Ex Parte Macknik et alDownload PDFPatent Trial and Appeal BoardAug 30, 201612933739 (P.T.A.B. Aug. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/933,739 12/22/2010 132052 7590 09/01/2016 Hahn Loeser & Parks, LLP - Chicago 125 South Wacker Drive Suite 2900 Chicago, IL 60606 FIRST NAMED INVENTOR Stephen L. Macknik 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. 1609/ 105486-us 1309 EXAMINER ALAEDDINI, BORNA ART UNIT PAPER NUMBER 2844 NOTIFICATION DATE DELIVERY MODE 09/01/2016 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): patents@hahnlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN L. MACKNIK and SUSANA MARTINEZ-CONDE Appeal2015-003262 Application 12/933,739 Technology Center 2800 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 filed an appeal under 35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 1-21. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). 1 Our decision refers to the Specification filed Feb. 20, 2014 (Spec.), the Final Office Action mailed June 19, 2014 (Final Act.), Appellants' Appeal Brief filed Sept. 30, 2014 (Appeal Br.), the Examiner's Answer mailed Nov. 10, 2014 (Ans.), and Appellants' Reply Brief filed Dec. 18, 2014 (Reply Br.). 2 Appellants identify the real party in interest as Dignity Health. Appeal Br. 2. Appeal2015-003262 Application 12/933,739 We AFFIRM. The claims on appeal are directed to methods and apparatuses for decreasing a power output of a light source without decreasing brightness (see, e.g., claims 1, 8, and 15). This is accomplished by decreasing the duration of the light stimulus to an optimal range. Spec. p. 4, 11. 11-13. Appellants disclose that this approach optimizes power efficiency. Spec. p. 4, 11. 16-19. Independent claim 1 is illustrative of the subject matter on appeal. Claim 1 is reproduced from the Claims Appendix of the Appeal Brief with limitations at issue in the appeal italicized: 1. A method of decreasing a power output of a light source without decreasing brightness comprising: providing luminance from the light source; and a processor improving a perceived visual contrast of a subject against a background while decreasing power output without decreasing brightness by activating the light source for a predetermined time period of less than 100 milliseconds followed by deactivating the light source and repeating said activating and deactivating steps with an appropriate repetition rate sufficient to optimize brightness and contrast. Appeal Br. 11 (Claims App'x) (emphasis added). The claims on appeal stand rejected as follows: 3 (1) claims 1-18, 20, and 21under35 U.S.C. § 102(b) as anticipated 3 The rejection of claims 1-7 under 35 U.S.C. § 101 was withdrawn by the Examiner. Ans. 2. The Examiner also confirmed in the Answer that claims 8-14 were not rejected under 35 U.S.C. § 112 i-f 6. Ans. 2. Rather, the Examiner cites the statute to support the Examiner's interpretation of the means plus function clauses of claims 8-14. Id. 2 Appeal2015-003262 Application 12/933,739 by Cheng;4 and (2) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Cheng in view of Ohtomo. 5 OPINION Rejection over Cheng Claims 1-18, 20, and 21 are rejected under 35 U.S.C. § 102(b) as being anticipated by Cheng. Appellants do not argue any claim apart from the others. We select claim 1 as representative for resolving the issues on appeal for claims 1-18, 2 0, and 21. The dispositive issue on appeal is whether Appellants have identified a reversible error in the Examiner's finding that Cheng discloses "an appropriate repetition rate sufficient to optimize brightness and contrast," as recited in claim 1. Appellants contend Cheng is directed to a backlighting system that provides an improved rate of energy consumption without optimizing brightness and contrast, as recited in claim 1. Appeal Br. 8-9; Reply Br. 2. We analyze Appellants' arguments by first construing the language of claim 1. At the outset, we note that claim 1 is directed to a method, but only includes one affirmative method step, i.e., the step of "providing luminance from the light source." Claim 1, clause 1. The second clause of the claim is not directed to an affirmative method step, but to a processor, i.e., a 4 Cheng et al., Temporal Vision-Guided Energy Minimization for Portable Displays, ISLPED '06, p. 89-94, Oct. 4, 2006 ("Cheng"). 5 Ohtomo et al., US 6,084,896 A, issued July 4, 2000 ("Ohtomo"). 3 Appeal2015-003262 Application 12/933,739 structure. The functional recitation "by activating the light source ... " within the second clause is interpreted as a functional limitation of the processor structure. 