Ex Parte Jacobson et al

Board of Patent Appeals and Interferences

Sep 9, 2011

10906019 (B.P.A.I. Sep. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH M. JACOBSON,
BARRETT COMISKEY, and
RUSSELL J. WILCOX
____________________

Appeal 2010-000013
Application 10/906,019
Technology Center 2600
____________________

Before: LANCE LEONARD BARRY, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5, 6, 17-20 and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

BACKGROUND
According to Appellants, the invention relates to “addressing schemes
for electronic displays” (Spec. 1, [Para 3]). More specifically, Appellants
invention involves an electronic display, such as a multi-page electronic
book “having a plurality of pixels, and separate first, second and third sets of
addressing means for addressing these pixels” (see Spec., Abstract). In
addition, Appellants invention involves each of the pixels being “associated
with one addressing means in each of the three sets, such that addressing of
any specific pixel requires application of signals within predetermined
ranges to each of the three addressing means associated with the specific
pixel being addressed” (id.).
Claim 1 is illustrative:
1. An electronic display comprising an electro-optic
material having a plurality of pixels, and separate first, second
and third sets of addressing means for addressing said pixels,
each of said pixels being associated with one addressing means
in each of said three sets, such that any specific pixel of the
display can be addressed by application of signals within
predetermined ranges to each of the three addressing means
associated with said specific pixel, the pixels being arranged in
a plurality of sub-arrays, each pixel within any specific sub-
array being associated with one of the first and second sets of
addressing means, the third set of addressing means having the
form of a plurality of switching means, at least one of said
switching means being associated with each of said sub-arrays,
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the switching means associated with each sub-array having an
off state, in which signals on at least one of the first and second
sets of addressing means are prevented from reaching the
associated sub-array, and an on state, in which signals from
both the first and second sets of addressing means are permitted
to reach and address the associated sub-array, and wherein each
sub-array comprises a discrete page, the pages formed by the
plurality of sub-arrays being stacked on top of each other so
that the entire display forms a multi-page electronic book.

REJECTIONS
R1: Claims 1, 3, 5, 6 and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Morin (US 5,684,500, Nov. 4, 1997) and Lebby
(US 5,534,888, Jul. 9, 1996).
R2: Claims 17, 18 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Morin, Lebby, and DiSanto (US 5,293,528, Mar.
8, 1994).
R3: Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morin, Lebby, and Richley (US 5,900,192, May 4, 1999).

FACTUAL FINDINGS
Specification
1. Appellants’ Specification discloses:

As already mentioned, the three dimensional displays and
methods of the present invention use an electro-optic material
having a plurality of pixels….The additional dimension is
accomplished by introducing a method of addressing sub-arrays
within the array. By thus substituting a three-dimensional
addressing scheme for a two-dimensional one, the number of
drivers can be greatly reduced. In effect, the present invention
splits the display into z regions, each addressable by the x
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columns and y rows, enabling the entire display of x*y*z pixels
to be addressed by x + y + z drivers…. The additional
dimension may comprise only a logical sub-array, or may
include a physical sub-array that may even comprise an
additional layer in the display stack. ([Para 53]).

Morin
2a: Morin discloses: A display screen includes a transparent
substrate covered “by an array of electrodes 14, each constituting a display
point or pixel” (see col. 1, ll. 12-22).
2b. Morin discloses:
Throughout the remainder of the description, it will be assumed
that the integer N represents the order of the multiplexing and is
equal to 2. In other words, the columns or rows are grouped
pairwise and the strips of second gates G2 are interconnected on
a basis of one strip out of every two. In practice, this amounts
to producing on a substrate a conductive layer broken down
into two patterns, each pattern comprising vertical or horizontal
strips, the strips of one pattern alternating with those of the
other …. In FIG. 7, the optical mask (hatched area) is broken
down into two interdigiated patterns constituting the two
electrodes to which are applied different potentials …. Pairwise
interconnection takes place of the columns of the matrix in
order to divide by two the access number thereof, in order to
divide by two the number of peripheral control circuits. Thus,
the columns C1, C2 are connected to an element P1, the
columns C3, C4 to an element P2, etc. (col. 4, l. 60 – col. 5, l.
15).

Lebby
3a. Lebby discloses: that the assembly of electronic book 101, illustrated
in FIG. 1, includes a “plurality of page displays 116 to be interfaced or
interconnected to electronics, illustrated as box 130” (see col. 2, ll. 34-48).
3b. Lebby discloses:
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The plurality of electromechanical coupling devices 238 are operably
coupled to individual . . . page displays 116. Further, turning of an
individual page of the plurality of page displays 116 enables
electronics 130 to update the plurality of page displays 116, thereby
enabling a user to look back and forth through the displayed
information on the plurality of page displays 116 …. (see col. 3, ll.
53-61).

ANALYSIS
35 U.S.C. § 103(a) Rejection
Claims 1, 3, 5, 6, 17-20 and 22

Our representative claim, claim 1, recites, inter alia, “wherein each
sub-array comprises a discrete page, the pages formed by the plurality of
sub-arrays being stacked on top of each other.” Independent claim 22
recites a commensurate limitation. Thus, the scope of each of the
independent claims includes that “each sub-array comprises a discrete page,
the pages formed by the plurality of sub-arrays being stacked on top of each
other.”

Issue: Did the Examiner err in finding that the combination of Morin and
Lebby discloses “wherein each sub-array comprises a discrete page, the
pages formed by the plurality of sub-arrays being stacked on top of each
other,” as recited in claim 1?

