Ex Parte Oon et al

Board of Patent Appeals and Interferences

Aug 10, 2009

10804286 (B.P.A.I. Aug. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHIN HIN OON, SOON KEAL TAN,
KEAN LOO KEH, and MARIAM SOLVAN
____________

Appeal 2009-002989
Application 10/804,286
Technology Center 2800
____________

Decided: August 10, 2009
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
I. STATEMENT OF THE CASE
The invention relates to a color filter having a primary filter layer and
a trim filter, in which the trim filter preferentially attenuates light at a
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wavelength between a first and second characteristic wavelength of the
primary filter, and a method of fabricating such a filter (Spec. 3, ll. 6-15).
Claims 1 and 8 are illustrative of the subject matter on appeal:
1. A color filter comprising:
a primary filter layer that is partially transparent to light, said primary
filter layer having a transmission function as a function of wavelength said
transmission function varying as a function of the spatial location on said
primary filter layer, said primary filter transmitting light in a first band of
wavelengths about a first characteristic wavelength at a first location in said
primary filter layer and transmitting light in a second band of wavelengths
about a second characteristic wavelength at a second location in said primary
filter layer; and
a first trim filter comprising a layer of material that overlies said first
and second locations and that preferentially attenuates light at a first trim
wavelength between said first and second characteristic wavelengths, said
first trim filter having a transmission function as a function of wavelength
that is substantially the same at said first and second locations, wherein said
first trim filter transmission function is selected to selectively block light at
edges of said first and second bands of wavelengths that is not blocked by
said primary filter layer transmission function, whereby said primary filter
layer and said first trim filter together have a target transmission function
transmitting a desired set of wavelengths.
8. A method for fabricating a color filter, said method comprising:
bonding a first trim filter layer to a substrate;
bonding a primary filter layer that is partially transparent to light to
said first trim filter layer, said primary filter layer having a transmission
function as a function of wavelength, said transmission function varying as a
function of the spatial location on said primary filter layer, said primary
filter transmitting light in a first band of wavelengths about a first
characteristic wavelength at a first location in said primary filter layer and
transmitting light in a second band of wavelengths about a second
characteristic wavelength at a second location in said primary filter layer;
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wherein said first trim filter layer comprises a layer of material that
overlaps said first and second locations and that preferentially attenuates
light at a first trim wavelength between said first and second characteristic
wavelengths, said first trim filter having a transmission function as a
function of wavelength that is substantially the same at said first and second
locations, and wherein said first trim filter transmission function is selected
to selectively block light at edges of said first and second bands of
wavelengths that is not blocked by said primary filter layer transmission
function, whereby said primary filter layer and said first trim filter together
have a target transmission function transmitting a desired set of wavelengths.
The Examiner relies on the following prior art reference to show
unpatentability:
Suda et al. (“Suda”) US 5,166,784 Nov. 24, 1992

The Examiner maintains the following rejections:
1. Claims 1, 2, and 4-6 rejected under 35 U.S.C. § 102(b) as
anticipated by Suda; and
2. Claims 3 and 7-11 rejected under 35 U.S.C. § 103(a) as obvious
over Suda.
II. FIRST REJECTION
For the first rejection, Appellants present arguments only with respect
to claim 1 (Br. 6-11).
A. ISSUES ON APPEAL
The issues on appeal arising from the contentions of Appellants and
the Examiner are: (a) have Appellants shown that the Examiner reversibly
erred in interpreting the phrase “selectively block light at the edges of said
first and second bands of wavelengths” or in finding that Suda’s filter 7
provides this function with respect to the green and red wavelengths (curves
16' and 17', respectively) of Figure 10; or (b) have Appellants shown that the
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Examiner reversibly erred in finding that Figures 10 and 12 of Suda show
that Suda describes a “trim filter” within the meaning of claim 1?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issues on appeal:
1. Appellants’ Specification does not use the term “edges” as
recited in claim 1 (see generally Spec.). Appellants’ Specification discloses
only a single example of a trim filter. In that example, the filter trims both
edges of three different wavelength bands. (See e.g., Spec. 6, l. 21 to 7, l. 1;
Figure 5.)
2. Appellants admit that Suda shows a minimum in the
transmission curve of Suda’s filter 7 (shown in Figure 12) that attenuates
wavelengths along the falling edge of curve 16' and the rising edge of curve
17' of Figure 10 (Br. 7, ll. 23-27; Br. 10, ll. 24-27; Reply Br. 5, ll. 11-13).
3. Curve 16' in Suda’s Figure 10 represents the transmission of
light at a wavelength band about a green characteristic wavelength, and
curve 17' in Figure 10 represents the transmission of light at a wavelength
band about a red characteristic wavelength for a color separation filter
(Suda, col. 2, ll. 29-31; col. 7, ll. 1-4; Figure 10).
C. PRINCIPLES OF LAW
During examination, "claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read 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) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). “[T]he claims themselves provide substantial
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guidance as to the meaning of particular claim terms.” Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). “To begin with, the context in
which a term is used in the asserted claim can be highly instructive.” Id.
A claimed apparatus must be distinguished from the prior art
apparatus on the basis of structure. Therefore, the patentability of an
apparatus claim depends only on the claimed structure, 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), or the function or result of that
structure. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re
Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“It is trite to state that the
patentability of apparatus claims must be shown in the structure claimed and
not merely upon a use, function, or result thereof.”).
Language in an apparatus claim directed to the function, operation,
intent-of-use, and materials upon which these apparatus components work
that does not structurally limit the apparatus components or patentably
differentiate the claimed apparatus from an otherwise identical prior art
apparatus will not support patentability. See, e.g., In re Rishoi, 197 F.2d
342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 940 (CCPA 1963);
In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d
958, 959 (CCPA 1973).
D. ANALYSIS
The Examiner has found that the transmissivity of Suda’s filter 7
shown in Figure 12 attenuates light at the falling edge of curve 16' and the
rising edge of curve 17' of Figure 10 (Ans. 3-4 and 12). Appellants argue
that the Examiner erred in failing to consider the effect of filter 7 on all the
edges of the wavelength bands shown in Figure 10 (Br. 7 and 10; Reply Br.
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2-3). In particular, Appellants state that “filter 7 has an amplifying, not
trimming, effect on the 500nm rising edge of curve 16'” (Br. 10), and
Appellants argue that the Examiner ignores the effect of curve left/rising
edge of curve 16' and the right/falling edge of curve 17' (Reply Br. 2-3). In
other words, Appellants are suggesting that a filter must attenuate light at
both the rising and falling edges of a wavelength band in order to fall within
the scope of claim 1. Such would be the case if, for example, the word
“edges” in the phrase “edges of said first and second bands of wavelengths”
recited in claim 1 is interpreted to require that light be attenuated at both
“edges” of both the first and second wavelength bands. We disagree with
such a narrow interpretation.
The broadest reasonable interpretation of the phrase “edges of said
first and second bands of wavelengths” dictates that the plural term “edges”
refers to one edge of the first band of wavelengths and one edge of the
second band of wavelengths. The Specification provides us little guidance
for interpreting the claim without improperly confining the scope of the
claims to the sole example presented therein (FF 1). See Phillips, 415 F.3d
at 1323 (“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”). Yet, the language of claim 1 is itself
instructive in that it requires that the trim filter attenuates light at “a first trim
wavelength between said first and second characteristic wavelengths” (see
claim 1)(emphasis added). Accordingly, the broader interpretation relied
upon by the Examiner is reasonable.
Since Appellants admit the Examiner’s finding that Suda describes a
filter 7 attenuating light in the wavelengths that constitute the falling edge of
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curve 16' (the green curve) and the rising edge of curve 17' (the red curve) is
accurate (FF 2), Appellants have not shown that the Examiner reversibly
erred in interpreting the phrase “selectively block light at the edges of said
first and second bands of wavelengths” or in finding that Suda’s filter 7
provides this function with respect to the red and green wavelengths of
Figure 10.
Appellants also contend that Suda does not teach a “trim filter” as one
of ordinary skill in the art would understand the term. In particular,
Appellants argue that filter 7 of Suda is not a trim filter because (a) it does
not display a trimming function throughout the red, green and blue
wavelength bands depicted in Figure 10 (Br. 10; Reply Br. 2-3), (b) it does
not demonstrate a trimming function with respect to the cyan, green or
yellow wavelength bands depicted in Figure 4, despite the teaching in Suda
that filter 7 is equally suited for use with these wavelength bands (Br. 9-10;
Reply Br. 3-4), and (c) Suda has an express teaching of using filter 7 to solve
the problem of signal imbalance between the various colors, which is not the
same purpose as a “trim filter” (Br. 7-8; Reply Br. 3). Further, Appellants
arguments in the Reply Brief suggest that the term “selected to block light”
requires a teaching in the art of a step of selecting a particular filter based on
how it attenuates light around a given wavelength (Reply Br. 5). We