6 Turning now to the recitation that is the focus of the appeal, i.e., the recitation "an appropriate repetition rate to optimize brightness and contrast," we note that "to optimize brightness and contrast" functions to limit the repetition rates encompassed by the claimed function of the processor. Claim 1 does not recite a particular repetition rate to accomplish optimization of brightness and contrast. Thus, from the claim alone, we are unable to determine the range of repetition rates encompassed by the claim. To consider this issue further, we tum to the Specification to determine if a repetition rate has been defined by Appellants or if there is any other guidance as to the range encompassed. Page 7, lines 6-7 of the Specification state "[t]he repetition rate may be chosen as any value that attracts attention or at some chosen rate that eliminates flicker." The Specification further states: It should be noted that prior art imaging devices could not operate at a repetition rate below 30 Hz because of flicker. However, the system 10 can operate significantly below 30 Hz because of the visual masking produced by the 84 ms pulse. 6 Because the second clause is directed to a processor rather than to a step of providing the processor or some other affirmative method step involving the processor, the claim creates an ambiguity: It is not clear how the processor relates to the overall method of the claim. Appellants should remedy this ambiguity should there be further prosecution. See Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (emphasizing that claim language should "provide a clear-cut indication of the scope of subject matter embraced by the claim" and noting "that the patent drafter is in the best position to resolve the ambiguity in the patent claims"). 4 Appeal2015-003262 Application 12/933,739 Spec. 7:19-21. The Specification further states "some fraction of 60 cycles per second (e.g., 20 Hz)" can be used and that the repetition rate is controlled to avoid flicker. Spec. p. 7, 11. 28-29 and p. 8, 11. 1-2. In view of the above, although the Specification discloses that "any value" may be chosen for a repetition rate as long as flicker is eliminated and provides exemplary values for the repetition rate "(e.g., 20 Hz)," the Specification does not clearly define a repetition rate to achieve optimization of brightness and contrast. Turning to the rejection, the Examiner finds Cheng discloses a method of decreasing a power output of a light source without decreasing brightness by providing luminance from the light source. Final Act. 5. The Examiner finds Cheng discloses a processor that activates a light source for a predetermined time period of less than 100 milliseconds followed by deactivating the light source and repeating the activating and deactivating steps with an appropriate repetition rate sufficient to optimize brightness and contrast, as recited in claim 1. Final Act. 5---6. In particular, the Examiner finds Cheng discloses cycling the light on and off over a range of frequencies having a range of 5 to 20 Hz, which the Examiner equates to a period of 50 to 200 ms. Final Act. 5-6. The disclosure of Cheng supports the Examiner's findings. Cheng discloses that there is a "Brucke brightness enhancement effect," such that when a light is repeatedly cycled on and off, its brightness varies according to the frequency of the cycling. Cheng p. 91. Cheng discloses this effect reaches a maximum over the range of 5 to 20 Hz, depending on the intensity of light. Cheng p. 91. Thus, Cheng suggests optimizing brightness by using 5 Appeal2015-003262 Application 12/933,739 a frequency in the range of 5 to 20 Hz, at which point the Briicke brightness enhancement effect is maximized. Moreover, the frequency range of 5 to 20 Hz disclosed by Cheng is similar to the repetition rates disclosed in the Specification (i.e., "a repetition rate of some fraction of 60 cycles per second (e.g., 20 Hz)" disclosed at page 7, line 29 of the Specification). In view of the above, Appellants have not distinguished the "repetition rate sufficient to optimize brightness and contrast" of claim 1 from the repetition rates disclosed by Cheng. As a result, Appellants have not shown reversible error in the Examiner's finding that Cheng discloses activating the light source for a predetermined time period of less than 100 milliseconds followed by deactivating the light source and repeating said activating and deactivating steps with an appropriate repetition rate sufficient to optimize brightness and contrast, as recited in claim 1. Appellants do not argue claims 2-18, 20, and 21 separately from claim 1. Appeal Br. 9. Therefore, for the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 102(b) rejection of claims 1-18, 20, and 21 over Cheng. Rejection over Cheng and Ohtomo Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng in view of Ohtomo. Appellants do not argue claim 19 separately from claim 1. Appeal Br. 9. Therefore, for the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's § 103(a) rejection of claim 19 over the combination of Cheng and Ohtomo. 6 Appeal2015-003262 Application 12/933,739 DECISION The decision of the Examiner rejecting claims 1-21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 7 Copy with citationCopy as parenthetical citation