Ex Parte SUNG et al

Patent Trial and Appeal Board

Feb 24, 2016

12385759 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/385,759 04/17/2009
89980 7590 02/26/2016
NSIPLAW
P.O. Box 65745
Washington, DC 20035
FIRST NAMED INVENTOR
Gee Young SUNG
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.
012052.1151 8728
EXAMINER
BELANI, KISHIN G
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
pto@nsiplaw.com
pto.nsip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEE YOUNG SUNG, YUN-TAE KIM, DU-SIK PARK,
DONG KYUNG NAM, and JU YONG PARK
Appeal2014-003026
Application 12/385,759
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN F. HORVATH and
KEVIN C. TROCK, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003026
Application 12/385,759
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1--4 and 6-27. (App. Br. 2). We have jurisdiction under 35 U.S.C.
§ 6(b ).
Exemplary Claims
Exemplary claims 1, 8, and 11 under appeal read as follows (emphasis
added):
1. A two dimensional/three dimensional (2D/3D) switchable
autostereoscopic display apparatus, the apparatus comprising:
a display unit including a first display and a second
display, and configured to selectively output one of a 2D image and a
3D image through a convertible lens located at a position between the
first display and the second display, the convertible lens being
configured to selectively operate as a lenticular lens when the 3D
image is output,
wherein the convertible lens includes an electrical
diffuser lens and a lenticular lens; and
a control unit to control the first display, second display,
and convertible lens to selectively output the one of the 2D image and
the 3D image, with the control of the selective outputting including
controlling the selective operation of the convertible lens,
wherein, when the control unit selectively outputs the 3D
image, the control unit controls the first display to output light
representing the 3D image, controls the second display to operate in a
transparent state, controls the electrical diffuser lens to operate in a
transparent state, and controls the lenticular lens to refract light of the
light representing the 3D image to a plurality of viewpoints to output
the 3D image.
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Application 12/385,759
8. A two dimensional/three dimensional 2D/3D switchable
autostereoscopic display method, the method comprising:
selectively outputting light through a first display;
selectively controlling an electrical diffuser lens of a
convertible lens to diffuse the light output by the first display, with the
diffused light meeting requirements for being a backlight to a second
display;
selectively controlling the second display to be in one of a
transparent state or an image generating state to output a 2D image,
the outputting of the 2D image being made through provision of the
backlight when the electrical diffuser lens is controlled to operate as
the diffuser and the first display is controlled to output the light; and
selectively controlling the first display to output light
representing the 3D image, the electrical diffuser lens of the
convertible lens to operate in a transparent state, and the second
display to operate in the transparent state, when the 3D image is
set to be output through the second display.
11. At least one non-transitory computer readable recording
medium controlling at least one processing device to implement
the method of claim 10. 1
Rejections on Appeal
The Examiner rejected claims 1--4 and 6-27 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The Examiner rejected claim 25 under 35 U.S.C. § 102(b) as being
anticipated by IJzerman et al, 7.4: Design of 2D/3D Switchable Displays,
SID 05 Digest, © 2005 SID.
1 Article of manufacture claim 11 depends from method claim 10 which
depends from method 9 which depends from method claim 8.
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Appeal2014-003026
Application 12/385,759
The Examiner rejected claims 1--4, 6-9, 13-19, and 21-24 under
35 U.S.C. § 103(a) as being unpatentable over the combination of IJzerman
and Scharenbroch et al (US 2005/0179827 Al; pub. Aug. 18, 2005).2
The Examiner rejected claims 10-12 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of IJzerman, Scharenbroch, and
Harrold et al (US 2005/0030301 Al; pub. Feb. 10, 2005). 3
The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of IJzerman and Harrold.4
The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as being
unpatentable over combination of IJzerman, Scharenbroch, and Bayrle et al
(US 7,911,439 B2; iss. Mar. 22, 2011).
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claims 1--4
and 6-27 under 35 U.S.C. § 112, second paragraph, because:
In the Final Office Action the only allegations provided
by the Examiner for finding claims 1-4 and 6-27 indefinite were
conclusory statements that the claims and specification did not
teach "how these displays are controlled to operate as claimed,"
and did not teach "how is the light selectively outputted through
a first display, and how the second display is controlled to
2 Separate patentability is not argued for claims 2--4, 6-9, 13-19, and 21-24.
Except for our ultimate decision, this rejection of these claims is not
discussed further herein.
