Ex Parte Perez-Noguera

Patent Trial and Appeal Board

Oct 9, 2014

11677850 (P.T.A.B. Oct. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GRITSKO PEREZ-NOGUERA
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Appeal 2012-004986
Application 11/677,850
Technology Center 2600
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Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and
CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–3, 5–11, and 13–19.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s invention generally relates to display systems with
intrinsic audio functionality such that the video display also acts to produce

1 Appellant identifies as the real party in interest Microsoft Corp. App.
Br. 2.
2 Claims 4, 12, and 20 have been cancelled. App. Br. 4.
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audio sound waves. See generally Spec. ¶ 9. Representative claims 1 and
11, reproduced below, recite:
1. A display system comprising:
a transducer including a dielectric layer positioned between
conductive layers, the transducer configured to transform a modulated
electrical signal to an audible sound;
a protective layer; and
a display component positioned between the protective layer
and the transducer.

11. A method, comprising:
forming a transducer including a dielectric layer positioned
between conductive layers;
forming a control circuit configured to deflect the dielectric
layer via a modulated electrical signal, to generate audible sound;
positioning a display component adjacent to the transducer; and
positioning a protective layer over the display component.

REFERENCES AND REJECTIONS
1. Claims 1, 2, 6, 7, 9, 11, and 13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Saiki et al. (hereinafter “Saiki”) (US
2005/0025330 A1; published Feb. 3, 2005), Fukui (US 2005/0149338 A1;
published July 7, 2005), and Shi (US 2005/0270272 A1; published Dec. 8,
2005). Ans. 5–10.
2. Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Saiki, Fukui, Shi, and Stoller (US 5,519,520; issued May
21, 1996). Ans. 10–12.
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3. Claims 8 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Saiki, Fukui, Shi, and Schweder et al. (hereinafter
“Schweder”) (US 2002/0141606 A1; published Oct. 3, 2002). Ans. 12, 13.
4. Claims 17, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Teich (US 5,889,383; issued Mar. 30, 1999), Fukui, and
Saiki. Ans. 13–17.
5. Claims 14–16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Saiki, Fukui, Shi, and Teich. Ans. 17–20.

