Ex Parte Mi et al

Patent Trial and Appeal Board

Apr 16, 2013

12074979 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/074,979 03/07/2008 Xiang-Dong Mi K93751 9778
7590 04/17/2013
Edwin Oh
Rohm and Haas Electronic Materials LLC
455 Forest Street
Marlborouth, MA 01752
EXAMINER
LEE, JONG SUK
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
04/17/2013 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 XIANG-DONG MI and QI HONG
____________

Appeal 2010-012502
Application 12/074,979
Technology Center 2800
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012502
Application 12/074,979
2
STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1-8. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We Affirm.
INVENTION
This invention “relates to a backlight unit including a light guiding
plate and a turning film article for enhancing luminance and []particularly
relates to a light guiding plate that emits light of different principle angles
for different wavelengths and provides polarized light output and reduces
color separation by employing a light source comprising individual sources
of differing colors.” (Spec. 1). Claim 1, reproduced below, is representative
of the claimed subject matter:
1. A backlight unit containing a light source, a light guiding
plate, and a turning film having a light entry and a light exit
surface comprising first prismatic structures on the exit surface,
wherein
(a) the first prismatic structures on the turning film are
characterized by a far base angle (β1) and a near base angle
(β2);
(b) the light source comprising an array of individual
sources of differing colors, including, red, green and blue lights,
(c) the light guiding plate being located to provide light
from each individual light source having a different principle
angle to the turning film for each color; and
the light guiding plate being arranged in a manner
relative to the light source and the turning film and its first
prismatic structures and base angles so as to reduce the amount
of color separation at the exit surface of the turning film
compared to the same device using a single light source.
Appeal 2010-012502
Application 12/074,979
3
REJECTIONS
Claims 1-5, 7, and 8 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kim (U.S. Pat. App. 2007/0064444).
Claim 6 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over the combined teachings and suggestions of Kim and Arai
(US Pat. 6,027,220).
Contentions
Appellants contend that “the backlight unit of claim 1 requires, in
part, ‘a light source, a light guiding plate, and a turning film having a light
entry and a light exit surface comprising first prismatic structures on the exit
surface … the light guiding plate being located to provide light … to the
turning film for each color.” (App. Br. 3). As to the specifics of the claimed
“turning film,” Appellants point to the discussion of a turning film in the
background and Figure 2A in the Specification. (App. Br. 3-4).
The Examiner disagrees:
In section I the appellant argues “In short, prism [sheet]
32 [of Kim] is not a turning film.” The appellant points to the
specification pages 7-10 to outline the structural details of the
instant turning film. The examiner fails to find any of these
structural details to which the appellant refers within the claim
language, apart from the prismatic structures on the exit
surface. The appellant also points to the background as teaching
numerous turning films. The examiner fails to correlate the
teachings of these references as a means to suggest that the
reference to Kim was insufficient to read on the claims.
Therefore the examiner maintains that the prism sheet [32] of
Kim with the prismatic structures on the exit surface of the film
is sufficient to meet all the structural requirements of the
claimed turning film.
The appellant also tries to distinguish the turning film
from the prism sheet of Kim because turning films allegedly
Appeal 2010-012502
Application 12/074,979
4
redirect light “directly emitting from the light guiding plate”.
Further the applicant states that, “In a turning film backlight
system, there is no diffuser between the light guiding plate and
the turning film.” However, the examiner asserts that that the
features upon which appellant relies (i.e., direct incident of
light/lack of a diffusion sheet) are not recited in the rejected
claim(s). Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181 (Fed. Cir.
1993). Claim 1, in section 3, states the light guiding plate is
located to provide light … to the turning film. The claim does
not require the light guiding plate provide light directly to the
turning film.
(Ans. 8-9) (parallel citation omitted).
ANALYSIS
Independent Claim 1
Issue: Under §102, did the Examiner err in finding that Kim expressly
or inherently discloses a “turning film” within the meaning of claim 1?
During patent examination, a claim is given its broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). However, such an interpretation must not import
limitations from the Specification into the claims. “[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those embodiments.
… [C]laims may embrace ‘different subject matter than is illustrated in the
specific embodiments in the specification.’” Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted).
This reasoning is applicable here. Therefore, we decline Appellants’
invitation to read limitations from the Specification into the claims. (App.
Appeal 2010-012502
Application 12/074,979
5
Br. 3-4). We agree with the Examiner (Ans. 8-9) that Appellants are relying
on a detailed description of Figure 2A in the Specification to distinguish
their invention over Figures 2 and 3 of Kim. (App. Br. 4). We find the
discussion in Appellants’ Specification (Spec. 7:5-9) merely provides a
broad general description of a “turning film” and is not a limiting definition
per se. (See Spec. 7: 5-9).1,
Moreover, to the extent Appellants urge patentability based on the
description of the claimed “turning film” in the Specification, we observe
Appellants expressly state that turning films are “known in the art and
discussed in the background.” (Spec. 7:5).2 See MPEP §2129: “A statement
by an applicant in the specification or made during prosecution identifying
the work of another as “prior art” is an admission which can be relied upon
for both anticipation and obviousness determinations, regardless of whether
the admitted prior art would otherwise qualify as prior art under the statutory
categories of 35 U.S.C. 102.” See also Riverwood Int’l Corp. v. R.A. Jones

1 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.” (citation omitted)).
2 See Spec. 7:5-9—“As known in the art and discussed in the background, a
turning film, broadly termed light-redirecting articles or light-redirecting
films, is an optical film that redirects the more or less collimated light output
emitted from a light guiding plate from a large off angle toward normal or
viewing direction.” (Emphasis added).

Appeal 2010-012502
Application 12/074,979
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& Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-
Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988).
Therefore, on this record, we are not persuaded of Examiner error
regarding the anticipation rejection of claim 1, and claims 2-5, 7, and 8
which are dependent thereon (not separately argued). See 37 C.F.R.
§ 41.37(c)(1)(iv).
Regarding dependent claim 6, Appellants contend that Arai does not
overcome the deficiencies with Kim. (App. Br. 4). However, we find no
deficiencies with Kim for the same reasons discussed above regarding claim
1. Therefore, we also sustain the Examiner’s obviousness rejection of claim
6 over the combined teachings and suggestions of Kim and Arai.

DECISION
We affirm the Examiner’s rejection under § 102 of claims 1-5, 7, and
8.
We affirm the Examiner’s rejection under § 103 of claim 6.
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).

ORDER
AFFIRMED

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