Ex Parte Lee et al

Patent Trial and Appeal Board

Jan 28, 2013

11512102 (P.T.A.B. Jan. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte IK-SANG LEE, SUNG-WON BAE, YEUNG-KI KIM,
KWANG-JIN JEONG, and GUN-GUE PARK
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Appeal 2010-010019
Application 11/512,102
Technology Center 3700
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Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Ik-Sang Lee et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1-36. We have jurisdiction over
this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a packing assembly including a
plurality of packing modules for packing display modules. Spec. 1, paras.
[0002] and [0003].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A packing module, comprising:
a seating unit adapted to seat at least one display module
including a signal transmitting member and a chassis;
a first frame unit adapted to surround at least a portion of
the at least one display module; and
a protection member arranged between the signal
transmitting member of one of the at least one display module
and the first frame unit and adapted to protect the signal
transmitting member.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Fletcher US 4,823,952 Apr. 25, 1989
Kopf US 4,872,723 Oct. 10, 1989
Murphy US 5,103,976 Apr. 14, 1992
Thomas US 6,227,372 B1 May 8, 2001
Nakazono US 6,296,122 B1 Oct. 2, 2001

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The following rejections are before us for review:
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement1.
The Examiner rejected claims 1-23 under 35 U.S.C. § 112, second
paragraph, for being indefinite.
The Examiner rejected claims 1-4, 6-8, 11-13, 15-21, 24-28, 31-33,
and 36 under 35 U.S.C. § 102(b) as anticipated by Murphy.2
The Examiner rejected claims 22 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Murphy.
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Murphy and Nakazono.
The Examiner rejected claims 9, 10, and 14 under 35 U.S.C. § 103(a)
as unpatentable over Murphy and Thomas.
The Examiner rejected claims 29 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Murphy and Fletcher.
The Examiner rejected claims 34 and 35 under 35 U.S.C. § 103(a) as
unpatentable over Murphy and Kopf.

1 The rejection of claim 20 under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement appears to have
been withdrawn by the Examiner. Compare Final Rejection, mailed October
5, 2009, at 2 with Ans. 2.
2 Although claims 33 and 36 do not appear in the heading of this
rejection, the Examiner addresses them in the body of the rejection. Ans. 7.
Hence, for the purpose of this appeal, we consider the omission of claims 33
and 36 in the heading of this rejection as a mere typographical error on the
part of the Examiner.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The written description rejection
The Examiner found that because Appellants’ Drawings are not drawn
to scale, the limitations of “wherein each of the plurality of protrusions has a
height that is smaller than either a length and a width of the protrusion,” as
per claim 3, and “an opening having a size that corresponds to an entire
display portion of one of the at least one display module,” as per claim 4, are
not supported by Appellants’ original disclosure. Ans. 3 and 14.
It is well settled that the fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991). In this case, neither claim 3 nor claim 4 requires specific
dimensions of the claimed protrusion or opening, respectively. Thus,
although we appreciate that Appellants’ Drawings are not drawn to scale,
nonetheless, we agree with Appellants that Figure 3 of Appellants’ Drawings
shows that “the length and the width of each protrusion 111 is greater than
the height.” Br. 23. We further agree with Appellants that:
Because Appellants[’] paragraph 0054 and claim
31 as originally filed states that the display area D
of the display module can[]not come in contact
with the anti-sliding layer 112 formed on seating
unit 110 because of scratching and damaging the
image producing display area D of the display . . .
Appellants[’] paragraph 0054 and claim 31 as
originally filed supports the fact that the entirety of
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the display area resides in the opening 110a of the
seating unit.

Br. 24; see also Figure 7 of Appellants’ Drawings.
Accordingly, for the foregoing reasons, we conclude that Appellants’
Specification reasonably conveys to those skilled in the art that Appellants
had possession of the subject matter of claims 3 and 4 as of the filing date of
the present application. Therefore, we shall not sustain the rejection of
claims 3 and 4 under 35 U.S.C. § 112, first paragraph, for failing to comply
with the written description requirement.

The indefiniteness rejection
The Examiner found that the limitations "the signal transmitting
member" and "the chassis" of "one of the at least one display module," as
recited per claims 1, 15, 16, and 19, make it “unclear whether applicant[s]
[are] intending to claim a combination of packing module and a display
module or just the packing module.” Ans. 3; see also Ans. 14.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). In this case, we agree with Appellants that the limitations
mentioned supra are “defining the [claimed] packing module in terms of the
workpiece (i.e., the display module).” Br. 25. We further agree with
Appellants that the limitations "the signal transmitting member" and "the
chassis" of "one of the at least one display module” merely further limit the
claimed packing module. Id. Thus, we shall not sustain the indefiniteness
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rejection of claims 1, 15, 16, and 19 under 35 U.S.C. § 112, second
paragraph.