3 Separate patentability is not argued for claims 10-12 and 20. Rather,
rejection of these claims turns on our decision as to the underlying§ 103
rejection of claim 1, and is not further addressed herein.
4 Separate patentability is not argued for claim 26. Rather, rejection of this
claim turns on our decision as to the underlying § 102(b) rejection of claim
25, and is not further addressed herein.
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Appeal2014-003026
Application 12/385,759
operate in a transparent state, when the 3D image is set to be
output through the second display."
Appellants submit that the reasons provided by the
Examiner do not establish a prima facie case of indefiniteness
as the Examiner fails to explain in any way why one of ordinary
skill in the art could not determine the metes and bounds of
what is claimed. By way of example only, the Board is
respectfully referred to the above Summary of the Claimed
Subject Matter, FIGS. 1, 3-4 and 8, and the following
paragraphs from the Specification which are reproduced below
to show definitively that the claimed subject matter is supported
by and is consistent with the Specification.
App Br. 12.
2. Appellants contend that the Examiner erred in rejecting claim 25
under 35 U.S.C. § 102(b) because "Ijzerman only describes a single LCD
screen." App. Br. 18. Therefore:
Ijzerman does not disclose at least the features of
"wherein the first mode comprises: controlling a transmission
panel between first and second displays to diffuse light from
the first display and controlling the second display to modify
incident light to generate a 2D image, and the second mode
comprises: controlling the first display to generate light
representing a 3D image, controlling the transmission panel to
modify the generated light representing the 3D image for 3D
viewing, and controlling the second display to operate in a
transparent state to pass through the modified light for output of
the 3D image differently from the modification of the incident
light to generate the 2D image," as recited in independent claim
25.
App Br. 17, (Appellants' emphasis omitted, panel emphases added.)
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Appeal2014-003026
Application 12/385,759
3. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he Examiner's apparent position is that either one of Fig. 1
and Fig. 4 of Ijzerman shows a display which corresponds to
the recited second display and could be combined with the LCD
of Fig. 2. However, for the reasons set forth above, the
Examiner's assertions are in error and it is submitted that
Ijzerman fails to disclose or suggest "a display unit including
a first display and a second display, and configured to
selectively output one of a 2D image and a 3D image through a
convertible lens located at a position between the first display
and the second display," as recited in claim 1.
App Br. 21. (Appellants' emphasis omitted, panel emphasis added).
Issues on Appeal
Did the Examiner err in rejecting claims 1--4 and 6-27 as being
indefinite?
Did the Examiner err in rejecting claim 25 as being anticipated under
35 U.S.C. § 102(b) because IJzerman fails to describe the argued
limitations?
Did the Examiner err in rejecting claims 1--4, 6-24, 26, and 27 as
being unpatentable under 35 U.S.C. § 103(a) because the combination of
IJzerman and the various other references fail to describe the argued
limitations?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
As to Appellants' above contention 1, we agree as to claims 1--4, 6-
10, 14--25, and 27. The Examiner's analysis concludes Appellants' claims
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Application 12/385,759
and Specification fail to teach "how these displays are controlled to operate
as claimed," "how[] the light selectively [is] outputted through a first
display," and "how the second display is controlled to operate in a
transparent state." Final Act. 3. These conclusions are not issues of
indefiniteness, but rather issues of enablement under 35 U.S.C. § 112, first
paragraph. A "first paragraph" enablement rejection requires a supporting
Wands factors analysis. See MPEP § 2164.01 citing In re Wands, 858 F.2d
731, 73 7 (Fed. Cir.19 88). We find no such analysis presented by the
Examiner in the record before us. For these claims, Appellants correctly
point out "the reasons provided by the Examiner do not establish a prim a
facie case of indefiniteness" under 35 U.S.C. § 112, second paragraph. App.
Br. 12.
