Ex Parte Niioka et al

Patent Trial and Appeal Board

Feb 28, 2014

11473277 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/473,277 06/23/2006 Shinya Niioka F2108.0043 6592
32172 7590 02/28/2014
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
ARENDT, PAISLEY L
ART UNIT PAPER NUMBER
2871
MAIL DATE DELIVERY MODE
02/28/2014 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 SHINYA NIIOKA, KEN SUMIYOSHI,
SHIN-ICHI UEHARA, MASAO IMAI,
KENICHI TAKATORI and FUJIO OKUMURA
______________

Appeal 2011-012345
Application 11/473,277
Technology Center 2800
_______________

Before CHARLES F. WARREN, MICHAEL P. COLAIANNI and
GEORGE C. BEST, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1, 19, 24, 29, 34,
39, 44, 46, 48, 50, 52 and 54 under 35 U.S.C. § 103(a): claims 1, 19, 29, 34,
39, 44, 46, 50 and 52 over Yamaguchi (US 6,527,410 B2), Karasawa (US
6,491,396 B2) and Stevens (US 3,919,559), claims 24 and 54 over
Yamaguchi, Karasawa, Stevens and Jachimowicz (US 5,644,369), and claim
48 over Yamaguchi, Karasawa, Stevens and Garwin (US 5,949,402). App.
Br. 6; Ans. 3, 8, 9, 10. We have jurisdiction. 35 U.S.C. § 6(b).
We reverse the decision of the Primary Examiner.
Appeal 2011-012345
Application 11/473,277
2
Claim 1 illustrates Appellants’ invention of an optical member
comprising, among other things, a planar Fresnel lens, and is representative
of the claims on appeal:
1. An optical member comprising:
a planar Fresnel lens for deflecting and emitting incident light
consisting of a plurality of luminous fluxes that have a directivity to a
direction depending on an incident position of light, and focusing a
principal-direction component of each luminous flux in the plurality of
luminous fluxes toward a single observation point of an observer; and
an element for restricting a direction of light rays that restricts the
luminous fluxes emitted from the planar Fresnel lens to a direction parallel
with the focused direction of the principal-direction component of each
luminous flux emitted from the planar Fresnel lens, and further increases a
directivity of the luminous fluxes,
wherein the element for restricting the direction of light rays is a sheet
in which a plurality of light absorptive areas and light transmissive areas are
alternately arrayed, a boundary between the absorptive areas and the
transmissive areas is sloped with respect to a direction perpendicular to the
light-emitting surface so as to be parallel with the principal-direction
component of the luminous fluxes emitted from the planar Fresnel lens, a
direction of the light is restricted so that the light is emitted from a surface of
the sheet along the principal-direction component of the luminous fluxes and
that the emitted light is directed toward the single observation point.
App. Br. 12 (Claims App’x).
We decide this appeal based on claim 1, on which all claims depend,
argued by Appellants with respect to the first and all other grounds of
rejection. App. Br. 6, 11. 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
The threshold issue raised by the positions of Appellants and the
Examiner is whether the Examiner erred in finding that the combination of
Yamaguchi and Karasawa would have led one of ordinary skill in the art to
Appeal 2011-012345
Application 11/473,277
3
modify Yamaguchi’s liquid crystal display apparatus 10 by using
Karasawa’s Fresnel lens 620 in place of Yamaguchi’s light collimating plate
28, which can be microlens array 30, thus arriving at an optical member
comprising at least, among other things, a planar Fresnel lens that falls
within claim 1. Yamaguchi abstract, col.4 ll.5-30, Figs. 1, 2; Karasawa
col.18 l.57 to col.20 l.34, Fig. 9. Ans. 3-5, 11-12; App. Br. 7-10.1
On this record, we are convinced by a comparison of the function of a
Fresnel lens in deflecting and emitting incident light and focusing a
principal-direction component of the light toward a single observation point,
as illustrated in Specification Figure 6, and the function of Yamaguchi’s
light collimating plate 28 in emitting collimated light, illustrated in
Yamaguchi Figure 2, as pointed out by Appellants, that one of ordinary skill
in the art would not have been led to make the proposed substitution. Ans.
11-12; App. Br. 9. We fail to find in Yamaguchi and Karasawa, as relied on

1 We have not considered the arguments based on Yamaguchi, Karasawa
and Stevens raised for the first time in the Reply Brief without reference to
any specific argument(s) raised by the Examiner for the first time in the
Answer. Indeed, Appellants have not explained why the arguments, which
could have been raised in the Appeal Brief, were not raised therein. See
generally Reply Brief; Ans. 11-13. 37 C.F.R. § 41.37(c)(1)(vii) (second
sentence); see also In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting
that an argument not first raised in the Brief to the Board is waived on
appeal); Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative)
(explaining that arguments and evidence not timely presented in the
principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”).
Appeal 2011-012345
Application 11/473,277
4
by the Examiner, any disclosure which would have suggested to one of
ordinary skill in the art that a Fresnel lens can be used as Yamaguchi’s
optical collimator for collimating light. Yamaguchi col.4 ll.11-16; Karasawa
col.19 l.66 to col.20 l.11. Ans. 4-5, 11-12. Indeed, the Examiner merely
points out that Karasawa would have “disclose[d] the claimed Fresnel lens”
which “would inherently function” as required in claims 1 and 19, and does
not explain why one of ordinary skill in the art would have been led by the
known “function” of a Fresnel lens to use the same as Yamaguchi’s optical
collimator for collimating light. Ans. 11-12.
Thus, on this record, we are of the view that the Examiner has relied
on impermissible hindsight in maintaining that one of ordinary skill in the
art would have modified Yamaguchi’s liquid crystal display apparatus by
using Karasawa’s Fresnel lens as Yamaguchi’s optical collimator for
collimating light. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“[I]t can be important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998)
(“hindsight” is inferred when the specific understanding or principal within
the knowledge of one of ordinary skill in the art leading to the modification
of the prior art in order to arrive at appellant’s claimed invention has not
been explained); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
Appeal 2011-012345
Application 11/473,277
5
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 1, 19, 24, 29, 34, 39, 44, 46, 48,
50, 52 and 54 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED
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