Ex parte Isenman

Board of Patent Appeals and Interferences

Sep 27, 1999

08110269 (B.P.A.I. Sep. 27, 1999)

The application was filed on August 23, 1993.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte COLIN C. ISENMAN
____________
Appeal No. 1996-1387
Application No. 08/110,2691
____________
ON BRIEF
____________
Before MARTIN, LEE, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-8 and 12-26. We affirm-
in-part.
BACKGROUND
Appeal No. 1996-1387 Page 2
Application No. 08/110,269
The invention at issue in this appeal relates to optical
projection displays. A light source produces light, which is
collimated by a lens. The collimated light is passes to
a liquid crystal (LC) shutter. The incoming light is
modulated by the LC shutter and projected onto a display
screen. A matte surface and digitizing grid are carried by
the screen. The surface acts as a diffusive element for
displaying an image. The grid detects the position of a
pointer near the screen.
Claim 23, which is representative for our purposes,
follows:
23. An optical projection system, comprising:
a) a liquid-crystal shutter, in which
transmissivity of pixels is controlled by
application of electric fields;
b) a light source for projecting light through
the shutter;
c) a display screen on which the projected light
produces an image; and
d) a plurality of conductors associated with the
display screen, for use in detection of position of
a stylus.
Appeal No. 1996-1387 Page 3
Application No. 08/110,269
The references relied on in rejecting the claims follow:
Nakamura et al. (Nakamura) 4,649,232 Mar. 10,
1987
Naemura et al. (Naemura) 4,699,498 Oct.
13, 1987
Majima et al. (Majima) 4,938,570 July 3,
1990
Ogino et al. (Ogino) 4,969,731 Nov. 13,
1990
Bornhorst et al. (Bornhorst) 5,282,121 Jan.
25, 1994.
(filed Apr. 30, 1991)
Appeal No. 1996-1387 Page 4
Application No. 08/110,269
Claims 1, 6, 12-15, 20, and 22-26 stand rejected under 35
U.S.C. § 103 as obvious over Majima in view of Naemura.
Claims 2-4 stand rejected under § 103 over Majima in view of
Naemura further in view of Ogino. Claims 5 and 16 stand
rejected under § 103 over Majima in view of Naemura further in
view of Bornhorst. Claim 7 stands rejected under § 103 over
Majima in view of Nakamura. Claim 8 stands rejected under
§ 103 over Majima in view of Nakamura further in view of
Ogino. Claims 17 and 18 stand rejected under § 103 over
Majima in view of Ogino. Claims 19 and 21 stand rejected
under § 103 over Majima in view of Bornhorst. Rather than
repeat the arguments of the appellant or examiner in toto, we
refer the reader to the briefs and the answers for the
respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections and evidence
advanced by the examiner. We also weighed the arguments of
the appellant and examiner. After considering the entire
record before us, we are persuaded that the examiner erred in
Appeal No. 1996-1387 Page 5
Application No. 08/110,269
rejecting claims 2-4, 7, 8, 16, 20, 22, and 24. We are not
persuaded, however, that the examiner erred in rejecting
claims 1, 5, 6, 12-
Appeal No. 1996-1387 Page 6
Application No. 08/110,269
15, 17, 18, 19, 21, 23, 25, and 26. Accordingly, we affirm-
in-part.
We begin our consideration of the claims by finding that
the references represent the level of ordinary skill in the
art. See In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116,
1121 (Fed. Cir. 1995) (finding that the Board of Patent
Appeals and Interference did not err in concluding that the
level of ordinary skill in the art was best determined by the
references of record); In re Oelrich, 579 F.2d 86, 91, 198
USPQ 210, 214 (CCPA 1978) ("[T]he PTO usually must evaluate
... the level of ordinary skill solely on the cold words of
the literature."). Of course, every patent application and
reference relies on the knowledge of persons skilled in the
art to complement its disclosure. In re Bode, 550 F.2d 656,
660, 193 USPQ 12, 16 (CCPA 1977). Such persons must be
presumed to know something about the art apart from what the
references disclose. In re Jacoby, 309 F.2d 513, 516, 135
USPQ 317, 319 (CCPA 1962).