The anticipation rejection based upon Murphy
Claim 1
The Examiner found that template 80 of Murphy constitutes the
claimed “protection member.” Ans. 4. Appellants argue that template 80 of
Murphy does not constitute the claimed “protection member” because
template 80: (1) “is removed and is not part of the final structure” and (2)
“does not protect the IC chips 11 or their terminal pins 21 but is only used to
guide the IC chips 11 and terminal pins 21 into their proper location within
tray 10.” Br. 14. The Examiner responds that “[t]he template 80 of Murphy
does not have to be part of the final structure to read on appellants[’]
protection member.” Ans. 12. According to the Examiner, “template 80 is a
member that is capable of protecting the tray or the display modules from
being damaged from the top.” Id.
At the outset, we note that the limitation of “a protection member . . .
adapted to protect the signal transmitting member,” as called for in
independent claim 1, constitutes functional language as it describes the
“intended use” of the protection member as opposed to a structural element
of the protection member. See Ans. 11-12. It is well established that
features of an apparatus may be recited either structurally or functionally,
however, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997). “[A]pparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
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F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, as long as template 80 of
Murphy is capable of protecting the signal transmitting member, even
temporarily, template 80 of Murphy meets the limitation of independent
claim 1. In this case, because IC chips 11 are lowered through holes 86, 87
such that template 80 is positioned above IC chips 11, we agree with the
Examiner that template 80 protects IC chips from being damaged from the
top. See Ans. 12; see also Murphy, col. 8, ll. 24-33 and figs. 1 and 4.
Moreover, although we appreciate that template 80 of Murphy is not part of
the tray 10, nonetheless, because template 80 is capable of protecting IC
chips 11, we agree with the Examiner that template 80 constitutes the
claimed “protection member,” as called for in independent claim 1. As such,
the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Murphy
is sustained.

Claims 2 and 33
Dependent claim 2 adds the limitation that “the seating unit comprises
a plurality of protrusions, each of the protrusions comprises a flat top surface
that mates with a portion of a non-display area of one of the at least one
display module.” Br., Claims App’x. Pointing to Figures 2 and 4, the
Examiner found that Murphy teaches protrusions 112 located on seating unit
50. Ans. 4, 12. The Examiner further noted that “each of the protrusions
[112] . . . is capable of mating with a portion of a non[-]display area of one
of the at least one display module.” Ans. 4. In contrast to the Examiner’s
position, Appellants argue that, “ribs 112 of Murphy do not mate with or
touch in any way the IC chips 11.” Br. 17.
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Murphy teaches that the ends of vertically extending ribs 112 formed
in beams 27 and 30 in each of pocket storage areas 36 and 41 are spaced
from adjacent cross beams, “such as cross beam 32, the same distance as the
distance between adjacent cross beams 32 and 33.” Murphy, col. 9, ll. 56-
68. Thus, we agree with Appellants that, “ribs 112 are merely used to
reduce the size of storage areas 36, 41, 42 and 46 so that they are of the same
size as the other storage areas 37, 38, 40, 43, 44, and 45.” Br. 17; see also
Murphy, col. 9, ll. 67-68 (“[T]he overall effective area for storing PGA
components is the same for each storage pocket area.”). We could not find
any portion in Murphy and the Examiner has not pointed to any portion that
teaches any contact between ribs 112 and IC chips 11 (see e.g., Murphy, fig.
4, which shows IC chip 17 positioned away from beam 30 with ribs 112 and
capable of contacting upstanding ribs 51, 55, 56, 60, 61, and 57). Hence,
because ribs 112 of Murphy are not capable of contacting IC chips 11, we do
not agree with the Examiner’s position that “each of the protrusions [112] . .
. is capable of mating with a portion of a non[-]display area of one of the at
least one display module,” as called for by claim 2.
Accordingly, we do not sustain the anticipation rejection of claim 2
and its dependent claim 33.

