Ex Parte Oke et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612000979 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/000,979 12/19/2007 38327 7590 09/30/2016 Juan Carlos A, Marquez Marquez Intellectual Property Law Office PLLC 1629 K Street, NW Suite 300 Washington, DC 20006 FIRST NAMED INVENTOR Ryutaro Oke 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. NITT-0427 8908 EXAMINER AMADIZ, RODNEY ART UNIT PAPER NUMBER 2694 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): mail@marqueziplaw.com lniu @marqueziplaw.com USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYUTARO OKE and IKUKO MORI Appeal2013-006073 Application 12/000,979 Technology Center 2600 Before ST. JOHN COURTENAY III, NATHAN A. ENGELS, and SCOTT E. BAIN, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-9 and 16-25. Claims 10-15 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b ). We Affirm. Appeal2013-006073 Application 12/000,979 Invention Appellants' disclosed and claimed invention "relates to a liquid crystal display device, particularly to a liquid crystal display device that suppresses degradation of image quality caused by using an AC drive method so as to display high-quality images." (Spec. 1, 11. 11-14.) Representative Claim 1. A liquid crystal display device comprising: a liquid crystal display panel including: a plurality of subpixels each having: a pixel electrode; and a counter electrode; a plurality of image lines that input gray-scale voltages to the subpixels; and an image line drive circuit that provides the gray-scale voltages to the image lines, wherein if a drive state of each of the subpixels at a time when a grayscale voltage higher than a counter voltage applied to the counter electrode is applied to the pixel electrode is defined as a positive drive state and if the drive state of each subpixel at a time when a gray-scale voltage lower than a counter voltage applied to the counter electrode is applied to the pixel electrode is defined as a negative drive state, the image line drive circuit changes the drive state of each subpixel from the positive drive state to the negative drive state or from the negative drive state to the positive drive state every two frames, as well as inverts a phase of the drive state of each subpixel every N (N2:4) frames, and [L] if a gray-scale voltage to be provided to an image line to display a tone in a subpixel by the image line drive circuit in a frame A that is a first frame immediately after the phase inversion is defined as VA, and if a normal grayscale 2 Appeal2013-006073 Application 12/000,979 voltage to be provided to the image line to display the tone in the subpixel by the image line drive circuit in a frame B that is a normal frame is defined as VB, I VA I < I VB I is satisfied at least with respect to a halftone. (Emphasis added and labeling added to contested limitation L) Rejections A. Claims 1, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Akimoto (US 2005/0285837 Al; Dec. 29, 2005), Jung et al. (US 2006/0119559 Al; June 8, 2006), and Hasegawa (US 2006/0097980 Al; May 11, 2006). B. Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Akimoto, Jung, Hasegawa, and Moon et al. (US 2003/0058375 Al; Mar. 27, 2003). C. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Akimoto, Jung, Hasegawa, Moon, and Ohmuro et al. (US 2001/0040546 Al; Nov. 15, 2001). D. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Akimoto, Jung, Hasegawa, Moon, and Kim et al. (US 2003/0058211 Al; Mar. 27, 2003). E. Claims 16-22 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Akimoto, Jung, and Yamamoto et al. (US 6,188,378 Bl; Feb. 13, 2001). F. Claim 23 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Akimoto and Hasegawa. 3 Appeal2013-006073 Application 12/000,979 G. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Akimoto and Yamamoto. Grouping of Claims Based on Appellants' arguments, we decide the appeal of rejection A of claims 1, 8, and 9, on the basis of representative independent claim 1. Based on Appellants' arguments, we decide the appeal of rejection E of claims 16-19 on the basis of representative independent claim 16. Based on Appellants' arguments, we decide the appeal of rejection E of claims 20-22 on the basis of representative independent claim 20. See 37 C.F.R. § 41.37(c)(l)(iv). We address rejections B, C, D, F, and G of the remaining claims not separately argued, infra. ANALYSIS We have considered all of Appellants' arguments and any evidence presented. We disagree with Appellants' arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. (Ans. 37--48.) We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments for emphasis in our analysis below regarding representative independent claims 1, 16, and 20. 4 Appeal2013-006073 Application 12/000,979 Rejection A of Representative Claim 1 Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the cited combination of references would have taught or suggested contested conditional limitation L: [L] if a gray-scale voltage to be provided to an image line to display a tone in a subpixel by the image line drive circuit in a frame A that is a first frame immediately after the phase inversion is defined as VA, and if a normal grayscale voltage to be provided to the image line to display the tone in the subpixel by the image line drive circuit in a frame B that is a normal frame is defined as VB, I VA I < I VB I is satisfied at least with respect to a halftone[,] within the meaning of apparatus claim 1, under a broad but reasonable interpretation? 