Appeal No. 1996-1387 Page 7
Application No. 08/110,269
Next, we note that in rejecting claims under § 103, the
patent examiner bears the initial burden of establishing a
prima facie case of obviousness. A prima facie case is
established when the teachings from the prior art would appear
to have suggested the claimed subject matter to a person of
ordinary skill in the art. If the examiner fails to establish
a prima facie case, an obviousness rejection will be
overturned. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). With this in mind, we address
claims 1, 5, 6, 15, 25, and 26; claims 2-4; claims 7 and 8;
claims 12-14; claim 16; claims 17 and 18; claims 19 and 21;
claim 20; claim 22; claim 23; and claim 24 seriatim.
Claims 1, 5, 6, 15, 25, and 26
Regarding claim 1, the appellant makes three arguments
attacking the combination of Majima and Naemura. First, he
argues that the examiner’s reason for combining the references
“is incorrect in its facts.” (Appeal Br. at 8.) The examiner
replies, “the appellant's argument is not persuasive because
as described by Naemura, a response time is improved due to
the shutter ....” (Examiner’s Answer at 8.)
Appeal No. 1996-1387 Page 8
Application No. 08/110,269
We find that the examiner had a sufficient reason for
combining the references. Obviousness cannot be established
by combining teachings of the prior art to produce a claimed
invention absent a suggestion supporting the combination. In
re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). The question is whether there is something in the
prior art as a whole to suggest the desirability of making the
combination. In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d
1453, 1456 (Fed. Cir. 1998); In re Beattie, 974 F.2d 1309,
1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
Here, the examiner identified a proper suggestion
supporting the combination. Specifically, Naemura teaches
reducing the response time of, i.e., increasing the speed of,
an LC light shutter to less than 0.25 ms. Col. 2, ll. 49-53.
Because improving response time is desirable, the teaching
would have suggested the desirability of making the
combination.
Second, the appellant argues that improving speed is
irrelevant because his “claims do not recite speed.” (Appeal
Appeal No. 1996-1387 Page 9
Application No. 08/110,269
Br. at 8.) The examiner replies, “the appellant's argument is
not persuasive because ‘the speed’ was motivation for
combining the two references.” (Examiner’s Answer at 8.)
The appellant erred in construing the criteria for
obviousness. Obviousness is not determined based on purpose
alone. In re Graf, 343 F.2d 774, 777, 145 USPQ 197, 199 (CCPA
1965). It is sufficient that references suggest doing what an
appellant did, although the appellant's particular purpose was
different from that of the references. In re Heck, 699 F.2d
1331, 1333, 216 USPQ 1038, 1040 (Fed. Cir. 1983); In re
Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967).
Here, Naemura suggests combining the references to obtain
the claimed invention for the aforementioned reasons. The
suggestion does not have to be the same as the appellant’s.
Third, the appellant argues that combining Majima and
Naemura renders the references inoperative or is contrary to
their teachings. (Appeal Br. at 9-12.) The appellant also
makes this argument regarding claim 6. (Id. at 12-13.) The
Appeal No. 1996-1387 Page 10
Application No. 08/110,269
examiner replies, “the appellant's argument is not persuasive
because Naemura’s teaching of the shutter is combinable with
Majima.” (Examiner’s Answer at 8.)
The appellant again erred in construing the criteria for
obviousness. It is unnecessary that inventions of references
be physically combinable to render obvious an invention under
review. In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389
(Fed. Cir. 1983). See also In re Nievelt, 482 F.2d 965, 968,
179 USPQ 224, 226 (CCPA 1972) ("Combining the teachings of
references does not involve an ability to combine their
specific structures."). The test for obviousness is not
whether the features of a reference may be bodily incorporated
into the structure of another reference but what the combined
teachings of those references would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981).
Here, the examiner does not assert that the features of
Naemura may be bodily incorporated into the structure of
Majima. Instead, he asserts that the combined teachings of
Appeal No. 1996-1387 Page 11
Application No. 08/110,269
the references would have suggested to one of ordinary skill
in the art the appellant’s invention. The appellant erred in
ignoring “the relevant combined teachings of the references."
In re Andersen, 55 CCPA 1014, 391 F.2d 953, 958, 157 USPQ 277,
281 (CCPA 1968) (dismissing the argument that a combination
would result in an inoperative structure). Therefore, we
affirm the rejection of claims 1 and 6.
