Ex Parte Kanade et al

Patent Trial and Appeal Board

Mar 19, 2014

11754253 (P.T.A.B. Mar. 19, 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.
11/754,253 05/25/2007 Udayan Kanade 18063-4006 7054
97909 7590 03/20/2014
Udayan Kanade
15-1 Sharman, Sahajanand Hsg Soc
Kothrud
une, 411038
INDIA
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
03/20/2014 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 UDAYAN KANADE and BALAJI GANAPATHY
____________

Appeal 2012-002648
Application 11/754,253
Technology Center 2800
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
DONNA M. PRAISS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002648
Application 11/754,253
2
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1 through 4, all of the claims pending in
the above-identified application.1 We have jurisdiction pursuant to 35
U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM and enter a new ground
of rejection against claims 1 through 4 based on indefiniteness pursuant to
37 C.F.R. § 41.50(b). We also designate our affirmance as including new
grounds of rejection because our reasons for affirming the prior art rejections
of record differ from those expressed by the Examiner. See In re Leithem,
661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory
basis and the same prior art references, alone, is insufficient to avoid making
a new ground of rejection when the Board relies on new facts and rationales
not previously raised to the applicant by the examiner.”).
BACKGROUND
The subject matter on appeal is directed to a display with selectable
viewing angle having at least two backlights emitting light in different
patterns of emanation, with one of the two backlights being “primarily
transparent”. Spec. ¶ 0005. Figure 1, which shows one display having such
features, is reproduced below:

1 The real party in interest is 12iC Corporation. (See Appeal Brief filed June
14, 2011 (“App. Br.”) at 4.)
Appeal 2012-002648
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In Figure 1, a display with selectable viewing angle 100 is said to have a
transmissive display 110, such as a liquid crystal display (LCD), transparent
backlight 104 emitting light 108 in a narrow angle, and backlight 102
emitting light 106 in a wide cone that travels through the transparent
backlight 104. Id. at ¶ 0033. Figures 9A and 9B, which illustrate a
primarily transparent backlight, are reproduced below:

Figures 9A and 9B are said to be a schematic diagram and a side view of the
same primarily transparent backlight. Id. at ¶¶ 0048 and 49. While
paragraph 0048 of the Specification contains many errors in defining some
of the elements of such primarily transparent backlight, paragraphs 0048 and
0049 of the Specification as a whole indicate a primarily transparent
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Application 11/754,253
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backlight 999 as including a light guide 900 comprising a core sheet 904
having a sparse distribution of light dispersing particles, such as metallic
powder, organic powder, or pigments, and low index cladding sheets 906
and 902 and an edge illuminator 912 comprising a linear light source 908
and a reflector 910.
Detail of the appealed subject matter is recited in representative claim
12 reproduced below:
1. An apparatus, comprising
a display comprising at least two backlights, wherein
at least a first backlight is primarily transparent when viewed from a
face of the first backlight and
the at least two backlights emit light in different patterns of
emanation.

(App. Br. 31 (Claims App’x) (emphasis added).)
Appellants seek review of the Examiner’s following grounds of
rejection maintained in the Answer filed September 28, 2011 (“Ans.”):
1. Claims 1-3 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of US Patent 5,956,107 issued to Hashimoto et al. on September
21, 1999 (“Hashimoto”);
2. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Hashimoto and US Patent 5,971,559 issued to
Ishikawa et al. on October 26, 1999 (“Ishikawa”).

2 On this appeal, Appellants have presented substantive arguments directed
to the limitation of claim 1 only. (App. Br. 12-30.) Therefore, for the
purpose of this appeal, we limit our discussion to claim 1 consistent with 37
C.F.R. § 41.37(c)(1)(vii).
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Discussion
There is no dispute that Hashimoto discloses a display apparatus
having at least two backlights emitting light in different patterns of
emanation, e.g., narrow and wide angles, respectively. (Compare Ans. 4-5
with App. Br. 12-30.) The only dispute in this case is whether Hashimoto
teaches or would have suggested employing a “primarily transparent
backlight” as at least one of its two backlights used in its display apparatus?
The resolution of this dispute requires us to correctly determine the meaning
or the scope of the phrase “primarily transparent” recited in claim 1. On this
record, however, we cannot ascertain the meaning or scope of the phrase
“primarily transparent” recited in claim 1. Therefore, we enter a new ground
of rejection against claims 1 through 4 under 35 U.S.C. § 112, second
paragraph, as indefinite pursuant to 37 C.F.R. § 41.50(b).
When, as here, the claims on appeal employ a relative or subjective
expression, such as “primarily,” to define some unknown degree of
transparency, they are deemed indefinite unless the Specification provides
some standard or definition for determining that degree or unless the
evidence of record shows that one of ordinary skill in the art would have
understood the meaning or scope of such word. Seattle Box Co., Inc. v.
Indust. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
However, nowhere does the Specification relied upon by Appellants provide
a definition or a standard for defining the meaning or scope of the phrase
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Application 11/754,253
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“primarily transparent” recited in the claims on appeal.3 Nor have
Appellants referred to any evidence to show that the scope of the term
“primarily” in the context of the optical transparency recited in the claims
on appeal were known to one of ordinary skill in the art at the time of the
invention. (App. Br. 12-30.) Thus, it cannot be ascertained from the present
record what degree of the optical transparency is encompassed by the phrase
“primarily transparent” recited in the claims on appeal. As stated by our
reviewing court in In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997):
It is the applicants’ burden to precisely define the
invention, not the PTO’s. See 35 U.S.C. § 112, ¶ 2. . . . [T]his
section puts the burden of precise claim drafting squarely on the
applicant.”
See also Ex parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008)
(precedential) (“The USPTO is justified in using a lower threshold showing
of ambiguity to support a finding of indefiniteness under 35 U.S.C. § 112,
second paragraph, because the applicant has an opportunity and a duty to
amend the claims during prosecution to more clearly and precisely define the
metes and bounds of the claimed invention and to more clearly and precisely
put the public on notice of the scope of the patent.”)
Accordingly, we determine that claims 1 through 4 are indefinite
within the meaning of 35 U.S.C. § 112, second paragraph. Miyazaki, 89
USPQ2d at1211 (“rather than requiring that the claims are insolubly

