Ex Parte Kimura et alDownload PDFPatent Trial and Appeal BoardAug 2, 201612903977 (P.T.A.B. Aug. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/903,977 10/13/2010 Kouji KIMURA 22429 7590 08/04/2016 HAUPTMAN HAM, LLP 2318 Mill Road Suite 1400 ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5070-0009 4999 EXAMINER NGUYEN, LAUREN ART UNIT PAPER NUMBER 2871 NOTIFICATION DATE DELIVERY MODE 08/04/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@ipfirm.com pair_lhhb@firsttofile.com EAnastasio@IPFirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KOUJI KIMURA, KAZUO KIT ADA, TOMOKAZU YURA, SATORU KOSHIO, FUMIHITO SHIMANOE, and TAKUYANAKAZONO Appeal2014-009706 Application 12/903,977 Technology Center 2800 Before BRUCE R. WINSOR, JON M. JURGOV AN, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Non-Final Rejection of claims 19, 20, 37, and 38. Claims 1-18 and 21-36 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is Nitto Denko Corp. App. Br. 2. Appeal2014-009706 Application 12/903,977 THE INVENTION Appellants' invention relates to an information storage/readout device for use in a system for continuously manufacturing liquid-crystal display elements. Abstract. Exemplary independent claim 19 is reproduced below. 19. An information storage/readout device for use in a system for continuously manufacturing liquid-crystal display elements, the system for continuously manufacturing liquid-crystal display elements being configured to work with a roll of a continuous optical film laminate which comprises a continuous polarizing composite film including an adhesive layer and having a width conforming to a long or short side of a liquid-crystal panel formed in a given size, and a continuous carrier film releasably laminated on the adhesive layer, the system for continuously manufacturing liquid-crystal display elements being configured to form a plurality of slits in the continuous optical film laminate fed out from the roll, along a direction perpendicular to a longitudinal direction thereof, to make it possible to sequentially cut a plurality of polarizing sheets each having a given length corresponding to the long or short side of the liquid-crystal panel from the continuous optical film laminate and to laminate the sheets to respective ones of a plurality of the liquid-crystal panels so as to continuously manufacture liquid-crystal display elements, wherein said information storage/readout device is configured to be operated with a roll of continuous optical film laminate comprising a continuous polarizing composite film which has been subjected to an inspection before the continuous polarizing film is wound into the roll to detect a position of any defect, wherein said roll of the continuous optical film laminate is provided with identification means including an identification indicia for identifying the roll, wherein the information storage/readout device comprises an information storage medium which stores therein slitting position information created based on the position of the defect 2 Appeal2014-009706 Application 12/903,977 aetectea Dy saw inspection of the continuous poianzmg composite film included in a continuous optical film laminate in said roll to indicate defective-polarizing-sheet slitting positions defining a defective or defect-containing polarizing sheet, and normal-polarizing-sheet slitting positions defining a normal or defect-free polarizing sheet, in the continuous inspected optical film laminate, said slitting position information being associated with said identification indicia of said identification means on said roll, wherein the system for continuously manufacturing liquid-crystal display elements is operable, based on the slitting position information read out from the information storage medium in accordance with reading of the identification indicia of said identification means from the continuous inspected optical film laminate, and distance measurement data obtained from a feed distance of the continuous inspected optical film laminate from the roll, to form a plurality of slits in the continuous inspected optical film laminate from a surface opposite to the continuous carrier film to a depth reaching a surface of the continuous carrier film adjacent to the adhesive layer, to make it possible to cut a plurality of the normal polarizing sheets each having a length corresponding to the long or short side of the liquid-crystal panel from the continuous inspected optical film laminate, and to laminate the sheets to respective ones of a plurality of the liquid-crystal panels. REFERENCES and REJECTIONS 1. Claims 19, 20, 37, and 38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kitada (US 2009/0199950 Al, Aug. 13, 2009) and Koto (JP 2003-202298, July 18, 2003). ANALYSIS Appellants argue that "a vast majority of the recited claim language is completely disregarded by the Examiner" and that this disregard is heavily 3 Appeal2014-009706 Application 12/903,977 based on an unreasonable and unclear application of ivIPEP § 2114. App. Br. 16. The Examiner finds the invention of claim 19 is "directed only [to] an information storage/readout device comprising an information storage medium which is capable of storing data." Ans. 2. According to the Examiner "[t]he remaining limitations found in the claims are directed to an intended use of the information storage/readout device." Id. The Examiner gives little to no patentable weight to many of the limitations found in representative claim 