As to Appellants' above contention 1, we disagree as to claims 11-13
and 26. Appellants' application as filed contained twenty-six claims, four of
which (claims 1, 8, 21, and 25) depended from no other claim and therefore
where independent claims. Four other claims (claims 11-13 and 26) were
structured as articles of manufacture ("recording medium" claims), and
reference method claims for their limitations. While such "manufacture/
method" claims are sometimes construed as independent claims that
reference other claims for certain limitations, here the intrinsic evidence
does not support such an interpretation. Rather, this record requires us to
interpret claims 11-13 and 26 as dependent manufacture claims which
dependent from parent method claims. The evidence supporting such an
interpretation includes ( 1) Appellants' New Application Fee Transmittal
form, filed April 17, 2009, which states only four (not eight) independent
claims have been filed; and (2) Appellants' Appeal Brief at page 25 which
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Application 12/385,759
states "claims 9 and 13-20 depend from claim 8," "[c]laims 10-12 ...
depend from claim 8," and "[c]laim 26 depends from claim 25."
Because claims 11-13 and 26 each recite both a "medium" (an article
of manufacture) and a method (by their dependency) for using that medium,
they do not apprise a person of ordinary skill in the art of their scope, and
they are invalid under section 112, paragraph 2. Particularly, the claims are
indefinite because it is unclear whether infringement occurs when one
creates a manufacture that allows the user to perform the method, or whether
infringement occurs when the user actually uses the manufacture to perform
the method. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
1377, 1383-84 (Fed. Cir. 2005) (Claims were held indefinite because they
claimed both a system and a method for using that system.), and In re Katz,
639 F.3d 1303, 1318 (Fed. Cir. 2011) (Claims were held indefinite because
they claimed both an apparatus and method of use.). Because our analysis
differs from the Examiner's, we designate our analysis as a new ground of
rejection of claims 11-13 and 26 under 35 U.S.C. § 112, second paragraph.
As to Appellants' above contention 2, we agree. The Examiner
responded in the Answer, stating:
A person of ordinary skill in the art would recognize that in any
2D/3D television, only the front display is visible, the
remaining details (any other displays, diffuser lens, lenticular
lens, audio and control means) are packaged behind the front
display. Moreover, it won't be possible to form a 2D image
without a front display, as the image is only formed on the
display; and a 3D image, although it may form in front of, on or
behind the front display, a front display must be present for a
viewer to perceive an image's depth, which is in reference with
[i.e. on, behind or in front of] the front display.
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Appeal2014-003026
Application 12/385,759
Ans. 29. We conclude that the Examiner's response is relying on an
improper taking of office notice. MPEP § 2144.03A limits official notice to
facts which "serve only to 'fill in the gaps' which might exist in the
evidentiary showing." The Examiner's response is not directed merely to
filling in a gap. Rather, it goes to the heart of Appellants' invention. Also,
MPEP § 2144.03A is quite clear that "while [a taking of] 'official notice'
may be relied on, these circumstances should be rare when an application is
under final rejection." We do not find that rare circumstance before us.
Lastly, the rejection before us is under 35 U.S.C. § 102(b), and this taking of
official notice is inconsistent with an anticipation rejection. That is, we
conclude the Examiner is now using "official notice" as a secondary basis to
show the claimed invention would have been obvious (without properly
explaining the obviousness rejection).
As to Appellants' above contention 3, we agree for the reasons
discussed above with respect to contention 2.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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Appeal2014-003026
Application 12/385,759
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 25 as being anticipated by IJzerman under 35 U.S.C. § 102(b).
(2) Appellants have established that the Examiner erred in rejecting
claims 1--4, 6-24, 26, and 27 as being unpatentable under 35 U.S.C.
§ 103(a).
(3) Appellants have established that the Examiner erred in rejecting
claim 1--4, 6-10, 14--25, and 27 as being indefinite under 35 U.S.C. § 112,
second paragraph.
(4) The Examiner did not err in rejecting claim 11-13 and 26 as being
indefinite under 35 U.S.C. § 112, second paragraph.
(5) On this record, claims 1--4, 6-10, 14--25, and 27 have not been
shown to be unpatentable.
(6) Claims 11-13 and 26 are not patentable.
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Appeal2014-003026
Application 12/385,759
DECISION
The Examiner's rejection of claim 25 as being anticipated under
35 U.S.C. § 102(b) is reversed.
The Examiner's rejections of claims 1--4, 6-24, 26, and 27 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
The Examiner's rejection of claims 1--4, 6-10, 14--25, and 27 as being
indefinite under 35 U.S.C. § 112, second paragraph, is reversed.
The Examiner's rejection of claims 11-13 and 26 as being indefinite
under 35 U.S.C. § 112, second paragraph, 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)(l )(iv).
AFFIRMED-IN-PART
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