Ex Parte Hunt et al

Patent Trial and Appeal Board

Jan 22, 2014

11314800 (P.T.A.B. Jan. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/314,800 12/21/2005 Alexander Hunt 9733-25 7451
20792 7590 01/22/2014
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
BLANCHA, JONATHAN M
ART UNIT PAPER NUMBER
2691
MAIL DATE DELIVERY MODE
01/22/2014 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 ALEXANDER HUNT and MARTIN GRIP
____________________

Appeal 2011-012640
Application 11/314,8001
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 21, 2005. The real party in interest is Sony
Ericsson Mobile Communications, AB.
Appeal 2011-012640
Application 11/314,800

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3-10, and 13-18. Claims 2, 11, and 12 have
been canceled (Br. 1-2.)2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal relates to mobile electronic devices
and display modules including at least two thin layers of non-polarizing
glass in a laminated structure with an adhesive there between. (Spec. 2-3, ¶¶
[0007]-[0010]; Abstract.)
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A display module for a mobile electronic device, the
display module comprising:
a display element, and
at least two thin layers of non-polarizing glass;
wherein the display element and the at least two thin
layers of glass are part of a laminated structure in which
different layers of the laminated structure are attached together
with an adhesive and wherein at least two of the thin layers of
glass are attached directly together by the adhesive and are
arranged at a front of the display element.

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed April 13, 2011. We also refer to the Examiner’s Answer (“Ans.”)
mailed May 19, 2011.
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Rejections on Appeal
1. The Examiner rejects claims 1, 3, 4, and 7-9 under 35 U.S.C.
§ 103(a) as being unpatentable over U.S. Patent App. Pub. No.
2002/0033919 A1, published Mar. 21, 2002 (“Sanelle”) and U.S. Patent
App. Pub. No. 2001/0033275 A1, published Oct. 25, 2001 (“Kent”).
2. The Examiner rejects claims 10 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Sanelle, Kent, and U.S. Patent. No.
6,445,429 B1, issued Sep. 3, 2002 (“Moster”).
3. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Sanelle, Kent, and U.S. Patent App. Pub. No.
2006/0132677 A1, published Jun. 22, 2006 (filed Dec. 5, 2005) (“Asao”).
4. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Sanelle, Kent, and U.S. Patent App. Pub. No.
2005/0237440 A1, published Oct. 27, 2005 (“Sugimura”).
5. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Sanelle, Kent, and U.S. Patent App. Pub. No.
2005/0073640 A1, published Apr. 7, 2005 (“Dunn”).
6. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over Sanelle, Kent, Moster, and Dunn.
7. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over Sanelle, Kent, and U.S. Patent App. Pub. No.
2005/0073507 A1, published Apr. 7, 2005 (“Richter”).
8. The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as
being unpatentable over Sanelle, Kent, Moster, and Richter.
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9. The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as
being unpatentable over Sanelle, Kent, and U.S. Patent App. Pub. No.
2005/0248707 A1, published Nov. 10, 2005 (“Jeon”).

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in concluding that the combination of Sanelle
and Kent collectively teach or would have suggested “at least two thin layers
of non-polarizing glass . . . attached directly together by the adhesive” within
the meaning of claim 1 and the commensurate limitations of claim 14?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed November 15, 2010 as our own, except as to those findings
that we expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (Br. 4-9), we select independent
claim 1 as representative of Appellants’ arguments and groupings with
respect to claims 1, 3-10, and 13-18. 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants contend that the combination of Sanelle and Kent is
improper. (Br. 5-7.) Specifically, Appellants contend that “one of skill in
the art would not contemplate combining the alleged teachings of Sanelle
and Kent because neither Sanelle nor Kent is directed toward solving the
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same problem as the present application” namely, making the device
“slimmer.” (Br. 5.) Appellants further contend that Kent is directed to
increasing the size of a touchpad (Br. 6) and “replacing Sanelle’s first glass
substrate 13 with Kent’s laminated glass sheets would not remove Sanelle’s
third glass substrate 35” and would increase rather than decrease thickness
of the device (id.).
The Examiner sets forth a detailed explanation of the obviousness
rejection in the Examiner’s Answer with respect to each of the claims (Ans.
5-14), and in particular claim 1 (Ans. 5-6, 14). Specifically, the Examiner
explains that:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to replace the glass layer
of Sanelle with the safety glass of Kent to provide a display
module with two thin layers of non-polarizing glass that are
attached directly together by an adhesive because two layers of
glass are much stronger and can protect against higher loads
and impacts compared to a single layer of glass [0119-0120][;
and]
(Ans. 6)
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to use the display of Sanelle to
combat “the problem of poor viewing performance or washout
in liquid crystal displays[”] (Sanelle [0038]) combined with the
touch panel of Kent to increase the overall size of the display
(Kent [0065]) to provide a liquid crystal display module with a
display element and at least two layers of non-polarizing glass,
wherein the display element and layers of glass are part of a
laminated structure, as required by the claims.
(Ans. 14.) From these findings, the Examiner concludes that Sanelle and
Kent render Appellants’ claim 1 obvious. (Ans. 6, 14.) We adopt these
findings and this reasoning as our own.
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Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate conclusion that Sanelle
and Kent are properly combinable and teach or would have at least
suggested the disputed features of claim 1. Accordingly, we sustain the
Examiner’s rejection of claim 1 for the reasons set forth in the Answer,
which we incorporate herein by reference. (Ans. 5-6, 14.) Our additional
analysis will be limited to the following points of emphasis.
Appellants do not dispute the Examiner’s findings with respect to
Sanelle and Kent. (Br. 5-7.) Instead, Appellants contend that the
combination (Sanelle and Kent) is improper. (Br. 5-7.) We disagree.
The Examiner provides a rationale for combining the references
(supra (quoting Ans. 6 and 14)) – i.e., improved performance. Therefore,
the Examiner has stated “some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). As
pointed out by the Examiner (Ans. 14), Sanelle and Kent are both concerned
with electronic displays – in particular, liquid crystal displays (LCDs) – and
improved front layer (protective glass) designs (see Sanelle, ¶ [0038];
Abstract; and Kent, ¶ [0065]; Abstract) and are, therefore, complimentary
references. That Sanelle teaches additional glass layers and Kent teaches
increasing display area (not thickness as asserted by Appellants) is irrelevant
– Appellants do not dispute the Examiner’s findings (or that the
combination, if proper, meets the limitations of the claim). Specifically, it
appears that Appellants have failed to appreciate the teachings from the
combinations of references. Appellants’ argument does not take into
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account what the prior art would have suggested to one of ordinary skill in
the art –
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
We further conclude that it would have been well with the skill of one
skilled in the art to combine such known techniques to improve the front
layers of an LCD. See KSR, 550 U.S. at 417 (“[I]f a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill”
(citations omitted)). We are not persuaded that combining the respective
familiar elements of the cited references in the manner proffered by the
Examiner would have been “uniquely challenging or difficult for one of
ordinary skill in the art” at the time of Appellants’ invention. Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
Thus, Appellants do not persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1, independent
claim 14, and dependent claims 3-10, 13, 16, and 18 (dependent on claim 1)
and 15 and 17 (dependent on claim 14), not separately argued with
particularity. (Br. 7-9.) Accordingly, we affirm the Examiner’s obviousness
rejections of claims 1, 3-10, and 13-18.

Appeal 2011-012640
Application 11/314,800

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CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1, 3-10, and 13-18 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1, 3-10, and 13-18.

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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