Ex Parte Salsman

Patent Trial and Appeal Board

Nov 30, 2016

12621581 (P.T.A.B. Nov. 30, 2016)

United States Patent and Trademark Office
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.
12/621,581 11/19/2009 Kenneth E. Salsman ITL.1005D1US (P16610D) 2728
47795 7590 12/02/2016
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
PIZIALI, JEFFREY J
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
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Inteldocs_docketing @ cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH E. SALSMAN
Appeal 2015-006362
Application 12/621,5811
Technology Center 2600
Before ELENI MANTIS MERCADER, JOHN P. PINKERTON, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—6 and 8—12, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Intel Corporation as the real party in interest. App.
Br. 3.
Appeal 2015-006362
Application 12/621,581
STATEMENT OF THE CASE
The claimed invention relates to driving liquid crystal materials (such
as liquid crystal displays (LCDs)), and more particularly “to driving such
materials using low voltage techniques.” Spec. 1. Claims 1 and 8 are
independent. Claim 1 is illustrative of the invention and the subject matter
of the appeal, and reads as follows:
1. A system comprising:
a polarization beam splitter;
a liquid crystal cell having a liquid crystal material and
said all positioned to receive incident light from the polarization
beam splitter; and
drive circuitry coupled to the liquid crystal cell, the drive
circuitry to provide a pulse width modulated signal having a
voltage less than 3.3 volts to drive the liquid crystal cell such
that said cell has a relative intensity of less than one microwatt.
App. Br. 11 (Claims App’x).
THE REJECTIONS ON APPEAL
Claims 1—6 and 8—12 stand rejected under pre-AIA 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Final Act. 3.
Claims 1—6 and 8—12 stand rejected under pre-AIA 35 U.S.C. § 112,
first paragraph as failing to enable any person skilled in the art to make and
use the claimed invention. Final Act. 4—5.
Claims 1—6 and 8—12 stand rejected under pre-AIA 35 U.S.C. § 112,
second paragraph as being indefinite. Final Act. 6—9.
Claims 1—6 and 8—12 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Kang et al. (US 2003/0137624 Al; July 24,
2003) (“Kang”), Sandberg et al. (US 2002/0001056 Al; Jan. 3, 2002)
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Application 12/621,581
(“Sandberg”), Dir (US 4,527,864 A; July 9, 1985), Delboulbe et al. (US
6,246,521 Bl; June 12, 2001) (“Delboulbe”), and Patel (US 5,068,749; Nov.
26, 1991). Final Act. 9-21.
Claims 1—6 and 8—12 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Patel, Rumbaugh et al. (US 5,710,655; Jan. 20,
1998) (“Rumbaugh”), Kimura (US 6,650,309 Bl; Nov. 18, 2003), Kang, and
Sandberg. Final Act. 21—33.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant does not persuade us the Examiner erred. We
adopt as our own the findings and reasons set forth in those rejections and in
the Examiner’s Answer, and provide the following for highlighting and
emphasis.
35 U.S.C. § 112, First Paragraph Rejections
Appellant argues all claims as a group, with claim 1 representative of
the group. App. Br. 6; see 37 C.F.R. § 41.37(c)(iv). Appellant contends the
Examiner erred in finding claim 1 fails to comply with the written
description requirement because Appellant’s Figure 3 and accompanying
disclosure describe circuitry driving a liquid crystal cell “between 3.0 volts
and 3.3 volts” with a “relative intensity of less than one microwatt.” App.
Br. 6. Appellant argues the foregoing disclosure demonstrates to one of
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Application 12/621,581
ordinary skill in the art that Appellant possessed the invention as claimed.
Id. We disagree.
