14633781 (P.T.A.B. Oct. 11, 2018)

Ex Parte KOO et al

Patent Trial and Appeal BoardOct 11, 2018

14633781 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/633,781 02/27/2015 30593 7590 10/15/2018 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 FIRST NAMED INVENTOR BonwonKOO 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. 2557SI-002297-US 6706 EXAMINER AZAR!, SEPEHR ART UNIT PAPER NUMBER 2691 NOTIFICATION DATE DELIVERY MODE 10/15/2018 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): dcmailroom@hdp.com jcastellano@hdp.com jhill@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BONWON KOO, DEUKSEOK CHUNG, HYUNJOON KIM, SHANGHYEUN PARK, CHANGSOO LEE, and TAEWON JEONG 1 Appeal2018-001969 Application 14/633,781 Technology Center 2600 Before ST. JOHN COURTENAY III, JASON J. CHUNG, and SCOTT B. HOWARD, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1-19 and 21-25. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. INVENTION The invention is directed to an electro-chromic panel capable of selectively making a transparent and a reflective area. Spec. ,r 2. Claim 1 is illustrative of the invention and is reproduced below: 1. An electro-chromic panel comprising: 1 According to Appellants, Samsung Electronics Co., Ltd. is the real party in interest. App. Br. 2. 2 Claim 20 has been canceled. App. Br. 20. Appeal2018-001969 Application 14/633,781 a detection layer; and an electro-chromic layer configured to switch an operational mode of a selected area between a transmission mode and a reflective mode according to a signal provided from the detection layer. REJECTIONS AT ISSUE Claims 1-7, 9-11, 13, 14, 17-19, 21, 23, and 24 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination ofWassingbo3 and Kuroki4 . Ans. 2-12. 5 Claim 8 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Wassingbo, Kuroki, and Tam 6. Ans. 13. Claims 12 and 25 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination ofWassingbo, Kuroki, and Nam 7. Ans. 13-15. 3 Wassingbo, US 2009/0262085 Al, published Oct. 22, 2009. 4 Kuroki, US 2013/0328780 Al, published Dec. 12, 2013. 5 The Answer includes claims 10 and 21 in the rejection heading. Ans. 2. However, claims 10 and 21 are not included in the body of the rejection. Id. at 2-11. The Answer subsequently states "[c]laims 10 and 21 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Wassingbo." Id. at 11-12. Because claims 10 and 21 depend from independent claims 6 and 1 7, respectively, we interpret the Examiner's subsequent heading and rejection (see id. at 11-12) to be a typographical error. Accordingly, we make the appropriate corrections in our listing of the rejections by grouping the rejections from pages 2-12 of the Answer together. 6 Tam, US 2008/0238871 Al, published Oct. 2, 2008. 7 Nam, 2013/0307801 Al, published Nov. 21, 2013. 2 Appeal2018-001969 Application 14/633,781 Claims 15 and 16 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Wassingbo, Kuroki, and Lee8â€¢ Ans. 15-17. Claim 22 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Wassingbo, Kuroki, and Han. Ans. 17. ANALYSIS The Examiner finds W assingbo teaches switching between a transparent mode and an opaque mode. Ans. 3, 18 (citing Wassingbo ,r,r 60- 61, 63, 69-71, Figs. 6A---6C). 9 In addition, the Examiner finds Kuroki teaches switching between a transparent state and a reflective state. Ans. 3 (citing Kuroki ,r 38). The Examiner concludes since a reflective surface is a type of opaque surface, a person having ordinary skill in the art at the time of the invention would have combined W assingbo and Kuroki to provide a reflective effect for Wassingbo' s non-active areas based on a simple substitution of one known element for another to obtain predictable results. Ans. 3--4. 8 Lee, US 2014/0062899 Al, published March 6, 2014. 9 The Examiner entered the claim amendments that incorporated the features from dependent claim 20 into independent claims 1, 6, 13, and 17 in an Advisory Action mailed February 16, 2017. The Examiner shifts their theory of unpatentability by citing to Wassingbo' s Figures 6A-6C and paragraph 63 for the first time in the Answer pertaining to claim 1. Compare Final Act. 3, 9 with Ans. 18 (citing Wassingbo, Figs. 6A-6C, ,r 63). Accordingly, we conclude Appellant's arguments pertaining to the combination being inoperative for its intended purpose (see Reply Br. 3--4) are raised timely. 3 Appeal2018-001969 Application 14/633,781 Appellants argue Kuroki's transmittance-controllable structure 130 that includes transmittance-controllable layer 135 is part of a light source, whereas Wassingbo' s smart glass layer 16 is part of an information display apparatus and not part of a light source. App. Br. 9. Furthermore, Appellants argue a person having ordinary skill in the art at the time of the invention would not have combined Wassingbo and Kuroki because Kuroki' s transmittance-controllable layer 13 5 would be incorporated into Wassingbo's light source 12 as both are utilized in a backlight assembly. Id. Appellants also argue Wassingbo teaches a display with transparent regions (i.e., activated regions) where letters are located and opaque regions (i.e., non-activated regions) forming a backdrop to the displayed letters. Reply Br. 3 (citing Wassingbo, Figs. 6A---6C). According to Appellants, a person having ordinary skill in the art at the time of the invention would not have replaced Wassingbo's opaque regions (i.e., non-activated regions) with Kuroki' s reflective because the combination would prevent transparent regions from being displayed because of the brightness created by reflective regions. Id. at 3--4 (citing Wassingbo, Figs. 6A---6C). Further, Appellants argue Wassingbo's non-activated regions would be replaced with Kuroki's transmittance-controllable structure 130 having voltage that causes a light transmittance that reflects the light emitted. Reply Br. 4. Appellants argue replacing Wassingbo's non-activated region with Kuroki and not activating Kuroki (i.e., Kuroki's reflective property requires activation by transmittance controllable structure 130 becoming reflective requires the application of a voltage in order to have reflective structure) would render both Wassingbo and Kuroki inoperative for their intended purpose. Id. 4 Appeal2018-001969 Application 14/633,781 We agree with Appellants for the reasons stated in Appellants' arguments paraphrased supra. Combinations that change the "basic principles under which the [prior art] was designed to operate," In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or that render the prior art "inoperable for its intended purpose," In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to support a conclusion of obviousness. In the present case, the Examiner's finding that because a reflective surface is a type of opaque surface, a person having ordinary skill in the art at the time of the invention would have combined W assingbo and Kuroki to provide a reflective effect for Wassingbo' s non-active areas based on a simple substitution of one known element for another to obtain predictable results (see Ans. 3--4) is not supported by a preponderance of the evidence. Even if a person having ordinary skill in the art at the time of the invention had attempted to combine Wassingbo and Kuroki based on a simple substitution, we conclude this combination would not yield a predictable result because: (1) the combination would prevent transparent regions from being displayed because of the brightness created by reflective regions (see Reply Br. 3--4); and (2) replacing Wassingbo's non-activated region with Kuroki and not activating Kuroki, which requires activation to have reflective properties, would cause the combination to lack reflective properties (see id. at 4). Accordingly, we do not sustain the Examiner's rejection for: (1) independent claims 1, 6, 13, and 17; and (2) dependent claims 2-5, 7-12, 14--16, 18, 19, and 21-25 under 35 U.S.C. Â§ 103. 5 Appeal2018-001969 Application 14/633,781 DECISION We reverse the Examiner's decision rejecting claims 1-19 and 21-25 under 35 U.S.C. Â§ 103. REVERSED 6