Ex parte Tanaka

Board of Patent Appeals and Interferences

Jun 15, 2001

08757550 (B.P.A.I. Jun. 15, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SEIICHI TANAKA
____________
Appeal No. 1999-0864
Application No. 08/757,550
____________
HEARD: May 24, 2001
____________
Before FLEMING, LALL, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 1, 3-6, and 12-35. We reverse.
BACKGROUND
The invention at issue in this appeal is a head mounted
display (HMD). A conventional HMD comprises a pair of
enlarging lenses, a pair of field diaphragms, a pair of
miniaturized liquid crystal displays (LCDs), and a pair of
back lights. All these components are mounted in a casing.
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Application No. 08/757,550
In the conventional HMD, the periphery of a main display
image is covered with a black-colored field. As a result, a
user views an LCD screen floating in a black space.
Unfortunately, the difference of brightness between the main
display image and the periphery tires the user’s eyes.
The appellant’s HMD detects a change in the brightness or
color-tone of an image displayed on a screen of its LCDs; a
change in the volume or frequency of an accompanying sound; or
a change of the state surrounding a user who is viewing the
displayed image. According to the detected change, the HMD
varies the brightness or color-tone of the “environmental
image,” i.e., the periphery, surrounding the image on the LCD
screen. Reducing the difference in brightness between the
field-of-vision of the HMD and the external light around the
user reduces his eye fatigue. Varying the brightness or
color-tone, furthermore, enhances the user’s experience.
Claim 22, which is representative for our purposes,
follows:
Claim 22.
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Application No. 08/757,550
We note that the expression “said circumstance detection”1
lacks express antecedent basis and leave it to the appellant
and examiner to correct.
A method for displaying a main image together
with an environmental image disposed at periphery of
the main image, the environmental image providing a
background context for the main image, comprising:
detecting conditions under which a user uses the
image display device, said conditions being external
to the environmental image; and
varying the environmental image according to
conditions detected by said circumstance
detection [sic].1
The prior art of record applied in rejecting the claims
follows:
Yamanaka et al. (Yamanaka) 5,598,297 Jan. 28,
1997
(filed Aug. 17, 1994)
Sawachika et al. (Sawachika) 5,485,172 Jan.
16, 1996
(filed May 17, 1994).
Claims 1, 3, 4, 15-17, 19-25, 28-31, and 35 stand rejected
under 35 U.S.C. § 102(e) as anticipated by Yamanaka. Claims
5, 6, 12-14, 18, 26, 27, and 32-34 stand rejected under 35
U.S.C. § 103(a) as being obvious over Yamanaka in view of
Sawachika. Rather than reiterate the arguments of the
Appeal No. 1999-0864 Page 4
Application No. 08/757,550
appellant or examiner in toto, we refer the reader to the
briefs and answer for the respective details thereof.
OPINION
In deciding this appeal, we considered the subject matter
on appeal and the rejections made by the examiner.
Furthermore, we duly considered the arguments and evidence of
the appellant and examiner. After considering the record, we
are persuaded that the examiner erred in rejecting claims 1,
3-6, and 12-35. Accordingly, we reverse. Our opinion
addresses the following rejections:
• anticipation rejection of claims 1, 3, 4, 15-17, 19-
25, 28-31, and 35
• obviousness rejections of claims 5, 6, 12-14, 18,
26, 27, and 32-34.
We start with the anticipation rejection.
I. Anticipation Rejection of Claims 1, 3, 4, 15-17,
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Application No. 08/757,550
19-25, 28-31, and 35
We begin by noting the following principles from Rowe v.
Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir.
1997).
A prior art reference anticipates a claim only if
the reference discloses, either expressly or
inherently, every limitation of the claim. See
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
"[A]bsence from the reference of any claimed element
negates anticipation." Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84
(Fed. Cir. 1986).
With these principles in mind, we consider the examiner’s
rejection and the appellant’s argument.