Claim 3
Dependent claim 3 adds the limitation that “each of the plurality of
protrusions has a height that is smaller than either a length and a width of the
protrusion.” Br., Claims App’x. Appellants argue that the Examiner “has
never addressed the limitation of Appellants[’] claim 3.” Br. 17. In
response, the Examiner takes the position that because “the original
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specification didn’t support these limitations and the drawings have not been
indicated as being to scale, appellant[s] can not [sic] rely at this point on
what is shown in the drawings in order to define over the applied art.” Ans.
13.
We agree with Appellants that the Examiner has not made any
findings with respect to the limitation that “each of the plurality of
protrusions has a height that is smaller than either a length and a width of the
protrusion,” as called for by claim 3. Moreover, for the reasons set forth
supra, we find that Appellants’ Specification reasonably conveys to those
skilled in the art that Appellants had possession of the subject matter of
claim 3 as of the filing date of the present application. Therefore, for the
foregoing reasons, we do not sustain the rejection of claim 3 as anticipated
by Murphy.

Claim 6
Dependent claim 6 adds the limitation that “the first unit frame
comprises a taper part adapted to guide one of the at least one display
module on an inner surface of the first frame unit.” Br., Claims App’x. The
Examiner found that Murphy “discloses the first frame unit having a taper
part defining slot 94 capable of guiding one display module on an inner
surface of the first frame unit.” Ans. 4. Appellants argue that slot 94 of
Murphy “is merely to allow for the manual removal of the IC chips 11 by
allowing an individual to grasp an edge of the IC chip more readily.” Br.
19-20. The Examiner responds that “[i]f the prior art structure is capable of
performing the intended use (i.e., guiding a display module) then it meets the
claim. “ Ans. 13.
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Although we appreciate the Examiner’s position, nonetheless, we
agree with Appellants that, “because there is no gradual inclined surface
from frame edge down into the storage areas in Murphy,” slot 94 of Murphy
“is not and can not [sic] be used to guide an IC chip into place.” Br. 20.
Murphy specifically teaches that slots 94, 95 “enable an individual to grasp
the edge of a PGA component more readily.” Murphy, col. 8, ll. 41-42 and
fig. 1. Moreover, in Murphy, IC chips 11 are positioned into tray 10 by
being lowered through apertures 86, 87 of template 80. Id., col. 8, ll. 24-33.
Thus, because slots 94, 95 do not come into contact with IC chips 11 when
positioning the chips into tray 10, we do not agree with the Examiner’s
position that slot 94 is capable of guiding one display module on an inner
surface of the first frame unit, as called for by claim 6. Hence, we do not
sustain the rejection of claim 6 under 35 U.S.C. § 102(b) as anticipated by
Murphy.

Claims 11 and 32
Each of dependent claims 11 and 32 adds the limitation of “a second
frame unit adapted to surround at least a portion of the first frame unit.” Br.,
Claims App’x. The Examiner found that:
[T]he first frame unit of Murphy has been
identified by the examiner as the frame that defines
each storage pocket areas 36-38 and 40-46. These
pocket areas are surrounded by a second frame 24
as shown in figure 1 and column 5, lines 57-67.
The fact that the front beam 25 and rear beam 26
of Murphy are part of the second frame 24 doesn't
prevent a portion of the beams from being part of
the first frame units.
Ans. 13.
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Appellants argue that because framework 24 of Murphy also defines
pocket storage areas 36-38 and 40-46, framework 24 cannot constitute the
claimed “second frame unit adapted to surround at least a portion of the first
frame unit.” Br. 18. According to Appellants, “the same unit in Murphy
can[-]not fairly be relied on for a teaching of two separate elements,”
namely, a first frame unit and a second frame unit, as called for by claims
11 and 32. Br. 19.
Although we appreciate that framework 24 of Murphy also defines
pocket storage areas 36-38 and 40-46, nonetheless, framework 24 does
surround a portion of pocket storage areas 36-38 and 40-46, as called for by
claims 11 and 32. Murphy specifically teaches that center beam 31 and
intermediate center beams 32, 33, 34, and 35 partially surround pocket
storage areas 36-38 and 40-46. Murphy, col. 5, l. 67 through col. 6, l. 6 and
fig. 1. Murphy further teaches that framework 24 defines the periphery of
tray 10. Id., col. 5, ll. 61-67 and fig. 1. Thus, we agree with the Examiner
that pocket storage areas 36-38 and 40-46, as defined by center beam 31 and
intermediate center beams 32, 33, 34, and 35, constitute the claimed “first
frame unit” and framework 24 constitutes the claimed “second frame unit.”
See Ans. 13. Therefore, we sustain the anticipation rejection of claims 11
and 32.