The Examiner finds that “Morin discloses that the pixels 14 are
arranged in sub-arrays where each pixel 14 is associated with a column and a
row” (Ans. 4). The Examiner acknowledges that “Morin fails to disclose
wherein each sub-array comprises a discrete page, the pages formed by the
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plurality of sub-arrays being stacked on top of each other” (id. at 4; see also
id. at 14). The Examiner finds, however, that “it was well known in the art
to provide wherein each sub-array comprises a discrete page” (see Ans. 5).
Further, the Examiner finds that “Lebby discloses that a plurality of optical
displays 116 are page displays and that the pages are stacked on top of each
other to form a multi-page electronic book which reads on claimed ‘wherein
each sub-array comprises a discrete page, the pages formed by the plurality
of sub-arrays being stacked on top of each other so that the entire display
forms a multi-page electronic book’ disclosed in column 2 lines 35-49 and in
column 3 lines 20-30 and exhibited in figure 1” (Ans. 5).
Appellants contend that “[a]ssuming arguendo, that it would be
obvious to combine Morin and Lebby, the natural way to do so would be to
use a plurality of Morin displays as the individual pages in the Lebby
electronic book” (Br. 13). Appellants argue, however, that “this would not
produce a display in accordance with any of the present claims, since the
sub-arrays would not be in the form of discrete pages but would be confined
to sub-areas of a single page” (id.).
Based upon our review of the record, we find, as discussed below, that
the weight of the evidence supports Appellants’ position as articulated in the
Brief. For example, Morin discloses a single display screen that includes a
transparent substrate that is covered by an array of electrodes (i.e., pixels)
(FF 2a). Further, Morin discloses forming groups of pixels by dividing the
columns of a single display into groupings of N (FF 2b). For example,
when N=2, Morin produces two patterns on the single substrate, for
example, (1) one pattern constituting columns C1 and C2, and two
electrodes/pixels and (2) a second pattern constituting columns C3 and C4
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and two electrodes/pixels (see FFs 2a-2b). We find that the term sub-arrays
is synonymous with groupings of pixels (see FF 1). Thus, we find Morin
discloses forming sub-arrays (i.e., the two patterns/groupings of pixels) on a
substrate of a single display.
The Examiner acknowledges that Morin fails to disclose pages that
are formed from a plurality of sub-arrays stacked on top of each other (Ans.
at 4; see also Ans. at 14), and relies on Lebby for teaching or suggesting
these features of claim 1 (see Ans. 5). However, we find that the Examiner
has not established that Lebby teaches or suggests pages that are formed
from a plurality of sub-arrays.
However, we find that the portions of Lebby cited by the Examiner
fail to discuss “the grouping of pixels.” Rather, we find that the cited
portions of Lebby disclose page displays 116 that are interfaced or
interconnected (i.e., stacked on top on top of each other), in the assembling
of the electronic book 101 (i.e., display) (see FF 3a-3b). As the cited
portions of Lebby fail to mention the grouping of pixels, the Examiner,
consequently, has not established that the page displays 116 of Lebby are
formed by a plurality of sub-arrays being stacked on top of each other.
Hence, we find that a gap exists in the Examiner’s findings that the
combination of Morin and Lebby teaches or suggests the above-argued
limitations. While the Examiner has shown that Morin discloses the
grouping of pixels (i.e., the forming of sub-arrays) and that Lebby discloses
page displays, the Examiner has failed to adequately establish a nexus
between the sub-arrays of Morin and the pages of Lebby, as Lebby fails to
disclose any such grouping of pixels that correspond to the sub-arrays of
Morin or to the formation of pages.
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A rejection based on 35 U.S.C. § 103 must rest on a factual basis. In
re Warner, 379, F.2d 1011, 1017 (CCPA 1967). In making such a rejection,
the Examiner has the initial duty of supplying the requisite factual basis and
may not, perhaps because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. Id. Given the lack of adequate supporting
evidence, we conclude that the Examiner’s determination that it would have
been obvious “to form pages by stacking a plurality of sub-arrays on top of
each other,” in view of the combination of the teachings of Morin and
Lebby, rests on speculation, unfounded assumptions and/or hindsight
reconstruction of the claimed invention.
Thus, based on the evidence as a whole, and the persuasiveness of
Appellants’ arguments, we find that the Examiner erred in rejecting
representative claim 1. Independent claim 22 is commensurate in scope with
claim 1. Accordingly, for similar reasons, we find that the Examiner erred
in rejecting (1) claims 3, 5, 6, and 17-20 that depend from independent claim
1 and (2) claim 22.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
the combination of Morin and Lebby renders claims 1, 3, 5, 6, 17-20 and 22
unpatentable.
In view of the above discussion, since Appellants have demonstrated
that the Examiner erred in finding the argued limitations in the combination
of Morin and Lebby, the Examiner’s 35 U.S.C. § 103(a) rejection of
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representative independent claim 1, as well as claims 3, 5, 6, 17-20 and 22,
which include the same limitation, is reversed.

DECISION
We reverse the Examiner’s § 103 rejection of claims 1, 3, 5, 6 and 22
over Morin and Lebby.
We reverse the Examiner’s § 103 rejection of claims 17, 18 and 20
over Morin, Lebby, and DiSanto.
We reverse the Examiner’s § 103 rejection of claim 19 over Morin,
Lebby, and Richley.

REVERSED

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