3 As argued by Appellants at pages 19 and 20 of the Appeal Brief, the term
“transparent” means clear, i.e. “[c]apable of transmitting light so that objects
or images can be seen as if there were no intervening material.” (Spec. ¶
0048.) However, Appellants have not argued or referred to any portion of
the Specification to show what degree of transparency is encompassed by
the limitation “primarily transparent” recited in claim 1. (App. Br. 12-30.)
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ambiguous, we hold that if a claim is amenable to two or more plausible
claim constructions [upon giving the broadest reasonable construction
consistent with the Specification], the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”)
Despite the indefinite language used in claims 1 through 4, we will
address the propriety of the Examiner’s prior art rejections of record based
on our conditional interpretation in the interest of administrative and judicial
economy. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. &
Int. 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. Pat. App. & Int.
1984). We conditionally interpret the phrase “primarily transparent” in
claim 1 in light of the exemplified embodiments illustrated and described in
Figures 9A and 9B and paragraphs 0034, 0035, 0048 and 0049 of the
Specification. According to paragraphs 0034, 0035, 0048 and 0049 of the
Specification, a primarily transparent backlight includes at least a backlight
having a primarily transparent or transparent light guide containing a sparse
distribution of transparency inhibiting light dispersing or deflecting particles,
such as metallic powder, organic powder, or pigments. The sparse
distribution of the light dispersing or deflecting particles illustrated in
Figures 9A and 9B includes the amount of particles sufficient to emit light in
a desired pattern, e.g., a narrow angle. (Spec. ¶¶ 0033, 0034, 0049, and
0059.)
Having interpreted the phrase “primarily transparent” as indicated
supra, we evaluate the content of Hashimoto to determine whether it teaches
or would have suggested employing a primarily transparent backlight as one
of its two backlights used in its display apparatus. Here, we find that
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Hashimoto teaches that its transparent guide plate has a micro unevenness
formed on the first plane of the plate or a dot matrix shape inside the
transparent plate with a light reflecting (deflecting) portion for the purpose
of scattering light to a desired pattern, e.g., a narrow angle. (Hashimoto, col.
2, ll. 50-65 and col. 7, l. 28 to col. 8, l. 6 and Figs. 2, 3A, and 4A.) In other
words, Hashimoto teaches the amounts of dot matrix shapes and light
reflecting portions employed in the transparent guide plate are sparse enough
to achieve the same function as those described in paragraphs 0033, 0034,
0049, and 0059 of Appellants’ Specification. Thus, it is reasonable to infer
that Hashimoto teaches that one of its two backlights used in its display
apparatus is “primarily transparent” as required by the claims on appeal, for
it is made of a transparent guide plate having the appropriate distribution of
dot matrix shapes and light reflecting portions for producing the desired light
emanation pattern described in Appellants’ Specification. In re Preda, 401
F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.”)
Accordingly, we also affirm the rejection of claims 1 through 3 under
35 U.S.C. § 103(a) as unpatentable over the disclosure of Hashimoto and
claim 4 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Hashimoto and Ishikawa. However, we designate our affirmance of these
rejections as new grounds of rejection because our reasons for affirmance
materially differ from those expressed by the Examiner.
CONCLUSION
For the reasons discussed above, we affirm the Examiner’s decision
rejecting claims 1 through 4 under 35 U.S.C. § 103(a), but designate our
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affirmance as including new grounds of rejection. We also have newly
rejected claims 1 through 4 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED/37 C.F.R. § 41.50(b)

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