19, including most of the recitation of the preamble, the recitation of the last wherein clause, and significant portions of the remaining wherein clauses. See e.g. Final Act. 7. Under this interpretation, the Examiner rejects claims 19, 20, 37, and 38 based on findings that Kitada and Koto teach or suggest an information storage/readout device that is used in a system for manufacturing liquid-crystal display elements, and is capable of storing data. Final Act. 4--7. We do not sustain the Examiner's rejection of claims 19, 20, 37, and 38 under 35 U.S.C. § 103(a) as unpatentable over Kitada and Koto because the rejection is based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) ("We do not think a rejection under 35 U.S.C. § 103 should be based on ... speculations and assumptions .... [I]t is essential to know what the claims do in fact cover.") However, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 19, 20, 37, and 38 under 35 U.S.C. § 112 second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 4 Appeal2014-009706 Application 12/903,977 We agree with the Examiner that the claims are directed to an information storage/readout device i.e., a machine or apparatus. See Ans. 2. Courts have generally interpreted "configured to" more narrowly than simply "capable of." See Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed.Cir.2011) (construing "memory ... configured to" as "memory that must perform the recited function"). On the other hand, "apparatus claims cover what a device is, not what a device does." Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). As the claims are drafted, it is not clear which of the claim recitations are directed to an intended use of the information storage/readout device, and as the Examiner finds, are merely functional in nature without imparting structural limitations, and which recitations describe capabilities and functions actually performed by the information storage/readout device, thus constituting functions and structure that do limit the scope of the claim. This difficulty stems from the fact that the claim is explicitly directed to an information storage/readout device, but also describes, in detail, aspects of a "system for continuously manufacturing liquid-crystal display elements" in which the information storage/readout device is to be used. Discerning which recitations are directed to the capabilities of the information storage/readout device and which are descriptions of other elements of the system in which the device is used is determinative of whether these recitations are to be given patentable weight. However, because the claim is susceptible to more than one reasonable interpretation, it is indefinite because the scope of the claim differs significantly depending on which of the reasonable interpretations one adopts. See Ex parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211(BPAI2008) (precedential) (During patent 5 Appeal2014-009706 Application 12/903,977 examination, "if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention .... ") For example, claim 19 recites "wherein said information storage/readout device is configured to be operated with a roll of ... film which has been subjected to an inspection before [it] is wound into the roll to detect a position of any defect." App. Br. 20 (Claims Appx.). It is unclear whether and what portions of the claim limitation "wherein said information storage/readout device is configured to be operated with a roll of ... film which has been subjected to an inspection before [it] is wound into the roll to detect a position of any defect" are directed to the information storage/readout device and which are directed to other aspects of the system in which the storage/readout device is intended to be used. Similarly, claim 19 also recites "wherein the information storage/readout device comprises an information storage medium which stores therein slitting position information created based on the position of the defect detected by said inspection of the ... film." Again, whether the slitting position information is functionally related to the information storage/readout device depends on whether the claim limitations of inspecting the film, detecting defects in the film, and creating/ calculating slitting position information are directed to the information storage/readout device, or whether they are mere descriptions of the system in which the information storage/readout medium is intended to be used. One of ordinary skill in the art would not understand whether the limitations of claim 19 are directed to an information storage/readout device or to other aspects of the system in which the storage/readout device is 6 Appeal2014-009706 Application 12/903,977 intended to be used. Accordingly, we conclude claim 19 is indefinite under 35 U.S.C. § 112 second paragraph for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. For the same reasons, we also conclude claim 37, which is drafted in the same manner, and claims 20 and 38 which depend from claims 19 and 37 respectively, are also indefinite. DECISION The Examiner's rejection of claims 19, 20, 37, and 38 is reversed. We enter a new ground of rejection of claims 19, 20, 37, and 38 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 3 7 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. 7 Appeal2014-009706 Application 12/903,977 ~L) Kequest rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. REVERSED 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation