Ex Parte Su et al

Patent Trial and Appeal Board

Jan 29, 2015

12495852 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JENN-JIA SU, MING-FENG TIEN,
TING-JUI CHANG, and PO-LUN CHEN1
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Appeal 2012–003716
Application 12/495,852
Technology Center 2600
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Before JEAN R. HOMERE, JOHNNY A. KUMAR, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 The Real Party-in-Interest is AU of Hsin-Chu, Taiwan. App. Br. 2.
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SUMMARY

Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–5. Specifically, claims 1–5 stand
rejected under 35 U.S.C. § 103(a) as being obvious over the combination of
Shin (US 2007/0002194 A1, January 4, 2007) (“Shin”) and Kim (US
5,923,310, July 13, 1999) (“Kim”).
Claims 1-5 also stand rejected as unpatentable under 35 U.S.C. §
103(a) as being obvious over the combination of Kim and Shimoshikiryo
(US 6,958,791 B2, October 25, 2005) (“Shimoshikiryo”).
Claim 4 also stands rejected as unpatentable under 35 U.S.C. § 112,
first paragraph, for lack of adequate written description.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a liquid crystal display including a
gate driver, a data driver and a pixel matrix. The gate driver is for outputting
a plurality of gate signals successively. The data driver is for providing a
plurality of data signals. The pixel matrix includes a number of pixels.
Each pixel includes a first sub-pixel, a second subpixel and a voltage
coupling device. The voltage coupling device is coupled between the first
sub-pixel and the second sub-pixel such that pixel voltages of the first sub-
pixel and the second sub-pixel are different and have relevant variation.
Abstract.

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REPRESENTATIVE CLAIM

Because Appellants base their arguments with respect to the
Examiner’s determination of obviousness on independent claim 1, we select
independent claim 1 as representative. App. Br. 11. Claim 1 recites:
1. A method for driving a liquid crystal display, the
liquid crystal display comprising a gate driver, a data driver and
a plurality of rows of pixels, the gate driver outputting a
plurality of gate signals, the data driver outputting a plurality of
data signals, each of the pixels comprising a first sub-pixel and
a second sub-pixel, the first sub-pixel having a first switch
device, a first pixel electrode, a first common electrode and a
first electrode, the first pixel electrode and the first common
electrode forming a first storage capacitor, the second sub-pixel
having a second switch device, a second pixel electrode, a
second common electrode and a second electrode, the second
pixel electrode and the second common electrode forming a
second storage capacitor, the method comprising:

(a) enabling a row of pixels according to the
corresponding gate signal to turn on the first switch device and
the second switch device of each pixel in the row of pixels,
inputting the corresponding data signal to the first pixel
electrode and the second pixel electrode and respectively
providing a first voltage and a second voltage to the first
electrodes and the second electrodes in the row of pixels; and

(b) after the gate signal is stopped outputting for a period
of time, changing the first voltage of each pixel in the row of
pixels to cause a voltage of the corresponding second common
electrode to change through voltage coupling between the
corresponding first sub-pixel and second sub-pixel and adjust
voltages of the corresponding first pixel electrode and the
second pixel electrode such that the voltage of the first pixel
electrode is not equal to the voltage of the second pixel
electrode, wherein voltage variation ΔVp1 of the first pixel
electrode, voltage variation ΔVp2 of the second pixel electrode,
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variation ΔV1 of the first voltage and voltage variation ΔV2 of
the second common electrode have the following relationship:
ΔVp1 = c1*ΔV1 + c2*ΔV2; ΔVp2 = c3*ΔV1 + c4*ΔV2, and
constants c1 and c2 are not both zero, constants c3 and c4 are
not both zero.

App. Br. App’x at A-1-2.

Dependent claim 4 is rejected as lacking adequate written description
support. App. Br. 4. Claim 4 recites
4. The method according to claim 1, wherein in the
step (b), the first voltage and the second voltage vary a swing
type and the first voltage has a varying direction opposite to the
second voltage.

App. Br. App’x at A-2.

ISSUES AND ANALYSES
Issue 1
Appellants argue that the Examiner erred in finding that Appellants’
proffered Rule 131 declaration and supporting documents were insufficient
to overcome the Examiner’s finding that Shin was prior art to Appellants’
application. App. Br. 8.
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Analysis
Appellants filed their US Appl. No. 12/495,852 (the “’852
application”) on July 1, 2009.2 Shin was filed on June 12, 2006 and was
published as US 2007/0002194 A1 on January 4, 2007. In an attempt to
overcome the Examiner’s finding that the Shin reference is prior art to
Appellants’ ’852 application, Appellants filed an affidavit under 37 C.F.R. §
1.131, attesting, inter alia, that they had conceived of the invention prior to
the filing of the Shin application, and claiming a conception date of at least
October 1, 2005. App. Br. Evid. App’x at 1-4. A claim of prior
inventorship, however, also requires corroborating evidence. See, e.g.,
Sandt Tech., Ltd. v. Resco Metal and Plastics Corp., 264 F.3d 1344, 1350
(Fed. Cir. 2001). Appellants accordingly filed supporting documents as
attachments to the affidavit, allegedly demonstrating that Appellants
conceived the invention prior to the Shin filing and were diligent during the
period extending from just prior to the Shin filing date through filing date of
Appellants’ Taiwan and U.S. patent applications. App. Br. Evid. App’x at
Attachments 1-10.
Appellants point to Attachment 1 of the affidavit, which they claim
discloses a series of forms, created on September 28, 2005, which document
an application, written largely in Chinese, with a reference number of
0305008, and a “Chinese name.” App. Br. 8. Appellants contend that the
application, with an AUO reference number of AU0510001, lists the title of

2 Appellants state that the instant application, filed July 1, 2009, is a
divisional application of US Appl. No. 11/682,003, filed March 5, 2007.
Spec. 1.
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the invention, “Liquid Crystal Display,” a receipt date of January 1, 2005,
and Appellants’ names listed as the inventors. Id. at 8-9. Appellants also
point to Attachment 3 as disclosing the names of the four Appellants as the
inventors, and the reference number 0305008. Id. at 9.
Appellants next describe two documents, “AU0510001_dis” and
“AU0510001_tec,” which, they allege, constitute an invention disclosure
and proposal for the “Liquid Crystal Display” application, submitted on
September 28, 2005, and also listing the four Appellants as inventors. App.
Br. at 9-10. Appellants contend that page 8 of document AU0510001_tec
discloses the same proposed pixel structure as Figure 3 of Appellants’ ’852
application. Id. at 10. Appellants also contend that page 9 of the same
document discloses the same proposed pixel driving method as Figure 5 of
Appellants’ application. Id.
Appellants further argue that Attachments 1–10 of their declaration
support their contention that they were diligent in preparing and filing the
application from October 1, 2005 through the September 4, 2006 filing date
of their Taiwan patent application. App Br. 10. Appellants also point to
Attachment 11 as demonstrating continuous diligence through the March 5,
2007 filing date of the US patent application. App. Br. 10. Consequently,
argue Appellants, they have established conception prior to the filing date of
the Shin application, and reasonable diligence in filing the application. Id. at
11.
The Examiner responds that the submitted Rule 131 affidavit and the
supporting documents are insufficient to establish conception of the
invention prior to the effective date of Shin. Ans. 2. In the Final Rejection,
the Examiner found that there is no complete disclosure in English to prove
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that the claimed invention was invented by the applicant before the effective
date of the Shin application. Final Rej. 2. The Examiner found that, for
Appellants’ Rule 131 declaration to be effective, the disclosure (if not in
English, then accompanied by a certified English translation) must show
conception prior to the effective date of the Shin application, and must
sufficiently teach each and every limitation of at least the independent
claim(s). Id. at 2-3. The Examiner finds that the Attachments to Appellants’
Rule 131 declaration are insufficient in that they fail to disclose a number of
limitations of at least independent claim 1. Id. at 3.
We agree with the Examiner. As an initial matter, we find the
inventor’s Rule 131 affidavit insufficient on its face to establish conception
prior to the effective date of the Shin reference, as well as the requisite
reasonable diligence. The purpose of a Rule 131 affidavit or declaration is
to overcome a prior art rejection under 35 U.S.C. §§ 102 or 103 by proving
invention of the claimed subject matter by the applicant prior to the effective
date of the reference relied upon in the rejection. MPEP § 715.01. The
declaration and exhibits must clearly explain which facts or data the
applicant is relying on to show completion of his or her invention prior to
the effective date. Id.
Appellants’ Rule 131 declaration states, with respect to Appellants’
alleged conception:
October 1, 2005: the inventors of AU Optronics Corp. (AUO)
provided the invention disclosure with the AUO No.
AU0510001. Then, the disclosure was examined by AUO on
November 4, 2005.
…

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AUO entrusted SUNDIAL Intellectual Property Office
(SUNDIAL) for preparing: the TW/US patent application with
AUO’s reference number AU0510001. Then, on November 21,
2005, SUNDIAL Conformed [sic] AUO’s entrusting of the TW
patent applicant and, informed AUO that the patent engineer of
SUNDIAL, would have an interview with the inventors of
AUO on November 22 to discuss the disclosure of the patent
application AU0510001 and Sundial Reference No,
TW2707PA.

Exhibit App’x at 2.
Appellants’ declaration, therefore, contains little more than a bare
assertion that the invention was disclosed to AUO and SUNDIAL by the
inventors. However:
A general allegation that the invention was completed prior to
the date of the reference is not sufficient. Similarly, a
declaration by the inventor to the effect that his or her invention
was conceived or reduced to practice prior to the reference date,
without a statement of facts demonstrating the correctness of
this conclusion, is insufficient to satisfy 37 CFR 1.131(a).

MPEP § 715.07(I). Appellants do not provide any explanation of facts
supporting their allegation that, on the date of conception, they were in
possession of either the whole invention as claimed or something falling
within the claim(s) prior to the effective date of the reference being
antedated. MPEP § 715.02(I). There is no explanation of how the
inventor’s disclosure contained the limitations recited by, at least,
Appellants’ independent claim 1.
Appellants’ affidavit also points to the three pages of Attachment 1 as
supporting conception. Exhibit App’x at 2; see also App. Br. 8. Attachment
1 appears to depict reproductions of screen captures from a computer, but
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the screen captures are of very poor quality and generally illegible, although
we discern the title of the invention “Liquid Crystal Display” on each. Most
of the language in the provided screen saves is Chinese, with no certified
translation provided. Furthermore, Attachment 1 does not appear to describe
or depict any of the limitations of the conceived invention.
Attachment 3, also cited by Appellants as proof of conception, is also
largely in untranslated Chinese, with the exception, inter alia, of the
inventors’ names. Moreover, the remaining Attachments 2 and 4–11, which
purport to show Appellants’ diligence in preparing and filing their Taiwan
and US patent applications, appear to constitute a series of emails, all of
which are largely in untranslated Chinese language. Appellants provide no
evidence, other than their unsupported declaration, that these documents
actually demonstrate the required diligence in reduction to practice.
Appellants contend that the rules do not require a certified translation
of the documents into English. Reply Br. 8. Appellants are strictly correct
in that there is no formal requirement in the MPEP that Appellant’s provide
a certified English translation of Chinese-language documents submitted in
support of their Rule 131 declaration. However, Rule 131 does require that:
The showing of facts for an oath or declaration … shall be such,
in character and weight, as to establish … conception of the
invention prior to the effective date of the reference coupled
with due diligence from prior to said date to a subsequent
reduction to practice or to the filing of the application. Original
exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.

37 C.F.R. § 1.131(b).
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Moreover, “[v]ague and general statements in broad terms about what
the exhibits describe along with a general assertion that the exhibits describe
a reduction to practice “amounts essentially to mere pleading, unsupported
by proof or a showing of facts” and thus does not satisfy the requirements of
37 C.F.R. § 1.131(b). MPEP § 715.07(I); (quoting In re Borkowski, 505
F.2d 713 (CCPA 1974)). Finally, we do not think it unreasonable, when
Appellants adduce proofs that are alleged to be probative of prior conception
and diligence, to require Appellants to provide a certified translation of those
proofs, so that the Examiner (and the Board) can assess their evidentiary
weight.
We therefore find that Attachments 2–11, which are submitted as
appendices to Appellants’ inventor’s declaration of priority (an amendment
to the application) are insufficient proofs of reduction to practice.
Finally, Appellants make no argument that the Shin application is
otherwise ineligible as a prior art reference to their application. As such, we
consider any such argument waived on appeal. See 37 C.F.R. §
41.37(c)(1)(vii); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (Informative) (Arguments not raised in the Appellate Brief are
considered waived). We therefore affirm the Examiner’s rejection on this
ground.

Issue 2
Appellants next argue that Examiner erred in finding that claims 1–5
are obvious over the combination of Kim and Shimoshikiryo. Reply Br. 12.
According to Appellants, the cited prior art references cannot be properly
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combined because the combination of Shimoshikiryo and Kim teaches away
from the purpose of the invention claimed by Shimoshikiryo. Id.

Analysis
Appellants contend that they have previously argued that the
combination of Shimoshikiryo and Kim teaches away from the purpose of
the invention claimed by Shimoshikiryo. App. Br. 12. Appellants contend
that, in the Final Rejection of the claims, the Examiner found that the
combination of Shimoshikiryo and Kim would result in an additional
advantage by reducing the sensitivity to the viewing angle of the display,
thereby improving the maximum viewing angle of a Liquid Crystal Display
(“LCD”), as taught by Kim. App. Br. 12. According to Appellants, the
Examiner found Appellants’ recognition of another advantage, which would
flow naturally from following the suggestions of the prior art, could not be
the basis for patentability when the differences would otherwise be obvious.
Id. (citing Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Appellants provide a brief exegesis of Obaiya, but argue that Obaiya
is neither relevant to, nor controlling of, Appellants’ argument that the
combination of Shimoshikiryo and Kim teaches away from the purpose of
the invention claimed by Shimoshikiryo.
“A proposed combining of references teaches away from the claimed
invention when the modification renders the prior art reference inoperable
for its intended purpose.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
However, Appellants provide no argument or evidence as to precisely how
or why the combination of Shimoshikiryo and Kim would render the
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invention of Shimoshikiryo inoperable or unsuitable for its intended
purpose.
Rather, Appellants merely make the unsupported assertion in their
Brief that the combination of Shimoshikiryo and Kim “teaches away” from
the purpose of the invention claimed by Shimoshikiryo. App. Br. 12.
Because Appellants point to no factual evidence in support of this assertion
that the combination teaches away, such an assertion constitutes mere
attorney argument, which are not persuasive. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (Attorney arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative
value). We therefore affirm the Examiner’s rejection on this ground.

Issue 3
Appellants next argue that the Examiner failed in finding that claim 4
is unpatentable under 35 U.S.C. § 112, first paragraph, for lack of written
description. App. Br. 5. Appellants reject the Examiner’s finding that the
limitation of claim 4 reciting “wherein in the step (b), the first voltage and
the second voltage vary a swing type and the first voltage has a varying
direction opposite to the second voltage” is irreconcilable with step (b) of
claim 1. Id.