As the Examiner finds, Appellant’s claim 1 recites driving a liquid
crystal cell with a signal not between 3.0 volts to 3.3 volts, as Appellant’s
disclosure describes, but in a broader range of zero to 3.3 volts (i.e., “a
voltage less than 3.3 volts”). Ans. 39-40; App. Br. 11 (Claims App’x). The
claim recites that at this driving signal voltage (zero to 3.3 volts), the relative
intensity of the cell is “less than one microwatt.” App. Br. 11 (Claims
App’x). We agree with the Examiner’s finding that Appellant’s disclosure
does not support the claimed range. Ans. 39-40. Appellant’s disclosure
demonstrates possession of circuitry to provide a signal having a voltage of
approximately 3 to 3.3 volts to maintain a cell intensity of less than one
microwatt; once the voltage drops materially below 3 volts, however, the
cell intensity indicated in Appellant’s disclosure rises above one microwatt.
Id. This can be seen in Appellant’s Figure 3, reproduced below.
FIG. 3
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Application 12/621,581
Figure 3 is a graph plotting relative intensity (in microwatts) versus pulse
width modulated drive voltage (in volts). As seen in Figure 3, when voltage
drops below 3.0 v, the intensity rises above 1 microwatt. Ans. 39-40; see
also Spec. 10.
Appellant argues Figure 3 is a mere embodiment and not an exclusive
illustration of the claim. App. Br. 6. This argument, however, misconstrues
the Examiner’s rejection. As the Examiner finds, Ans. 41, claim 1 recites a
voltage and intensity relationship and range not described anywhere in the
Specification, including, but not limited to, Figure 3. The scope of the claim
exceeds what Appellant’s disclosure demonstrates he possessed. See
Atlantic Res. Marketing Sys., Inc. v. Troy, 659 F.3d 1345, 1355 (Fed. Cir.
2011) (written description requirement not satisfied when scope of claims
exceeds subject matter inventor disclosed in the written description).
Accordingly, we are not persuaded the Examiner erred in finding claim 1
does not satisfy the written description requirement.
Appellant also argues the Examiner erred in finding the claims fail to
satisfy the enablement requirement of35U.S.C. § 112. App. Br. 6.2
Appellant cursorily invokes the same argument made against the written
description rejection, contending “the application teaches using between 3
and 3.3 [volts], which is less than 3.3 volts [as claimed]. Therefore, again,
the rejection should be reversed.” Id. We, again, are not persuaded.
As the Examiner finds, the Specification (including Figure 3), “while
being enabling for . . . ‘a drive voltage between approximately 3.0 volts and
3.3 volts’ . . . does not reasonably provide enablement for . . . ‘a voltage less
2 Appellant again groups the claims together, and we choose claim 1 as
representative of the group. See 37 C.F.R. § 41.37(c)(iv).
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Application 12/621,581
than 3.3 volts to drive the liquid crystal cell such that said cell has a relative
intensity of less than one microwatt.’” Ans. 43 (emphasis added). In other
words, the Specification does not enable a person skilled in the art “to make
and use the invention commensurate in scope with these claims.” Ans. 44.
Appellant’s Opening Brief omits any discussion of the factors enumerated in
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) and is devoid of any other
substantive explanation as to why the Examiner erred. See 37 C.F.R.
§ 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for . . . patentability of the claim.”); cf.
See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (interpreting Rule
41.37 as requiring more than “a naked assertion” in the appeal brief).
Although Appellant belatedly discusses some of the Wands factors in the
Reply Brief, we find the arguments conclusory and not persuasive. See, e.g.,
Reply Br. 2 (“graphs are shown and there are the diagrams which show
specific working examples and, in fact, numerous working examples. See
Figures 2 and 3.”).
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1—6 and 8—12 under pre-AIA 35 U.S.C. § 112, first paragraph, as
failing to satisfy the written description requirement. We also sustain the
Examiner’s rejection of the same claims under pre-AIA 35 U.S.C. § 112,
first paragraph, as failing to enable any person skilled in the art to make and
use the claimed invention.