disagree.
Claim 1 is directed to a filter (claim 1). Appellants have agreed that
the Examiner’s finding that filter 7 attenuates light at wavelengths between
the falling edge of curve 16' (the green curve) and the rising edge of curve
17' (the red curve) is accurate (FF 2-3). We agree with the Examiner that
one of ordinary skill in the art would have understood any attenuation of
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light as a trimming function to the extent required in claim 1. Accordingly,
Suda teaches both the functional features and the structure of the trim filter
recited in claim 1.
We find it of no moment that Suda’s filter 7 does not perform a
trimming function for each of the edges of the color wavelength bands
depicted in Figure 10. As discussed above, under a broadest reasonable
interpretation, the claim only requires trimming (light attenuation) between
two adjoining edges of two wavelengths. We also find it of no moment that
Suda’s filter 7 does not perform an identical trimming function for the
wavelength bands of alternative colors depicted in Figure 4. As discussed
above, Suda’s filter 7 teaches a trimming function to the extent required in
claim 1.
We also find it of no moment that Suda’s filter 7 is described for a
purpose other than trimming. The Examiner has found that Suda’s filter 7
provides a trimming function as required by claim 1, whether or not the prior
art expressly identifies this function. Accordingly, the burden to show that
the Suda’s filter 7 does not provide a trimming function within the
requirements of claim 1 falls to Appellants. By admitting that Suda’s filter 7
attenuates light at the edges of two adjacent color wavelength bands (FF 2),
Appellants attempt to show that filter 7 does not provide a trimming function
are unpersuasive.
Regarding the phrase “selected to,” we find that the purpose for
which one chooses a filter does not structurally differentiate the claimed
filter from Suda’s filter 7. Accordingly, Appellants have not shown that the
Examiner reversibly erred in finding that Figures 10 and 12 of Suda show
that Suda describes a “trim filter” within the meaning of claim 1.
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Appellants state that claims 2 and 4-6 stand or fall with claim 1 (Br.
11). Accordingly, we sustain the Examiner’s first rejection.
III. SECOND REJECTION
For the second rejection, Appellants present arguments only with
respect to claim 8 (Br. 12-13).
A. ISSUE ON APPEAL
An issue on appeal arising from the contentions of Appellants and the
Examiner is: have Appellants shown that the Examiner reversibly erred in
determining that the steps of bonding the filters taught by Suda, as recited in
claim 8, would have been obvious to one of ordinary skill in the art?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
4. The Examiner finds that Suda’s color separation filters 531,
532, 533 constitute a primary filter and Suda’s filter 7 constitutes a trim
filter (Ans. 3).
5. Suda teaches that the color separation filters 531, 532, 533 are
adhered to sensor 5 by dying respective photoelectric transducers or by
coating the respective photoelectric transducers (Suda, col. 3, ll. 27-38).
6. Suda teaches that filter 7 is arranged in the optical path between
the focusing optical system 4 and the sensor 5, and Figure 11 shows filter 7
physically displaced from sensor 5 (Suda, col. 9, ll. 40-43; Figure 11).
C. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
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prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
The Supreme Court recently clarified that “it 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,” but that “the analysis need not seek out precise teachings [in the prior
art] directed to the specific subject matter of the challenged claim, for a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 418 (2007).
D. ANALYSIS
Appellants repeat the same arguments for allowability set forth above
for claim 1, “but specifically directed to the method set forth in claim 8.”
The identical language at issue in claim 1 is at issue in claim 8 and is
similarly directed towards the structure and operation of the “trim filter” (see
claim 8). Accordingly, we find Appellants' contention with respect to the
arguments presented for claim 1 unpersuasive with respect to claim 8 for the
same reasons discussed above with respect to claim 1.
Appellants contend that Suda does not disclose or suggest bonding a
trim filter layer to a substrate and bonding a primary filter layer to the trim
filter layer (Br. 13).
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to bond the filters as recited in claim 8 because Suda
teaches the additive functions of the filters and because an integral feature is
more compact and does not require optical alignment (Ans. 5-6). Appellants
do not contest this reasoning (see generally Br.). We find that this reasoning
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is sufficient to support the Examiner’s determination that it would have been
obviousness to bond the trim filter and the primary filter together. See KSR,
550 U.S. at 419-420 (“One of the ways in which a patent's subject matter can
be proved obvious is by noting that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
patent's claims.”).
Furthermore, the Examiner relies on case law to support his reasoning
that bonding the disclosed filters would involve no more than routine skill in
the art (Ans. 5-6 and 15). To this, Appellants argue that a lack of any
reference showing bonding and a lack of such bonding in the marketplace is
evidence of more than routine skill (Reply Br. 5). However, Appellants
provide no convincing evidence in support of their assertion that filters are
not bonded in products available in the marketplace. Moreover, the prior art
need not specifically teach bonding if it would have been obvious to one of
ordinary skill in the art as demonstrated by the Examiner’s reasoning. See
KSR, 550 U.S. at 418.
Bonding in such a situation would appear to be within the capabilities
of those of ordinary skill as found by the Examiner. The Examiner has
shown that the prior art teaches the relevant filters (FF 4). Suda clearly
teaches these filters as displaced from one another (FF 5-6), but the function
of the filters would remain the same whether the filters are displaced or
bonded together. Accordingly, we find that the weight of the evidence
supports the Examiner’s finding that bonding the filters together would have
been within the capabilities of those of ordinary skill in the art.
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Appellants state that claims 3 and 7 stand or fall with claim 1 (Br. 12).
Appellants also state that claims 9-11 stand or fall with claim 8 (Br. 13).
Accordingly, we sustain the Examiner’s second rejection.
IV. CONCLUSION
For the reasons discussed above, we sustain the following rejections:
1. Claims 1, 2, and 4-6 rejected under 35 U.S.C. § 102(b) as
anticipated by Suda; and
2. Claims 3 and 7-11 rejected under 35 U.S.C. § 103(a) as obvious
over Suda.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v) (2008).
AFFIRMED

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