Ex Parte Hunt et alDownload PDFPatent Trial and Appeal BoardJan 22, 201411314800 (P.T.A.B. Jan. 22, 2014) Copy Citation 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 2 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. Appeal 2011-012640 Application 11/314,800 3 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. Appeal 2011-012640 Application 11/314,800 4 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 Appeal 2011-012640 Application 11/314,800 5 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. Appeal 2011-012640 Application 11/314,800 6 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 Appeal 2011-012640 Application 11/314,800 7 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 8 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 tj Copy with citationCopy as parenthetical citation