Regarding claim 5, the appellant merely argues, “[a]s
discussed above, the combined references do not lead to claim
1, from which claim 5 depends. Claim 5 depends from an
allowable claim.” (Appeal Br. at 33.) In short, he relies on
his arguments regrading claim 1. We rejected these arguments
as aforementioned. Therefore, we affirm the rejection of
claim 5.
The appellant neglects to address the rejection of claim
15. Accordingly, he has not shown error in the rejection.
Therefore, we affirm the rejection of claim 15.
Regarding claims 25 and 26, the appellant merely states,
“[t]he discussion above applies to claims 25 and 26.” (Appeal
Appeal No. 1996-1387 Page 12
Application No. 08/110,269
Br. at 27.) It is unclear to which of the discussions the
appellant refers. We have rejected many of his arguments.
Accordingly, the statement shows no error in the rejection.
Therefore, we affirm the rejection of claims 25 and 26. Next,
we address claims 2-4.
Claims 2-4
Regarding claims 2-4, the appellant argues, “Ogino's
coolant cools the wrong elements. His coolant cools the
Fresnel lens 15a and lens 36'. His coolant does not cool the
liquid crystal 10.” (Appeal Br. at 35.) The examiner
replies, “Ogino discloses a liquid crystal panel which is
comprised of a coolant from [sic] removing heat from the
liquid crystal (col. 9, lines 42 to 52).” (Examiner’s Answer
at 6-7.)
We cannot find that the combination of Majima in view of
Nakamura further in view of Ogino teaches or would have
suggested the coolant of claims 2-4. The claims specify in
pertinent part a “coolant for removing heat from the shutter.”
Appeal No. 1996-1387 Page 13
Application No. 08/110,269
The examiner erred in determining the content of the
prior art. As aforementioned, he asserts that Ogino teaches
cooling a liquid crystal. It is true that the reference
teaches the use of a coolant 39. The coolant is charged into
a space between a lens element 36 and a Fresnel lens 15a.
Col. 9, ll. 42-44. Rather than cooling a shutter as claimed,
however, Ogino cools a Fresnel lens and lens element. The
examiner has not recognized and accounted for the difference
between cooling the reference’s Fresnel lens and lens element
and cooling the claims’ LC shutter. Furthermore, the examiner
has not identified a suggestion elsewhere in the prior art to
cool the LC shutter.
For the foregoing reasons, the examiner has not
established a prima facie case of obviousness. Therefore, we
reverse the rejection of claims 2-4. Next, we address claims
7 and 8.
Claims 7 and 8
Regarding claims 7 and 8, the appellant argues, “‘matte’
means ‘having a rough or granular surface.’" (Appeal Br. at
Appeal No. 1996-1387 Page 14
Application No. 08/110,269
28.) He adds, “Nakamura is directly contrary.” (Id.) The
examiner replies, “regarding ‘a tactile sensation during
dragging’, where can it be found in the claim. [sic]”
(Examiner’s Answer at 10.)
We cannot find that the combination of Majima in view of
Nakamura teaches or would have suggested the matte surface of
claim 7. The claim specifies in pertinent part a “screen upon
which an image may be projected, comprising ... matte surface
along which a user can drag a stylus.”
The examiner erred by not identifying the limitation in
the prior art. He admits, “Majima does not disclose the
screen which is comprised of [sic] matte surface along which a
user can drag a stylus ....” (Examiner’s Answer at 4.) For
its part, Nakamura teaches a graphics tablet with a surface 12
along which a user can drag a stylus 22. Col. 6, ll. 4-15.
Because the surface is made of glass, (Id. at ll. 8-9), it
would not necessarily be rough or granular. To the contrary,
one of ordinary skill in the art would have expected it to be
smooth, i.e., “as smooth as glass.” The addition of Ogino in
Appeal No. 1996-1387 Page 15
Application No. 08/110,269
the rejection of claim 8 does not cure this defect. For the
foregoing reasons, the examiner has not established a prima
facie case of obviousness. Therefore, we reverse the
rejection of claims 7 and 8. Next, we address claims 12-14.