The examiner asserts, “in Yamanaka, the luminosity of the
environmental image may be adjusted to high or low in case of
enjoying a TV program or a movie, respectively, by means of an
automatic lighting controller 262, which clearly or inherently
detects the light quantity of the video data of a TV program
or a movie and in response adjusts the luminosity of the
environmental image.” (Examiner’s Answer, ¶ 11.) The
appellant argues, “[t]he automatic lighting controller 262 ...
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Application No. 08/757,550
does not detect conditions external to the image display
device.” (Appeal Br. at 8.)
Claims 1, 3, 4, and 21 specify in pertinent part the
following limitations: “a circumstance detector for detecting
conditions external to the image display device under which a
user uses the image display device; and environmental image-
changing means for varying the environmental image according
to external conditions detected by said circumstance
detector.” Similarly, claims 12-14 and 20 specify in
pertinent part the following limitations: “a circumstance
detector for detecting a quantity or brightness of light of
the main image external to the environmental image under which
a user uses the image display device; and environmental image-
changing means for varying the environmental image according
to detected light quantity or brightness of the main image
detected by said circumstance detector.” Analogously, claims
15-19 specify in pertinent part the following limitations: “a
circumstance detector for detecting a sound volume or sound of
the display device under which a user uses the image display
device; and environmental image-changing means for varying the
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Application No. 08/757,550
environmental image according to the sound volume or sound of
the display device detected by said circumstance detector.”
In addition, claims 22-25, 29-31, and 35 specify in pertinent
part the following limitations: “detecting conditions under
which a user uses the image display device, said conditions
being external to the environmental image; and varying the
environmental image according to conditions detected by said
circumstance detection.” Accordingly, claims 1, 3, 4, 15-17,
19-25, 28-31, and 35 require at least varying an environmental
image of an image display device according to detected
conditions external to the image.
The examiner fails to show a teaching or suggestion of
the limitations in the prior art. “To establish inherency,
the extrinsic evidence ‘must make clear that the missing
descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized
by persons of ordinary skill.’" In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (quoting
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991)). "Inherency, however,
Appeal No. 1999-0864 Page 8
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may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.’" Id., 49 USPQ2d at 1951
(quoting Continental Can Co., 948 F.2d at 1269, 20 USPQ2d at
1749).
Here, although Yamanaka’s “automatic lighting controller
262 can gradually darken the illumination of the environmental
image to begin a movie as if it was effected in a movie
theater[,]” col. 12, ll. 27-29, there is no extrinsic evidence
that the reference detects conditions external to the
environmental image, let alone darkens the illumination
according to such detected conditions. The mere fact that the
controller may darken the illumination of the reference’s
environmental image according to detected conditions external
to the image is insufficient. The lighting controller may
instead darken the illumination when it is activated
regardless of external conditions.
Because it is uncertain whether the reference detects
conditions external to the environmental image, let alone
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Application No. 08/757,550
darkens the illumination according to such detected
conditions, we are not persuaded that Yamanaka teaches the
limitations of “a circumstance detector for detecting
conditions external to the image display device under which a
user uses the image display device; and environmental image-
changing means for varying the environmental image according
to external conditions detected by said circumstance
detector[;]” “a circumstance detector for detecting a quantity
or brightness of light of the main image external to the
environmental image under which a user uses the image display
device; and environmental image-changing means for varying the
environmental image according to detected light quantity or
brightness of the main image detected by said circumstance
detector[;]” “a circumstance detector for detecting a sound
volume or sound of the display device under which a user uses
the image display device; and environmental image-changing
means for varying the environmental image according to the
sound volume or sound of the display device detected by said
circumstance detector[;]” or “detecting conditions under which
a user uses the image display device, said conditions being
external to the environmental image; and varying the
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Application No. 08/757,550
environmental image according to conditions detected by said
circumstance detection.” Therefore, we reverse the rejection
of claims 1, 3, 4, 15-17, 19-25, 28-31, and 35 as anticipated
by Yamanaka. We proceed to the obviousness rejections.
II. Obviousness Rejections of Claims 5, 6, 12-14, 18,
26, 27, and 32-34
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
With these principles in mind, we consider the examiner's
rejections and the appellant’s arguments regarding the
following claims:
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Application No. 08/757,550
• claims 5, 26, and 33
• claims 12-14
• claims 6, 18, 27, 28, 32, and 34.
