________________

Before JEAN R. HOMERE, JEREMY J. CURCURI, and DAVID C.
McKONE Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is CHI MEI OPTOELECTRONICS. (App Br. 3.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-17 and 19-30. Claim 18 has been cancelled.
(App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a liquid crystal display (LCD) wherein an outside
frame structure and a backlight unit (BLU) thereof are securely joined to
showcase a display unit contained therein. (Spec., [0001].) In particular, the
outside frame (250) includes at least one sidewall containing at least an
aperture (251) through which a bump (220) located on the housing (235) of
the BLU (230) is projected to thereby buckle the housing to the outside
frame, as well as to support an inverter (210) mounted thereon. (Id.,
[0016].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A frame structure for a display, said structure
comprising:
an outside frame having
a plurality of side walls defining a central opening,
and
at least an aperture different from said central
opening and extending through one of said side walls; and
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an inside housing having at least a bump for carrying a
component of the display, the bump projected outwardly from
an edge of the inside housing and corresponding to the aperture;
wherein the inside housing is disposed in the outside
frame through the central opening, the bump penetrates through
the aperture to be exposed from the outside frame, and the
inside housing is whereby buckled into the outside frame.

Prior Art Relied Upon
Won US 2002/0195923 A1 Dec. 26, 2002
Lai US 2004/0179150 A1 Sept. 16, 2004
Yu US 2005/0174526 A1 Aug. 11, 2005

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 7-10, 16, 17, 19, and 25-30 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Lai.
2. Claims 2, 11, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Lai and Yu.
3. Claims 3-6, 12-15, and 21-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Lai, Yu,
and Won.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 11-20, and the Reply Brief, pages 5-12.

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Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding that Lai describes an inside housing having a bump thereon that
penetrates through an aperture in the sidewall of an outside frame to be
exposed therefrom, as recited in claim 1?

Appellants argue that Lai does not describe the disputed limitations
emphasized above. (App. Br. 12-15, Reply Br. 6-7.) In particular,
Appellants argue that while Lai appears to disclose, inter alia, engaging
protrusions (A, B) of an inside housing (804) that penetrate corresponding
apertures (a, b) in the sidewall of an outside frame (802), there is no explicit
disclosure that such protrusions extend completely through the apertures to
project beyond the outer side of the frame to be exposed therefrom. (App.
Br. 15, Reply Br. 5-6.) In response, the Examiner finds Lai’s disclosure of
an inside housing having a bump thereon that penetrates through the aperture
of an outside frame of an LCD to thereby buckle the frame to the housing
describes the disputed limitations. (Ans. 9-10.)2

