Ex Parte Sjodin

Patent Trials and Appeals Board

Feb 22, 2016

12423211 - (D) (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/423,211 04/14/2009
26245 7590 02/24/2016
E INK CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
1000 Technology Park Drive
Billerica, MA 01821-4165
FIRST NAMED INVENTOR
Theodore A. Sjodin
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.
H-509 8111
EXAMINER
HOLLAND, JAMES M
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
IP@eink.com
dcole@eink.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODORE A. SJODIN
Appeal2014-003084
Application 12/423,211
Technology Center 2600
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
The present invention relates to driving electro-optic displays. See
generally Spec. 1. Claim 1 is exemplary:
1. A method of driving a bistable electro-optic display
having a plurality of pixels each of which is capable of
displaying at least three optical states, including two extreme
optical states, the method comprising:
Appeal2014-003084
Application 12/423,211
driving the electro-optic display using a first drive
scheme capable of effecting transitions between all of the gray
levels which can be displayed by the pixels; and
driving the electro-optic display using a second drive
scheme which contains only transitions ending at one of the
extreme optical states of the pixels.
Comiskey I
Comiskey II
References and Rejections
US 7,023,420 B2
US 6,473,072 Bl
Apr. 4, 2006
Oct. 29, 2002
Claims 1--4, 6, 7, and 10-16 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Comiskey I.
Claims 5 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Comiskey I and Comiskey II.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Comiskey I.
ANALYSIS
The Anticipation Rejection
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellant's
arguments. We concur with Appellant's conclusion that the Examiner erred
in finding Comiskey I discloses "driving the electro-optic display using a
first drive scheme capable of effecting transitions between all of the gray
levels which can be displayed by the pixels" ("First Driving claim
limitation"); and "driving the electro-optic display using a second drive
scheme which contains only transitions ending at one of the extreme optical
2
Appeal2014-003084
Application 12/423,211
states of the pixels" ("Second Driving claim limitation"), as recited in
independent claim 1. 1
In an anticipation rejection, "it is not enough that the prior art
reference ... includes multiple, distinct teachings that [an] artisan might
somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must "clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference." Id. (quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while "[s]uch picking and choosing
may be entirely proper in the making of a 103, obviousness rejection ... it
has no place in the making of a 102, anticipation rejection." Arkley, 455
F.2d at 587-88.
The Examiner cites Comiskey I's column 6, lines 1-25 for the First
Driving claim limitation. See Ans. 3. The Examiner then cites Comiskey I's
column 15, lines 36-46 for the Second Driving claim limitation. See Ans. 3.
As pointed out by Appellant, Comiskey I explicitly states the teachings of
column 15, lines 36-46 are "in another process." See App. Br. 12;
Comiskey I 15:36. Therefore, the Examiner improperly supports an
anticipation rejection by combining Comiskey I's two separate
1 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
3
Appeal2014-003084
Application 12/423,211
embodiments for the claimed First Driving claim limitation and Second
Driving claim limitation. 2
Because the Examiner fails to provide sufficient evidence to support
the anticipation rejection, we are constrained by the record to reverse the
Examiner's rejection of claim 1, and claims 2--4, 6, 7, and 10-16 for similar
reasons.
The Obviousness Rejection
The Examiner cites additional references for the obviousness rejection
of claims 5, 8, and 9. The Examiner relies on Comiskey I in the same
manner discussed above in the context of claim 1, and does not rely on the
additional references in any manner that remedies the deficiencies of the
underlying anticipation rejection. See Ans. 6-8.
Accordingly, we reverse the Examiner's obviousness rejection of
claims 5, 8, and 9.
DECISION
The Examiner's decision rejecting claims 1-16 is reversed.
REVERSED
2 We express no opinion regarding the obviousness of claim 1 because a
rejection under§ 103 is not before us. Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02. We leave any such further consideration of a
rejection under§ 103, over Comiskey I considered alone or in combination
with additional references, to the Examiner.
4