We start with claims 5, 26, and 33.
A. Claims 5, 26, and 33
The examiner alleges, "[e]lements 3 and 2R and 2L [of
Sawachika] can make up the varying means for varying the
color-tone of the background environmental image of Yamanaka
because the intensity or color tone of a particular color
could be changed also from the environmental image, not only
from a main image, to maintain good image visibility in
different viewing environments." (Examiner's Answer, ¶ 11.)
The appellant argues, "Sawachika does not disclose varying a
color-tone ...." (Appeal Br. at 13.)
Claim 5 specifies in pertinent part the following
limitations: "the environmental image-changing means varies a
color-tone of the environmental image according to the
detected light quantity or brightness." Similarly, claim 26
specifies in pertinent part the following limitations: "the
varying includes changing a color-tone of the environmental
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Application No. 08/757,550
image according to the sensed light quantity or brightness.”
Analogously, claim 33 specifies in pertinent part the
following limitations: “the varying includes changing a color-
tone of the environmental image according to the sensed light
quantity or brightness.” Accordingly, claims 5, 26, and 33
require, inter alia, varying a color-tone of the environmental
image.
The examiner fails to show a teaching or suggestion of
the limitations in the prior art of record. “Obviousness may
not be established using hindsight or in view of the teachings
or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983)). “It is impermissible to use the claimed
invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious.” In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing In re
Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
Appeal No. 1999-0864 Page 13
Application No. 08/757,550
1991)). “The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification.” Id. at 1266, 23 USPQ2d at
1784 (citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984)).
Here, the examiner admits, “Yamanaka et al. ... do not
disclose that the image changing means is used for varying a
color-tone of the environmental image ....” (Examiner’s
Answer, ¶ 10.) Although Sawachika varies an image, it does
not vary the color-tone of an image. To the contrary, the
reference changes the brightness of an image. Specifically,
“the image viewed by the user will brighten in response to
bright outside ambient light, conversely, if a low level of
ambient light is present, the image will darken accordingly.”
Col. 5, ll. 35-38.
Because Yamanaka and Sawachika merely change the
brightness of an image, we are not persuaded that the
teachings from the prior art would appear to have suggested
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the limitations of "the environmental image-changing means
varies a color-tone of the environmental image according to
the detected light quantity or brightness[,]" "the varying
includes changing a color-tone of the environmental image
according to the sensed light quantity or brightness[,]” or
“the varying includes changing a color-tone of the
environmental image according to the sensed light quantity or
brightness.” Therefore, we reverse the rejection of claims 5,
26, and 33 as obvious over Yamanaka in view of Sawachika. We
proceed to claims 12-14.
B. Claims 12-14
The examiner asserts, “it would have been obvious to a
person of ordinary skill in the art at the time the invention
was made to use the means of varying visibility, as taught by
Sawachika, in the apparatus of Yamanaka ....” (Examiner’s
Answer, ¶ 10.) The appellant argues, “Sawachika varies an
object (main) image but does not vary the environmental image
according to the detected light of the main image ....”
(Appeal Br. at 14.)
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“‘[T]he main purpose of the examination, to which every
application is subjected, is to try to make sure that what
each claim defines is patentable. [T]he name of the game is
the claim ....’” In re Hiniker Co., 150 F.3d 1362, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S. Rich,
The Extent of the Protection and Interpretation of
Claims--American Perspectives, 21 Int'l Rev. Indus. Prop. &
Copyright L. 497, 499, 501 (1990)). Here, claims 12-14 specify
in pertinent part the following limitations: “a circumstance
detector for detecting a quantity or brightness of light of
the main image external to the environmental image under which
a user uses the image display device; and environmental image-
changing means for varying the environmental image according
to detected light quantity or brightness of the main image
detected by said circumstance detector.” Accordingly, the
claims require, inter alia, varying an environmental image of
an image display device according to a detected brightness of
a main image thereof.