Analysis
Appellants argue that claim 1 recites the feature (i) of changing the
first voltage (Ve1) of each pixel in the row of pixels to cause a voltage
(Vcom2) of the corresponding second common electrode to change through
voltage coupling between the corresponding first sub-pixel and second sup-
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pixel (i.e., through the voltage coupling device 232c). (App. Br. 5; see also
Spec., FIG. 3). According to Appellants, if the first voltage Ve1 of the first
electrode E1 varies in a swing type, then because of the voltage coupling
effect between the first common electrode com1 and the second common
electrode com2, the voltage Vcom2 of the second common electrode com2
will also vary in a swing type. Id. However, claim 1 recites only that
voltage of the second common electrode changes through the voltage
coupling effect, rather than changing in the same direction as the first
voltage. Id. at 5–6.
Appellants contend that claim 4, which depends from claim 1, further
recites the feature (ii) that the first voltage (Ve1) and the second voltage
(Ve2) vary a swing type and the first voltage (Ve1) also has a varying
direction opposite to the second voltage (Ve2). App. Br. 6. Appellants
argue that voltage Vcom2 of the second common electrode com2 will be
influenced simultaneously by the first voltage Ve1 and the second voltage
Ve2, respectively through the voltage coupling device 232c between the first
common electrode com1 and the second common electrode com2 as well as
the third storage capacitor CST2-2 between the second common electrode
com2 and the second electrode E2. Id.
Therefore, Appellants argue, between the influence of the voltage
coupling device 232c and the third storage capacitor CST2-2, the voltage
Vcom2 of the second common electrode com2 is not limited to varying only
in the same direction as the first voltage Ve1, or varying only in the same
direction as the second voltage Ve2. App. Br. 6. Instead, contend
Appellants, the voltage Vcom2 of the second common electrode com2 will
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have a swing type determined by the combined effect of the first voltage
Ve1 and the second voltage Ve2.
The Examiner responds that claims 1 and 4 contain subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the relevant art that Appellants, at the time the
application was filed, had possession of the claimed invention. Ans. 4. The
Examiner finds that when claim 4 is read together with independent claim 1,
the claim recites (i) “after the gate signal is stopped outputting for a period
of time, changing the first voltage of each pixel in the row of pixels to cause
a voltage of the corresponding second common electrode to change through
voltage coupling between the corresponding first sub-pixel and second sub-
pixel” (from claim 1); and (ii) “wherein in the step (b), the first voltage and
the second voltage vary a swing type and the first voltage has a varying
direction opposite to the second voltage” (from claim 4). Id.
The Examiner finds that the original disclosure discloses a LCD of a
first embodiment comprising a voltage coupling device, such as a capacitor
Cc, disposed between a first (common) voltage Vcoml and a second
common voltage Vcom2 so that a change of a first (common) voltage Vcoml
causes a change of a second common voltage Vcom2. Ans. 4-5 (citing Spec.
Figs. 3–4). The Examiner also finds that this embodiment requires the first
voltage Vel and the second voltage Ve2 having the same varying direction,
whereas claim 4 requires the first voltage Vel and the second voltage Ve2
having the opposite varying direction. Ans. 5. (citing Spec., Fig. 5 and ¶¶
30–31).
The Examiner finds that paragraph [0040] of the Specification,
discloses another embodiment of a LCD, in which the pixel voltages Vp1
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and Vp2 can be adjusted by changing the second voltage Ve2 or the first
voltage Ve1 and the second Ve2 simultaneously, the first voltage Vel and
second Ve2 can be adjusted in a swing-type waveform, and the first voltage
Vel has a swing direction opposite to the second voltage Ve2. Ans. 5. The
Examiner finds, however, that paragraph [0040] does not explicitly disclose
the pixel structure of the LCD. Id. The Examiner finds that this other
embodiment has pixel structure identical to the LCD depicted in Appellants’
Figure 3, so as “to change the first voltage of each pixel in the row of pixels
to cause a voltage of the corresponding second common electrode to change
through voltage coupling between the corresponding first sub-pixel and
second sub-pixel, after the gate signal is stopped outputting for a period of
time,” as required by the above feature (i). Id.
Therefore, the Examiner finds, the original disclosure does not contain
such description and details regarding to a method for performing both the
above underlined features (i) and (ii) of this claim or a combination of the
abovementioned embodiments so as to reasonably convey to one skilled in
the relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention.
We are persuaded by the Appellants’ reasoning on this ground.
Figure 3 of Appellants’ Specification depicts an embodiment by which,
when the first voltage Ve1 of the first electrode E1 varies in a swing type,
the voltage coupling effect between the first common electrode com1 and
the second common electrode com2 (via the coupling capacitor Cc), the
voltage Vcom2 of the second common electrode com2 will also vary in a
swing type. Specifically, the Specification teaches that:
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In the embodiment, the first voltage Ve1 or the first common-
electrode voltage Vcom1 is altered in a swing type and the
second common-electrode voltage Vcom2 is adjusted by an
effect of the voltage coupling device 232c (the capacitor Cc)
such that variations of the pixel voltages Vp1 and Vp2 are both
relevant to variations of the first voltage Ve1 and the second
voltage Ve2 and thus variations of the pixel voltages Vp1 and
Vp2 are relevant to each other.

Spec., ¶ 30. In this instance, it is the capacitance coupling between the two
pixels that causes the first and second voltages, Ve1 and Ve2 to be “relevant
to each other.”
However, paragraph 40 of the Specification describes an additional
feature of the embodiment. Paragraph 40 discloses:
Besides, although the second common-electrode voltage
Vcom2 and the pixel voltages Vp1 and Vp2 are exemplified to
be adjusted by changing the first voltage Ve1, the liquid crystal
display 200 of the invention can also adjust the pixel voltages
Vp1 and Vp2 by changing the second voltage Ve2, or the first
voltage Ve1 and second voltage Ve2 simultaneously. For
example, the first voltage Ve1 and second voltage Ve2 can be
adjusted in a swing-type waveform and the first voltage Ve1
has a swing direction opposite to the second voltage Ve2. As
long as the pixel 232 can have two different pixel voltages Vp1
and Vp2 through a voltage-coupling effect and variations of the
pixel voltages Vp1 and Vp2 are relevant to each other, all the
alternatives are not apart from the scope of the invention.

Spec., ¶ 40 (emphasis added). The Specification also teaches the voltage
Ve2 can be altered via the second electrode E2 and the second common
electrode com2 with the third storage capacitor CST2-2. Spec., ¶ 26.
Consequently, depending upon how the voltage Ve2 is altered, it would be
possible for pixel voltages Vp1 and Vp2 to be swing type voltages having
opposing swing directions.
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To fulfill the written description requirement of 35 U.S.C. § 112, first
paragraph, the disclosure must reasonably convey to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). For the reasons set forth above, we do not affirm the
Examiner’s rejection of claim 4.

DECISION
The Examiner’s final rejection of claims 1–5 as unpatentable under 35
U.S.C. §103(a) is affirmed. However, we have reversed the Examiner’s
written description rejection of claim 4.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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