Claims 12-14
Regarding claims 12-14, the appellant makes two
arguments. First, he argues, “it is impossible to substitute
PDLC into the other reference, Naemura, because of the
opposite functioning of PDLC.” (Appeal Br. at 23.) The
examiner replies, “since Majima as modified have [sic]
disclosed the shutter which modulates light, having polymer-
dispersed material would have been obvious because it would be
an alternate material which the system may use for modulating
light.” (Examiner’s Answer at 4.)
We agree with the examiner. Naemura discloses an image
projector. A lamp 1 radiates light in the direction of a lens
2. The light is projected through an LC shutter 3, which
modulates the incoming light. Col. 4, ll. 17-22. The
reference does not limit the type of LC employed for the
Appeal No. 1996-1387 Page 16
Application No. 08/110,269
shutter. Because it does not limit the type, one of ordinary
skill in the art could have selected an LC from the available
types.
Second, the appellant admits, “[a]t the time of filing of
the application, PDLC was a commercially available product.”
(Appeal Br. at 23.) He argues, however, “commercial
availability of PDLC on this date is not equivalent to
availability before the filing date, as section 102(a)
requires.” (Reply Br. at 4.) The examiner replies, “since
PDLC was commercially available at the time of the claimed
invention was filed [sic] and that [sic] the appellant has not
stated that PDLC is appellant's own product ... PDLC would
have been obvious.” (Examiner’s Answer at 9.)
As aforementioned, the appellant admits that PDLC was
commercially available as of the filing date of his
application. Specifically, he admits that sheets of the
material could be purchased from suppliers at the time.
(Spec. at 7.) We find that PDLC’s commercially availability
as of the filing date gives rise to a rebuttable presumption
Appeal No. 1996-1387 Page 17
Application No. 08/110,269
that the material existed and was known to one of ordinary
skill in the art before the appellant’s invention. The
appellant has not rebutted the presumption with arguments or
evidence. Therefore, we affirm the rejection of claims 12-14.
Next, we address claim 16.
Claim 16
Regarding claim 16, the appellant argues, “Bornhorst's
filter 32 does not ‘receive infra-red light reflected by said
filter.’” (Appeal Br. at 32.) The examiner replies, ”the
filter 32 of Bornhorst, which transmits, may read [sic] as
reflecting.” (Examiner’s Answer at 11.)
We agree with the appellant. In short, claim 16
specifies a dichroic reflector, which is distinct from its
infrared (IR) filter.
Bornhorst employs a dielectric interference filter 32 to
filter energy in the "near" IR region before it reaches an LC
layer 14. The interference filter is positioned between the
Appeal No. 1996-1387 Page 18
Application No. 08/110,269
layer and a lamp 10. Col. 7, ll. 35-43. The examiner erred
in reading both the dichroic reflector and the IR filter on
the reference’s interference filter. This is not permissible.

For the foregoing reasons, the examiner has not
established a prima facie case of obviousness. Therefore, we
reverse the rejection of claim 16. Next, we address claims 17
and 18.
Claims 17 and 18
The appellant neglects to argue the rejection of claim 17
and 18. Accordingly, he has not shown error in the rejection.
Therefore, we affirm the rejection of claim 17 and 18. Next,
we address claims 19 and 21.
Claims 19 and 21
Regarding claims 19 and 21, the appellant argues, “the
references do not show IR-reflective coatings.” (Appeal Br.
Appeal No. 1996-1387 Page 19
Application No. 08/110,269
at 34.) The examiner replies, “since the claim is broad,
prior art may read on the claim.” (Examiner’s Answer at 11.)
We agree with the examiner and address claims 19 and 21
seriatim. Claim 19 specifies in pertinent part “an infra-red
reflective layer positioned adjacent the shutter, for reducing
infra-red light reaching the shutter.”
The appellant erred by reading the limitation of a
coating into claim 19. Comparison of the combination to the
claim language evidences that the references would have
suggested an IR-reflective layer, which is positioned adjacent
a shutter. As noted by the examiner, (Examiner’s Answer at 5-
6) and as aforementioned regarding claim 16, Bornhorst employs
an interference filter to filter energy in the near IR region
before it reaches an LC layer. The filter is positioned
between the layer and a lamp. Figure 1 shows that the filter
is located adjacent to the layer. The reference’s
interference filter teaches or suggests the claimed IR-
reflective layer. Its location teaches or suggests the
Appeal No. 1996-1387 Page 20
Application No. 08/110,269
claimed position. Therefore, we affirm the rejection of claim
19.