2 Regarding Appellants’ argument that the Examiner’s annotation of Figure
4 of Lai to clearly identify which features thereof correspond to the bump
and the aperture constitutes a new ground of rejection (Reply Br. 5), we note
this is a petitionable matter, which must be brought before the director of the
Examiner’s Technology Center. Nevertheless, we note that Appellants sua
sponte initiated a discussion of such interpretation as a possible alternative in
the Appeal Brief (App Br. 15), and further availed themselves of the
opportunity to respond in the Reply Brief to these alleged new findings
made by Examiner in the Answer.
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Based upon our review of the record before us, we find no error with
the Examiner’s finding of anticipation regarding claim 1. We note at the
outset that the claim does not require the bump to penetrate through the
aperture completely in order to be exposed from the outside frame, nor does
it require the bump to project beyond the opposite side of the outside frame.
Instead, the disputed limitations merely recite that the bump penetrates the
aperture to be exposed from the outside to thereby allow the inside housing
to be buckled into the outside frame. We therefore broadly but reasonably
construe the disputed limitations to require the bump to penetrate the
aperture sufficiently to allow the bump to be visible from the aperture, as
well as to permit the outside frame to be buckled to the inside housing.
While Lai does not explicitly indicate that the protrusions (A, B) in
the inside housing (804) penetrate the corresponding apertures (a, b) in the
outside frame, we echo Appellants’ statement (as adopted by the Examiner)
that a person of ordinary skill in the art examining Figure 4 of Lai would
readily understand that the disclosed protrusions do penetrate the
corresponding apertures to allow the outside frame to be buckled to the
inside housing. (App. Br. 12, 15; Ans. 10; Lai [0032].) Consequently, we
find that because the protrusions penetrate the apertures without any
apparent obstruction in the outside frame to securely buckle the frame to the
housing, Lai does describe the disputed limitations as broadly construed
above. It follows that Appellants have failed to show error in the
Examiner’s anticipation rejection of claim 1.
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Regarding the rejection of claims 7-10, 16, 17, 19, and 25-30,
Appellants present similar arguments previously raised for patentability of
claim 1. (App. Br. 11-16, Reply Br. 5-7.) As discussed above, these
arguments are not persuasive. Therefore, Appellants have not shown error in
the Examiner’s rejection of claims 7-10, 16, 17, 19, and 25-30.
Regarding the rejection of claims 2, 11, and 20, Appellants argue,
inter alia, that the combination of Lai and Yu does not teach or suggest a
bump adapted to support thereon on an inverter outside an outside frame and
along a side wall having an aperture. (App. Br. 17-19; Reply Br. 8-11.)
According to Appellants, because Yu discloses that an inverter is provided
on the exposed surface of the bottom of a chassis, the combination of Yu
with Lai would simply result in an inverter board on the underside of the
outside frame, but not on the outside of the outside frame along the sidewall
having the aperture. (Id.) Further, Appellants argue there is simply no
rationale on this record to reposition the inverter from the bottom of the
outside frame to the top thereof, as suggested by the Examiner. (Reply Br. 8-
10.) In response, the Examiner submits that while Yu discloses attaching an
inverter to the underside of an outside frame along the side of an aperture
therein, repositioning the inverter from the underside to the top side of the
frame would only require routine skill in the art. (Ans. 10.) We agree with
the Examiner. The U.S. Supreme Court has held that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). The Court further instructs that:
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[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.

Id. at 418.

Additionally, the Court instructs that:

rejections on obviousness grounds cannot be sustained by mere
conclusory statements. Instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.… [H]owever, the analysis need not
seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in
the art would employ.

Id. (citation omitted).

We find that the ordinarily skilled artisan, being a creative individual
would have been able to fit the teachings of the cited references (including
established knowledge in the art) together like pieces of a puzzle to
predictably result in the disputed limitations. That is, the proffered
modification of the cited references would predictably result in an LCD
system having an inverter on the outside frame thereof to drive a backlight
unit coupled thereto. While it may be necessary for an Examiner to identify
a reason for combining the familiar elements obtained from the prior art in
establishing a prima facie case of obviousness, the identification of such a
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reason is not a sine qua non requirement. So long as the Examiner provides
an articulated reasoning with some rational underpinning to substantiate the
obviousness rejection, such a conclusion is proper. In this case, the
Examiner provides more than just a mere conclusory statement. The
Examiner notes that at the time of the claimed invention, an ordinarily
skilled artisan would have been motivated to reposition Yu’s inverter from
the bottom of the outside frame to the top of Lai’s outside frame joined with
the backlight unit because “such modification would have realized a thinner
display device while transforming an external supply voltage into a driving
voltage for the lamps of the lamp unit.” (Ans. 11.) In our view, such a
statement suffices as an articulated reason with a rational underpinning to
support the cited modification. As noted above, the case law allows the
Examiner to look to the state of the prior art, including the knowledge of the
ordinarily skilled artisan to arrive at such a reason for combining or
modifying the known elements of the prior art. Consequently, the
Examiner’s reliance upon the cited references in order to arrive at an
articulated reason with a rational underpinning to support the proffered
modification is proper.
It therefore follows that Appellants have not shown that the Examiner
erred in finding that the combination of Lai and Yu teaches the disputed
limitations of claim 2 as well as claims 11 and 20 which recite
commensurate limitations.
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Appellants have not provided separate arguments for the 103 rejection
of dependent claims 3-6, 12-15, and 21-24. Consequently, these claims fall
with their respective base claims. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s rejections of claims 1-17 and 19-30 as set
forth above.
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).

AFFIRMED

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