Claim 18
Dependent claim 18 adds the limitation that “the protection member
comprises a plurality of fixing plates and the first frame unit comprises a
plurality of fixing protrusions.” Br., Claims App’x. Appellants argue that,
“template 80 in Murphy does not have any fixing plates” because “template
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80 is never fixed to tray 10,” but merely “overlies a storage area within tray
10.” Br. 15.
We are not persuaded by Appellants’ arguments because we agree
with the Examiner that “fingers 84-85 of Murphy read on appellant’s fixing
plates.” Ans. 12. We further agree with the Examiner that in Figure 3 of
Murphy, first frame unit defined by storage pocket areas 36-38 and 40-46
(see Ans. 13) includes a plurality of fixing protrusions. Id. Thus, the
anticipation rejection of claim 18 is likewise sustained.

Claim 20
Dependent claim 20 adds the limitation of “an exhaust pipe fixing
hole arranged at an end of the protection member to correspond to a corner
of the seating unit.” Br., Claims App’x. Pointing to Figure 1 of Murphy, the
Examiner found that Murphy teaches “an exhaust pipe fixing hole 86
arranged at an end of the protection member 80.” Ans. 5-6. According to the
Examiner, “Figure 1 of Murphy clearly shows the hole 86 corresponding to a
corner of the seating unit 50.” Ans. 14. Appellants argue that, “openings 86
and 87 of template 80 can not [sic] ever be at a corner of a base plate section
[50].” Br. 20.
As noted supra, Murphy specifically teaches that IC chips 11 are
positioned into tray 10 by being lowered through apertures 86, 87 of
template 80. Murphy, col. 8, ll. 24-33 and fig. 1. Thus, we agree with
Appellants that “openings 86 and 87 in template 80 will always correspond
to a center of a base plate 50 and not to a corner as claimed by Appellant.”
Br. 21. As such, we do not agree with the Examiner’s finding that “Figure 1
of Murphy clearly shows the hole 86 corresponding to a corner of the seating
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unit 50.” Ans. 14. Accordingly, we do not sustain the anticipation rejection
of claim 20.

Claim 24
The Examiner found that Murphy teaches display modules 20. Ans.
6. Appellants argue that, “reference numeral 20 in Murphy is an integrated
circuit (IC) chip, not a display module.” Br. 13. According to Appellants,
“[n]othing in Murphy discloses that the PGA IC 20 is a display module or
that PGA IC 20 can display images.” Id.
We are not persuaded by Appellants’ arguments because although the
claims are interpreted in light of the Specification, limitations from the
Specification are not read into the claims. We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In this
case, we agree with the Examiner that a “display module” as described by
Appellants’ Specification is not limited to a “display panel,” because it “can
be a chassis itself.” Ans. 11; see also Spec. 1-2, para. [0003]. Thus, we
agree with the Examiner that because the IC chips of Murphy “can be
displayed, or display[] some information such as model or serial number or
manufacturer,” the IC chips of Murphy constitute “a plurality of display
modules,” as broadly claimed by independent claim 24. Ans. 11.
Appellants also argue that template 80 of Murphy does not constitute
the claimed “protection member.” Br. 13-14. However, for the reasons set
forth supra, we agree with the Examiner that template 80 constitutes the
claimed “protection member,” as called for in independent claim 24.
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In conclusion, for the foregoing reasons, the rejection of independent
claim 24 under 35 U.S.C. § 102(b) as anticipated by Murphy is sustained.

Claims 4, 7, 8, 12, 13, 15-17, 19, 21, 25-28, 31, and 36
With respect to the rejection of claims 4, 7, 8, 12, 13, 15-17, 19, 21,
25-28, 31, and 36, Appellants do not make any separate arguments. Thus,
we sustain the rejection of claims 4, 7, 8, 12, 13, 15-17, 19, 21, 25-28, 31,
and 36 as anticipated by Murphy.

The obviousness rejections
Appellants rely on the same arguments as presented above with
respect to the anticipation rejection of claims 1, 11, and 24. Br. 21-22.
Thus, for the reasons set forth supra, the rejections under 35 U.S.C. § 103(a)
of claims 22 and 23 as unpatentable over Murphy; of claim 5 as unpatentable
over Murphy and Nakazono; of claims 9, 10, and 14 as unpatentable over
Murphy and Thomas; of claims 29 and 30 as unpatentable over Murphy and
Fletcher; and of claim 35 as unpatentable over Murphy and Kopf are
likewise sustained.
With respect to claim 34, which depends from claim 2, the addition of
Kopf does not remedy the deficiency of Murphy as described supra.
Accordingly, we do not sustain the rejection of claim 34 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Murphy and Kopf.

SUMMARY
The Examiner’s decision is affirmed as to claims 1, 4, 5, 7-19, and 21-
32, 35, and 36 and reversed as to claims 2, 3, 6, 20, 33, and 34.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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