Ex Parte Min et al

Board of Patent Appeals and Interferences

Dec 9, 2008

10824648 (B.P.A.I. Dec. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEE-HONG MIN, HWAN-YOUNG CHOI,
MOON-GYU LEE, JIN-HWAN KIM,
and JIN-SEUNG CHOI
____________

Appeal 2008-4343
Application 10/824,648
Technology Center 2800
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Decided: December 9, 2008
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s rejection of claims 1-14. Claims 15-19 have been

Appeal 2008-4343
Application 10/824,648

indicated as containing allowable subject matter (Final Rejection page no.
1). We have jurisdiction pursuant to 35 U.S.C. § 6. 1
Appellants’ invention is directed to an edge-light type backlight
system using a light guide panel and a rod-shaped light source. (Spec. 1).
Claim 1 is representative of the invention and is reproduced below:
1. An edge-light type backlight system comprising:

a light guide panel including a light incident surface into which light
enters and a light emitting surface from which light is emitted;

a rod-shaped light source which projects light to the light incident
surface; and

a polyhedral optical deflector including a first surface and a second
surface, the first surface and the second surface on opposite sides of a
normal line orthogonal to the light incident surface and being more distant
from each other as distance from the light incident surface increases,

wherein the optical deflector is disposed on at least one of the light
emitting surface and a surface opposite to the light emitting surface.

ISSUES ON APPEAL
Claims 1-14 stand rejected under 35 U.S.C. 5 103(a) over Kraft, U.S.
Pat. Application No. 2003/0147259, published on August 7, 2003, in view
of Umemoto, U.S. Patent No. 6,616,289, issued September 9, 2003.

1 In rendering this decision, we have considered the Appellants’ arguments
presented in the Appeal Brief dated May 14, 2007 and the Reply Brief dated
November 21, 2007. An Oral Hearing for this Appeal was held on
November 5, 2008.
2

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Application 10/824,648

The Examiner contends that Kraft discloses an edge-light type
backlight system comprising a light guide panel including a light incident
surface into which light enters and a light emitting surface from which light
is emitted. Kraft fails to teach backlight system using a rod-shaped light
source. The Examiner contends that Umemoto teaches the use of a rod-
shaped light source used with a backlight system. The Examiner concluded
that a person of ordinary skill in the art would have utilized the rod-shaped
light of Umemoto with the device of Kraft, since the use of point source
lights and rod/tube lights are equivalents in the art. (Ans. 3).
Appellants contend that the combination of Kraft and Umemoto does
not teach or suggest a rod-shaped light source which projects light into the
light incident surface because paragraph [0038] of Kraft teaches away from
using a rod-shaped light. 2 (App. Br. 9; Reply Br. 5).
The issue presented is: did Appellants identify reversible error in the
Examiner’s rejection of claim 1 under § 103? We answer this question in
the negative. The issue turns on whether it would have been obvious to a
person of ordinary skill in the art to utilize a rod-shaped light with the device
of Kraft.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner

2 Appellants have grouped their arguments for claims 1-9 together. While
Appellants separately address claims 10-14, Appellants rely on the reasons
presented in rebuttal to the Examiner’s rejection of claim 1. (App. Br. 11).
Consequently, the appealed claims stand or fall with claim 1. Our analysis
will be limited thereto.

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that the claimed subject matter is not patentable within the meaning of § 103
in view of the applied prior art. Accordingly, we will sustain the Examiner’s
rejection.
OPINION
We determine the following Findings of Fact (FF) from the record
presented in this appeal:
(1) Kraft discloses an edge-light type backlight system
comprising a light guide panel including a light incident
surface (Fig 1) into which light enters and a light
emitting surface (Fig 1) from which light is emitted.
(Kraft [0034]).
(2) Kraft discloses “[t]he subject invention was created to
replace fluorescent lighting luminairs or applications
with a remote light source device to overcome the space
requirements, heat production, maintenance
requirements, and application limitations of common
light sources.” (Kraft [0036]).
(3) Kraft discloses “[l]ight entering the tapered light guide
injection can be from any light source and can be
conducted by any fiber optic or light pipe system.”
(Kraft [0037]).
(4) Umemoto discloses the use of a rod-shaped light source
in a backlight system. (column 8, ll. 29-54)
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007) (citing 35 U.S.C. § 103 (a)). The legal question of obviousness
is resolved on the basis of underlying factual determinations including (1)
the scope and content of the prior art, (2) any differences between the
claimed subject matter and the prior art, (3) the level of skill in the art, and
(4) secondary considerations, if any. Graham v. John Deere Co., 383 U.S.
1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
Applying the preceding legal principles to the Factual Findings (FF)
in the record of this appeal, we determine that the Examiner has established
a prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellants’ arguments. As shown by FF (3) above, a
person of ordinary skill in the art would have recognized that the light
entering the tapered light guide injection can be from any light source. A
person of ordinary skill in the art would have also recognized that a light
source such as a rod shaped light source of Umemoto would have been
suitable for the invention of Kraft. (FF(1-4)). In fact, Appellants
acknowledge that Kraft contemplates the use of any light source for the
disclosed invention. (Reply Br. 5).
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Moreover, the claimed invention utilizes the transitional term
“comprising,” this language opens the claims to include other components
such as light guides.3 Thus, the claimed invention does not exclude a
system that utilizes a rod-shaped light source that provides light to the light
guides. Further, a person of ordinary skill in the art would have recognized
that a rod-shaped light source could have been used adjacent to the backlight
system if one were willing to accept the drawbacks that were associated with
placing the light source adjacent to the backlight system. (FF (2)).
For the foregoing reasons and those stated in the Answer, we affirm
the rejection presented in this appeal.
ORDER
The rejection of claims 1-14 under 35 U.S.C. § 103(a) is affirmed.

3. The transitional term “comprising” opens claim 1 to encompass any
additional layers and materials. See, e.g., Vehicular Techs. Corp. v. Titan
Wheel Int'l, Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000).
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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

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