ISSUES AND ANALYSIS
First Issue
Under § 103, has the Examiner erred in rejecting claims 1–3, 5–11,
and 13–16 by finding the combination of Saiki and Fukui teaches or
suggests “a transducer including a dielectric layer positioned between
conductive layers?” See App. Br. 9–15, 18, 22.
Appellant contends it would not have been obvious to use, in Saiki, a
transducer formed of a dielectric layer positioned between conductive layers
because Fukui relates to an ultrasonic sound reproduction system.
According to Appellant, substituting an ultrasonic transducer into the device
of Saiki would introduce drawbacks (e.g., lower playback volume) that
would render the device of Saiki unsatisfactory for its intended purpose
(e.g., “a sound reproduction device having an improved sound reproduction
capability”), and furthermore that the drawbacks of Fukui teach away from a
combination with Saiki. App. Br. 11–14; Reply 10-14.
We are not persuaded by Appellant’s arguments. Appellant cites
portions of Saiki that refer to improved sound reproduction being achieved
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by certain aspects of the invention of Saiki (including placing a film layer on
a video display, thus providing the video display with the capability of
producing sound), but these cited portions do not refer to the transducer as
improving sound reproduction. See App. Br. 13, citing Saiki ¶ 12.
Accordingly, the Examiner correctly points out that the purpose of the
transducer in Saiki is to produce sound. Ans. 2021. Indeed, Saiki
expressly teaches “an electromechanical acoustic transducer of any type can
achieve a similar effect so long as it has the capability of emitting sound
from a diaphragm.” Saiki ¶ 67 (emphasis added).
Moreover, as the Examiner correctly points out, the proposed
combination is not based on substituting into Saiki ultrasonic audio
reproduction capabilities. Ans. 2223. The transducer in Fukui need not be
directly insertable into the device of Saiki for a finding of obviousness. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Saiki explains “the
transducer scheme of the electromechanical acoustic transducer 54 may be
of, for example, a piezoelectric type, an electromagnetic type, or an
electrostatic type.” Saiki ¶ 67 (emphasis added). Fukui provides a well-
known example of an electrostatic transducer, e.g., one formed of a
dielectric layer between two conducting layers. Ans. 6, citing Fukui ¶ 41,
Fig. 4. We are thus unpersuaded that it would not have been obvious to try,
as the electrostatic transducer in Saiki, a dielectric layer positioned between
two conducting layers. See also Ans. 2021 (“it would have been obvious to
one having ordinary skill in the art at the time the invention was made to
have substituted one type of transducer with another type of transducer in
order to yield the predictable result of producing sound”).
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Accordingly, the Examiner did not err in finding the combination of
Saiki and Fukui teaches or suggests “a transducer including a dielectric layer
positioned between conductive layers,” as claimed. Therefore, with respect
to this issue, we sustain the Examiner’s rejection of: 1) independent claim 1;
2) independent claim 11, for which no new arguments with respect to this
issue are presented (App. Br. 15); 3) dependent claims 2, 6, 7, 9, and 13, not
argued separately (App. Br. 9–14); and 4) dependent claims 3, 5, 8, 10, and
14–16, for which no new arguments with respect to this issue are presented
(App. Br. 18, 20, 22, 23).
Second Issue
Under § 103, has the Examiner erred in: 1) rejecting claims 11 and
13–16 by finding the combination of Saiki, Fukui, and Shi teaches or
suggests “positioning a display component adjacent to the transducer”
(emphasis added) (see App. Br. 15–18); 2) rejecting claim 5 by finding the
combination of Saiki, Fukui, Shi, and Stoller teaches or suggests “the
transducer is adjacent to the backlight on a side of the backlight, and the
display component is adjacent to the backlight on another side of the
backlight” (emphasis added) (see App. Br. 19, 20); and 3) rejecting
claims 17–19 by finding the combination of Teich, Fukui, and Saiki teaches
or suggests “a dielectric layer positioned between conductors and adjacent
to the display component” (emphasis added) (see App. Br. 20–22)?
Appellant construes the term “adjacent” as precluding elements from
being in between two “adjacent” layers. See App. Br. 16, 17, 19, 21.
Accordingly, Appellant argues that certain elements in Saiki are not
“adjacent” because elements exist between them (e.g., elements exist
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between the display and transducer, between the transducer and backlight,
and between the display and backlight). Id.
In support of its position that elements may not be between “adjacent”
layers, Appellant relies on two sentences in the Specification in which the
term “adjacent” appears, but is not expressly defined. App. Br. 17.
However, “[i]t is not enough for a patentee to simply . . . use a word in the
same manner in all embodiments, the patentee must ‘clearly express an
intent’ to redefine the term.” Thorner v. Sony Computer Entertainment
America, LLC, 669 F.3d 1362, 1365 (2012). (Citations omitted). We must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004). Here, we conclude the language is
broader than the embodiments cited by Appellant.
In arguing nothing may be in between two “adjacent” layers,
Appellant essentially argues that adjacency requires direct physical contact.
However, as pointed out by the Examiner, the term “adjacent” by itself does
not preclude elements from being in between layers. Ans. 27; see also
RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 25 (2d ed. unabr.
1987) (“adjacent . . . adj. 1. lying near, close, or contiguous; adjoining,
neighboring . . . .”). Furthermore, the claim language clarifies that
“adjacent” does not preclude elements from being in between layers. For
example, claim 17 recites “a dielectric layer positioned between conductors
and adjacent to the display component.” The claim must be read such that a
“dielectric layer” is “adjacent to the display component” even though a
conductor is between them. To do otherwise would read every embodiment
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in the Specification out of claim 17. A claim construction that excludes a
preferred embodiment is “a result that is rarely, if ever, correct.” On-Line
Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138
(Fed. Cir. 2004). Therefore, it would be improper to construe “adjacent” to
preclude intervening elements.
Accordingly, the Examiner did not err in finding the cited
combinations of prior art teach or suggest a transducer adjacent to a display,
a transducer adjacent to a backlight, and a display adjacent to a backlight.
Therefore, with respect to this issue, we sustain the Examiner’s rejection of:
1) independent claim 11; 2) dependent claim 5; 3) independent claim 17;
4) dependent claims 13–16, for which no new arguments with respect to this
issue are presented (App. Br. 18, 22, 23); and 5) dependent claims 18 and
19, which are not argued separately (App. Br. 20–22).

DECISION
The Examiner’s decision rejecting claims 1–3, 5–11, and 13–19 is
AFFIRMED.
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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