The examiner fails to show a teaching or suggestion of
the limitations in the prior art of record. As explained
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Application No. 08/757,550
regarding the anticipation rejection, it is uncertain whether
Yamanaka darkens illumination according to any conditions
external to an environmental image. Although Sawachika
brightens or darkens an image according to detected
conditions external to a detected brightness, the brightness
is not that of the main image. To the contrary, the
brightness is that of outside light. As noted regarding
claims 5, 26, and 33, “the image viewed by the user will
brighten in response to bright outside ambient light,
conversely, if a low level of ambient light is present, the
image will darken accordingly.” Col. 5, ll. 35-38.
Because Sawachika changes an image according to
brightness of outside ambient light, we are not persuaded that
the teachings from the prior art would appear to have
suggested the limitations of "a circumstance detector for
detecting a quantity or brightness of light of the main image
external to the environmental image under which a user uses
the image display device; and environmental image-changing
means for varying the environmental image according to
detected light quantity or brightness of the main image
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detected by said circumstance detector.” Therefore, we
reverse the rejection of claims 12-14 as obvious over Yamanaka
in view of Sawachika. We proceed to claims 6, 18, 27, 28, 32,
and 34.
C. Claims 6, 18, 27, 28, 32, and 34
The examiner alleges, “Yamanaka's lighting controller is
capable of detecting a sound volume or a sound associated with
the main image of the display device considering that a movie
inherently contains video and audio data.” (Examiner’s
Answer, ¶ 11.) The appellant argues, “[n]either Yamanaka nor
Sawachika remotely teach or suggest a volume of sound or sound
as a detected condition.” (Appeal Br. at 13.)
Claim 6 specifies in pertinent part the following
limitations: "a condition detected by the circumstance
detector is a volume of sound or sound around a user ...."
Similarly, claim 18 specifies in pertinent part the following
limitations: "the environmental image-changing means varies a
color-tone of the environmental image according to the
detected sound volume or sound.” Also similarly, claims 27
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and 28 specify in pertinent part the following limitations:
”the detecting a sound volume or sound of the display device
and the varying includes changing a color-tone of the
environmental image according to the sensed sound volume or
sound.” Further similarly, claim 32 specifies in pertinent
part the following limitations: “the detecting a sound volume
or sound around a user ....” Similarly, claim 34 specifies in
pertinent part the following limitations: “the detecting
includes sensing a sound volume or sound around a user ....”
Accordingly, claims 6, 18, 27, 28, 32, and 34 require, inter
alia, detecting sound or sound volume.
The examiner fails to show a teaching or suggestion of
the limitations in the prior art of record. As explained
regarding the anticipation rejection, it is uncertain whether
Yamanaka detects any conditions external to the environmental
image. As explained regarding claims 12-14, Sawachika merely
detects the brightness of outside ambient light.
Because neither Yamanaka nor Sawachika detects sound or
sound volume, we are not persuaded that the teachings from the
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Application No. 08/757,550
prior art would appear to have suggested the limitations of "a
condition detected by the circumstance detector is a volume of
sound or sound around a user[,]" "the environmental image
changing means varies a color-tone of the environmental image
according to the detected sound volume or sound[,]” ”the
detecting a sound volume or sound of the display device and
the varying includes changing a color-tone of the
environmental image according to the sensed sound volume or
sound[,]” “the detecting a sound volume or sound around a
user[,]” or “the detecting includes sensing a sound volume or
sound around a user ....” Therefore, we reverse the rejection
of claims 6, 18, 27, 28, 32, and 34 as obvious over Yamanaka
in view of Sawachika.
CONCLUSION
In summary, the rejection of claims 1, 3, 4, 15-17, 19-
25, 28-31, and 35 under 35 U.S.C. § 102(e) is reversed. The
rejections of claims 5, 6, 12-14, 18, 26, 27, and 32-34 under
35 U.S.C. § 103(a) are also reversed.
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Application No. 08/757,550
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
LLB/kis
BIRCH, STEWART, KOLASCH & BIRCH
P.O. BOX 747
FALLS CHURCH, VA 22040-0747