35 U.S.C. § 112, Second Paragraph Rejections
Appellant argues the Examiner erred in finding claim 1 indefinite
under pre-AIA 35 U.S.C. § 112, second paragraph. Appellant asserts the
Examiner’s rejection is based on the phrase “positioned to receive incident
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light,” and Appellant contends the word “positioned” is well understood by
“one with ordinary command of English skills.” App. Br. 6 (emphasis
added). Even if we agree with Appellant’s contention that “positioned” is
not indefinite, however, Appellant has not demonstrated error.
The Examiner finds the phrase “said all positioned to receive incident
light” is indefinite. Ans. 48-49 (emphasis added). As the Examiner
explains, there is insufficient antecedent basis for the phrase “said ah.” Id.
Namely, it is unclear whether the phrase “said ah” refers to “liquid crystal
material,” or a “liquid crystal cell having a liquid crystal material,” or the
foregoing elements plus the previously recited “a polarization beam splitter.”
Id. (citing App. Br. 11). Appellant’s Brief does not address this issue, or
explain why the Examiner erred. Ans. 48. Accordingly, we sustain the
rejection.
Appellant also does not address the Examiner’s indefmiteness
rejection of claim 8 (the only other independent claim). Claim 8 recites
circuitry to drive a cell at “relative intensity such that said o/less than one
microwatt.” App. Br. 12 (emphasis added). The Examiner finds this
limitation indefinite. Ans. 53. With no argument from Appellant, we
summarily sustain this rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection
to the Board, ... the Board may treat any argument with respect to that
ground of rejection as waived.”).
Having sustained the Examiner’s rejection of independent claims 1
and 8 as indefinite, we also sustain the rejection of dependent claims 2—6
and 9-12 as indefinite, because those claims include the limitations of
claims 1 and 8.
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35 U.S.C. § 103(a) Rejections
We adopt the Examiner’s findings in the Answer and the Final
Rejection, and we add the following primarily for emphasis. Appellant
argues the Examiner erred, with respect to each of the (alternative)
obviousness rejections, in finding the prior art teaches a “pulse width
modulation scheme.” App. Br. 7. As the Examiner finds, however, Kang
teaches a “pulse width modulated signal,” Kang 114, and Appellant also
concedes Sandberg teaches a pulse width modulation scheme, App. Br. 7.
Ans. 57—58. Although Appellant argues other references do not teach pulse
width modulation, such argument is not persuasive because “one cannot
show non-obviousness by attacking references individually where ... the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413,426 (CCPA1981).
Appellant further argues the Examiner erred (again, with respect to
each of the obviousness rejections) in finding the prior art teaches driving a
liquid crystal display “under 3.3 volts.” App. Br. 8. As the Examiner finds,
however, several of the cited references teach exactly that. Ans. 61 (citing
Kang 146, Figs. 4—8; Sandberg 1100, Fig. 7B; Patel col. 4,11. 50—68).
Appellant contends the “point of the claimed invention is that by an
advantageous arrangement of features, relatively low power and low voltage
may be used, which is advantageous since many semiconductor circuits
operate at very low voltages.” App. Br. 8. Regardless of this alleged
“point” or purpose, Appellant does not identify any error in the Examiner’s
finding that this “advantageous” combination of elements is taught in the
cited references.
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Application 12/621,581
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1—6 and 8—12 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Kang, Sandberg, Dir, Delboulbe, and Patel, and we sustain the rejection of
the same claims under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Patel, Rumbaugh, Kimura, Kang, and Sandberg.3
DECISION
The Examiner’s rejections of claims 1—6 and 8—12 under pre-AIA
35 U.S.C. § 112 are AFFIRMED.
The Examiner’s rejections of claims 1—6 and 8—12 under pre-AIA
35 U.S.C. § 103(a) are 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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
3 Although the Examiner found the foregoing claims indefinite, in this case
Appellant’s arguments raise no issues requiring us to speculate as to the
scope or meaning of the relevant claim limitations, so as to preclude us from
sustaining the Examiner’s obviousness rejections.
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