We agree with the appellant that the references do not
show the IR-reflective coating of claim 21. The examiner’s
rejection, however, is based on obviousness rather than
anticipation. The appellant has not explained why replacing
Bornhorst’s IR filter, which is beside an LC layer, with an
IR-coating on the layer would not have been obvious.
Accordingly, he has not shown error in the rejection.
Therefore, we affirm the rejection of claim 21. Next, we
address claim 20.
Claim 20
Regarding claim 20, the appellant argues, “[a]
holographic diffuser must be shown in the prior art, together
with a teaching for combining it with the references. Neither
has been done.” (Appeal Br. at 26.) The examiner replies,
“the holographic diffuser would have been obvious because
such diffuser is well known in the art to diffuse light.”
(Examiner’s Answer at 4.)
Appeal No. 1996-1387 Page 21
Application No. 08/110,269
We cannot find that the combination of Majima in view of
Naemura teaches or would have suggested the holographic
diffuser of claim 20. The claim specifies in pertinent part
“[a] video display, comprising: a) an image generation system
which includes ... a holographic diffuser associated with the
screen ....”
The Examiner erred by not identifying a proper suggestion
supporting the proposed addition of a holographic diffuser to
the claimed combination of elements. Rather than providing a
line of reasoning to explain why such an addition would have
been desirable, he merely relies on the fact that the
holographic diffuser was well known in the art. The fact that
an element was well known, however, does not render its
addition per se obvious as the examiner’s rejection might
imply. A suggestion of the desirability of using the element
to modify references must be shown. The examiner did not show
this.
For the foregoing reasons, the examiner has not
established a prima facie case of obviousness. Therefore, we
Appeal No. 1996-1387 Page 22
Application No. 08/110,269
reverse the rejection of claim 20. Next, we address claim
22.
Claim 22
Regarding claim 22, the appellant notes, “[n]o reason for
rejection of claim 22 has been given” by the examiner.
(Appeal Br. at 24.) He argues, “[c]laim 22 does not read on
the Office Action’s combination of references.” (Id. at 25.)
The appellant explains, “Naemura specifically discloses
polarizing filters.” (Id.) The examiner fails to respond to
this argument.
The Examiner erred by not explaining how the prior art
would have suggested the limitations of claim 22. He has not
established a prima facie case of obviousness. Therefore, we
reverse the rejection of claim 22. Next, we address claim 23.
Claim 23
Regarding claim 23, the appellant merely states, “[t]he
discussion above applies to claim 23.” (Appeal Br. at 26.)
Appeal No. 1996-1387 Page 23
Application No. 08/110,269
It is unclear to which of the discussions the appellant
refers. We have rejected many of his arguments. Accordingly,
the statement shows no error in the rejection. Therefore, we
affirm the rejection of claim 23. Next, we address claim 24.
Claim 24
Regarding claim 24, the appellant argues, “the Office
Action has not shown a device having no phase change.”
(Appeal Br. at 27.) The examiner fails to respond to this
argument.
The Examiner erred by not explaining how the prior art
would have suggested the limitations of claim 24. He has not
established a prima facie case of obviousness. Therefore, we
reverse the rejection of claim 24.
We end our consideration of the claims by noting that the
aforementioned affirmances are based only on the arguments
made in the briefs. Arguments not raised in the briefs are
not before us, are not at issue, and are thus considered
waived.
Appeal No. 1996-1387 Page 24
Application No. 08/110,269
CONCLUSION
To summarize, the examiner’s rejection of claims 1, 5, 6,
12-15, 17, 18, 19, 21, and 23 under 35 U.S.C. § 103 is
affirmed. His rejection of claims 2-4, 7, 8, 16, 20, 22, and
24 under § 103, however, is reversed.
No period for taking subsequent action concerning this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMESON LEE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Appeal No. 1996-1387 Page 25
Application No. 08/110,269
Administrative Patent Judge )
LLB/dal
Appeal No. 1996-1387 Page 26
Application No. 08/110,269
PAUL J. MAGINOT
INTELLECTUAL PROP. SECTION - LAW DEPT.
NCR CORP.
WORLD HEADQUARTERS
DAYTON, OH 45479