1 Claim Construction As an initial matter of claim construction regarding contested limitation L of claim 1, we particularly note the conditional "if' language which is directed to an intended use of the recited "image line drive circuit" of apparatus claim 1: "if a gray-scale voltage to be provided ... and if a normal grayscale voltage to be provided to the image line to display the tone in the subpixel .... " 1 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See, e.g., (Spec. 43, 11. 5-9) ("The present invention has been described in detail on the basis of the embodiments, the invention is not limited thereto and various changes and modifications can be made to these embodiments without departing from the spirit and scope of the invention."). 5 Appeal2013-006073 Application 12/000,979 Our reviewing crn.ni. guides: "[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although "[ s ]uch statements often ... appear in the claim's preamble," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. (Id.) Here, we note that if all of the recited conditional limitations in claim 1 are satisfied (including all the conditional limitations recited in the "wherein" clause preceding contested limitation L), then: the image line drive circuit changes the drive state of each subpixel from the positive drive state to the negative drive state or from the negative drive state to the positive drive state every two frames, as well as inverts a phase of the drive state of each subpixel every N (N2:4) frames .... (Claim 1 (emphasis added).) Under a broad but reasonable interpretation, we conclude the "wherein" clause conditional lirnitations (which immediately precede limitation L in claim 1 ), and the additional conditional limitations recited within contested limitation L, are not positively recited as actually requiring the recited functions to be performed. 2 Appellants attempt to distinguish 2 Regarding the conditional "wherein" clause that immediately precedes limitation L in claim 1, MPEP § 2111.04 provides guidance regarding such "wherein" clauses: "Claim scope is not limited by claim language ... that does not limit a claim to a particular structure. However, examples of claim language ... that may raise a question as to the limiting effect of the language in a claim are: (A) 'adapted to' or 'adapted for' clauses; 6 Appeal2013-006073 Application 12/000,979 apparatus claim 1 over the cited prior art, not in terms of structural distinctions, but rather in terms of conditional functions of intended use, that may or may not be actually performed, depending on whether all of the enumerated temporal conditions are satisfied. Our reviewing court provides persuasive, non-precedential guidance: "If the condition for performing a contingent step is not satisfied, the perforrnance recited by the step need not be can-ied out in order for the claimed method to be perfonned." Cybersettle, Inc. v. National Arbitration Forum, Inc., 243 Fed. App'x 603, 607 (Fed. Cir. 2007) (unpublished); Applera Corp. v. Illumina, Inc., 375 Fed. App'x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a method claim as including a step that need not be practiced if the condition for practicing the step is not met). Other Board decisions have addressed similar conditional steps or acts in method claims, e.g., Ex parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4--5 (BPAI Jan. 27, 2011). In Katz, the BPAI panel considered the following conditional limitation in computer-implemented method claim 1: only (/said promotion qualification indicates that both said first product item and said second product item were received via said at least one input device at said POS during said purchase transaction, with said at least one processor, deducting from a charge for said purchase transaction a value of promotion (B) "wherein' clauses· and , ' (C) 'whereby' clauses." Manual of Patent Examining Procedure (MPEP) § 2111.04 (9th Ed., Rev. 07.2015, Nov. 2015) (emphasis added). 7 Appeal2013-006073 Application 12/000,979 associated with said second promotion and a value of promotion associated with said first promotion. (id. at *4 (emphasis added).) Similar to contested limitation Lin the instant appeal (which also recites temporal conditional limitations, e.g., "immediately after the phase inversion is defined"), the claim considered by the BPAI panel in Katz recites a predicate condition: "only if ... received ... during said purchase transaction .... '' In Katz, if the predicate condition does not occur, then the performance of the claimed step or act of "deducting from a charge" is not required within the scope of the claim. (Id. at *4.) The BP AI panel in Katz reached the following legal conclusion regarding the proper interpretation of the contested conditional temporal limitation, under the broadest reasonable construction: We agree with the Examiner that the "if condition" as employed in the method claim l is not a limitation against which prior art 111ust be fut1nd beca11se tlle step of cleclucting frorr1 a cllarge for the purchase transaction a value is conditioned on only if said promotion qualification indicates that both said first product item and said second product item were received via said at least one input device at said POS during said purchase transaction. During examination, claims are given their broadest reasonable interpretation. See In re Am. A cad. of 5'ci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As under the broadest scenario, the steps dependent on the "if" conditional would not be invoked. the Examiner H/W; not required to./ind these limitations in the prior art in order to render the claims obvious. (Id. at *4 (emphasis added).) Based on such guidance, and on this record, we are not persuaded of error regarding the Examiner's rejection of representative claim 1 (Final 8 Appeal2013-006073 Application 12/000,979 Act. 6----9), regardless of whether the conditional limitations are found in the prior art. (Claim 1.) lVioreover, the recitations of intended use (e.g., "to display") in claim 1 are not entitled to patentable weight The patentability of an apparatus claim "depends on the claimed st1ucture, not on the use or purpose of that structure." Catalina Marketing Int 'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). As addressed by the Federal Circuit in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090-91 (Fed. Cir. 2009): The problem with construing "displaying real-time data" as used in the claims of the '759 patent to preclude "contextually meaningful delay" is that such a construction injects a use limitation into a claim written in structural terms. "[A ]pparatus claims cover what a device is, not what a device does." lfeivlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990). Absent an express limitation to the contrary, any use of a device that meets all of the limitations of an apparatus claim written in structural terms infringes that apparatus claim ... see also Roberts v. Ryer, 91 U.S. 150, 157, 23 L.Ed. 267 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Construing a non-functional term in an apparatus claim in a way that makes direct infringement tum on the use to which an accused apparatus is later put confuses rather than clarifies, frustrates the ability of both the patentee and potential infringers to ascertain the propriety of particular activities, and is inconsistent with the notice function central to the patent system. 9 Appeal2013-006073 Application 12/000,979 With the aforementioned claim construction considerations in mind, we tum to contested limitation L, and the evidence relied upon by the Examiner. In reviewing the record, we find Appellants adopt a pattern of reciting the claim language, reproducing the record, and asserting the contested claim language (in its entirety) is not taught or suggested by a particular individual reference, considered in isolation. (App. Br. 16-37 .) Regarding claim 1, Appellants separately contend that neither Akimoto nor Hasegawa teaches or suggests the recited features of limitation L. In reviewing the record, however, we find the Examiner does not rely on Akimoto and Hasegawa as separately teaching the features of limitation L, but rather relies on the combination of references (including Jung). Appellants fail to address the combined teachings and suggestions of the references cited by the Examiner. (App. Br. 16-20; Ans. 37). Accordingly, we find Appellants' contentions unpersuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.). A determination of obviousness does not require the claimed invention to be expressly suggested by any one or all of the references. See, e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner is not required to "seek out precise teachings directed to the specific subject matter of the challenged claim" as argued by Appellants. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, the Examiner's obviousness analysis may "take account of the inferences and creative steps that a person of ordinary skill in the art would employ" (id.), as well as "include recourse to logic, judgment, and common sense available to the person of ordinary 10 Appeal2013-006073 Application 12/000,979 skill that do not necessarily require explication in any reference or expert opinion." Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). This reasoning is applicable here. In light of the claim construction issues regarding the contested conditional limitations which are directed to an intended use of the "image line drive circuit that provides the gray-scale voltages to the image lines," Appellants have not persuaded us the Examiner erred, because Appellants have not distinguished the structure of the "image line drive circuit" of apparatus claim 1 over any corresponding structure in the combination of references cited by the Examiner. Therefore, on this record, and based on a preponderance of the evidence, we are not persuaded of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding representative claim 1. Accordingly, we sustain the Examiner's rejection of representative claim 1, and the grouped claims 8 and 9, which fall with claim 1. See Grouping of Claims, supra. Rejection E of Representative Claim 16 Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the cited combination of references would have taught or suggested contested conditional limitation L: [L] a length of one horizontal scan period in a frame A that is a first frame immediately after the phase inversion is shorter than a length of one horizontal scan period in a frame B that is a normal frame[,] within the meaning of apparatus claim 16, under a broad but reasonable interpretation? (See n.1, supra (emphasis added).) 11 Appeal2013-006073 Application 12/000,979 Regarding contested limitation L of claim 16, Appellants contend, inter alia: Yamamoto fails to include any mention or suggestion of any frame being a first frame immediately after a phase inversion of a drive state of subpixels. Moreover, Yamamoto also fails to include any mention or suggestion of a length of one horizontal scan period in a frame of any particular type being shorter than a length of one horizontal scan period in a normal frame. (App. Br. 38.) We find Appellants' contentions unpersuasive, because Appellants are again attacking the teachings of the references in isolation without substantively rebutting the Examiner's conclusion of obviousness, based on the combined teachings and suggestions of Akimoto, Jung, and Yamamoto. See Merck, 800 F .2d at 1097. We note the Examiner (Final Act. 22) merely relies on Yamamoto (col. 24, 11. 21-30) for teaching a shorter "driving period for one scan line" of an LCD (that is changed depending on temperature). The Examiner relies on Akimoto and Jung for teaching the other limitations Appellants urge are missing from Yamamoto. (App. Br. 38--42.) Therefore, we are not persuaded by Appellants' arguments the Examiner erred. Accordingly, on this record, and based on a preponderance of the evidence, we sustain the Examiner's rejection E of representative independent claim 16, and grouped claims 1 7-19, which fall therewith. See Grouping of Claims, supra. 12 Appeal2013-006073 Application 12/000,979 Rejection E of Representative Claim 20 Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the cited combination of references would have taught or suggested contested conditional limitation L: [L] an image voltage reference write time in one horizontal scan period in a frame A that is a first frame immediately after the phase inversion is shorter than an image voltage reference write time in one horizontal scan period in a frame B that is a normal frame[,] within the meaning of apparatus claim 20, under a broad but reasonable interpretation? (See n.1, supra.) Regarding contested limitation L of independent claim 20, we find Appellants' contentions unpersuasive, because Appellants repeat the same pattern discussed above regarding claims 1 and 16, of attacking the teachings of the references in isolation. Regarding claim 20, Appellants again focus on attacking Yamamoto in isolation and do not substantively rebut the Examiner's conclusion of obviousness, based on the combined teachings and suggestions of Akimoto, Jung, and Yamamoto. (App. Br. 42- 44 ). Therefore, we are not persuaded by Appellants' arguments that the Examiner erred. Accordingly, on this record, and based on a preponderance of the evidence, we sustain the Examiner's rejection E of representative independent claim 20, and grouped claims 21 and 22, which fall therewith. See Grouping of Claims, supra. 13 Appeal2013-006073 Application 12/000,979 Rejections B, C, and D of Dependent Claims 2-7 Appellants advance no separate arguments regarding claims 2-7 rejected under rejections B, C, and D. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain the Examiner's rejections B, C, and D of claims 2-7. Rejections F and G of Independent Claims 23-25 Appellants urge that claims 23-25 are non-obvious for the same reasons previously advanced regarding claims 1, 16, and 20, respectively. (See App. Br. 16, 37, 42). Because we find Appellants' contentions unpersuasive regarding independent claims 1, 16, and 20, we sustain the Examiner's rejections F and G of claims 23, 24, and 25 for the same reasons discussed above regarding claims 1, 16, and 20, respectively. Reply Brief Appellants advance an argument regarding hindsight for the first time in the Reply Brief (10, 20). Because Appellants advance new arguments in the Reply Brief without showing good cause, Appellants have waived such arguments. See 37 C.F.R. § 41.41(b)(2). Conclusion For the aforementioned reasons, on this record, we are not persuaded the Examiner erred. We find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for all contested claims on appeal. 14 Appeal2013-006073 Application 12/000,979 DECISION We affirm the Examiner's decision rejecting claims 1-9 and 16-25 under 35 U.S.C. § 103(a). 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 )(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 15 Copy with citationCopy as parenthetical citation