Ex parte Van'order

Board of Patent Appeals and Interferences

Jan 10, 2001

08387583 (B.P.A.I. Jan. 10, 2001)

The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KIM L. VAN’ORDER
____________
Appeal No. 1998-0693
Application No. 08/387,583
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-36,
which are all of the claims pending in this application.
We REVERSE.
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BACKGROUND
The appellant's invention relates to an electro-optic mirror with contrasting display.
An understanding of the invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. An electro-optic display comprising:
a pair of spaced transparent conductive layers having an electro-optic medium
between said layers;
a first voltage source for applying a first electric field across said conductive layers
for changing the light transmission characteristics of said medium;
a display defined by individual conductive display elements patterned on one of
said conductive layers, each of said elements being surrounded by a non-conductive
border; and
a display driver coupled to each of said display elements for selectively applying
voltages to individual ones of said display elements of said one conductive layer to create
an electric field between said elements and said other conductive layer different than said
first electric field to provide a contrasting display.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Nicholson 4,184,751 Jan. 22, 1980
Admitted Prior Art at pages 1-2 of the specification (APA)
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Claims 1-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Appellant’s Admitted Prior Art in view of Nicholson.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 15, mailed Oct. 15, 1997), which incorporates the text of the rejection
from a prior Office action (Paper No. 6, mailed Aug. 20, 1996) and the supplemental
examiner's answer or letter clarifying the basis of the rejection (Paper No. 19, mailed Oct.
23, 2000) for the examiner's reasoning in support of the rejections, and to the appellant's
brief (Paper No. 14, filed Sep. 11, 1997) and reply brief (Paper No. 16, filed Dec. 22,
1997) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
At the outset, we note that the objection to the drawings goes beyond the authority
of the Board, therefore, we make no findings thereto. (See brief at page 5-7.)
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35 U.S.C. § 103
We note that the examiner has expressly stated in the letter mailed Oct. 23, 2000
that the rejection is based solely upon the teachings of the APA in view of the Nicholson
patent. Therefore, in our decision, we have not considered the teachings of O’Farrell,
Yaguchi et al., Yaguchi or Hashimoto discussed and cited in the answer.
The examiner maintains that “the [claimed] invention is basically the admitted prior
art (i.e., applying a contrasting display to a rearview mirror) with the additional concept of
applying different electric fields across the segments of the display and the background
area, and making the display variable.” (answer, page 4). The examiner relies upon the
teaching of Nicholson to teach the use of different potentials and for use of a variable
display. We agree with the examiner that Nicholson teaches a variable display and use of
different potentials, but the use of the different potentials is to select the variable colors of
the background and the display segments (see Nicholson at columns 11-13.)
Appellant argues that the admitted prior art is “nothing more than the isolation of
part of an electro-optic mirror behind which a conventional display is positioned." (See
brief at page 7.) We agree with appellant that, from the discussion at pages 1-2 of the
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specification, the display in the admitted prior art is not electrically interconnected to the
electro-optical mirror operation. Appellant argues the O’Farrell reference, but we make no
findings thereto, since it is not applied by the examiner in the rejection. (See brief at page
8.)
Appellant argues that Nicholson discloses merely an electro-optic display and does
not teach or suggest a mirror in combination thereto. (See brief at page 8.) Appellant
further argues that there is a lack of motivation to use a colored display in a mirror where
accurate color reflections are expected. (See brief at pages 8-9.) We agree with
appellant, but note that claim 1 recites an electro-optic display not a mirror. Therefore, this
argument is not persuasive to claim 1 and the claims grouped therewith. We agree with
appellant with respect to claims 11 and 32 and their respective groupings of claims as to
the use in a mirror.
Appellant argues that “[u]nlike the Nicholson patent which teaches only conductive
patterns defining display elements, claims 1 and 6 define an overall conductive layer on
opposite sides of the electro-optic medium . . . claims 1 and 6 define a display which is
defined by individual conductive display elements patterned on both [sic, at least one in
claim 1] of the conductive layers and which are surrounded
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by a non-conductive border.” (See brief at page 9.) Appellant further argues that
Nicholson
fails to disclose even overall first and second conductive layers but instead
is limited to an electrochromic display with only display elements formed
thereon. None of the prior art, including Nicholson, discloses an electro-
optic display in which the entire display includes conductive surfaces to
which a first voltage is applied and patterned display segments for creating
a different electric field between the display elements and the electric field
applied between the overall conductive layers by the first voltage. (See brief
at page 10.)
We agree with appellant that, taking the claim as a whole, the examiner has not provided a
teaching or convincing line of reasoning why it would have been obvious to one of ordinary
skill in the art at the time of the invention to provide conductive segments in the layers of
conductive material and “for selectively applying voltages to individual ones of said display
elements of said one conductive layer to create an electric field between said elements
and said other conductive layer different than said first electric field to provide a
contrasting display” as recited in the language of claim 1.
The examiner postulates many modifications and variations to the APA and
Nicholson while also discussing various other references, which are expressly not used in
the rejection. (See prior Office action, Paper No. 6, at pages 4-5 and answer at page 4-6.)
We disagree with the examiner’s conclusions and find that the examiner has not
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provided a convincing line of reasoning for the proposed combination of a variable display
into a rearview mirror where the variable display is formed of the same conductive layers
which darken the mirror. Furthermore, with respect to claim 1, the examiner has not
provided a teaching or a convincing line of reasoning why it would have been obvious to
one of ordinary skill in the art at the time of the invention to provide “a display defined by
individual conductive display elements patterned on one of said conductive layers, each of
said elements being surrounded by a non-conductive border.” While Nicholson teaches a
display with variable colors between the background and display segments, the examiner
has not shown that the display segments and the background are formed in the same
layer. We note that Nicholson discloses at column 6 that the character segments and
background are simultaneously formed by deposition of a single continuous layer. Further,
with the reversal of colors by switching the voltages and the fact that Nicholson is
concerned with color matching between the segments and background, two portions would
have to be similarly formed. Furthermore, the examiner has not addressed appellant's
argument that Nicholson does not clearly teach the use of a pair of conductive layers or
why it would have been obvious to one of ordinary skill in the art at the time of the invention
to
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incorporate a display formed integrally with a mirror rather than separate portions
incorporated together as taught in the APA. While the examiner maintains that it would be
obvious to associate a variable display with a mirror, (paper no. 6 at page 4), the examiner
has not provided a convincing line of reasoning why it would have been obvious to one of
ordinary skill in the art at the time of the invention to form the two together on the same
conductive layer. Appellant argues that Nicholson does not contemplate a contrasting
display, but rather only a colored display. (See brief at page 10.) We agree with
appellant.
The examiner maintains that appellant’s arguments are not persuasive because
the arguments are a combination of the APA and Nicholson and that “the Nicholson
reference provides obvious motivation for modifying the admitted prior art electro-optic
devices.” (See answer at page 5.) We disagree with the examiner. Further, the examiner
maintains at page 5 that appellant’s argument that the skilled artisan would not be
motivated to combine the color display of Nicholson with the mirror of the APA and that the
color would be distracting, is not persuasive because it is merely appellant’s opinion. The
examiner further states the “nowhere does the rejection state that one skilled in the art
would use Nicholson’s teachings to add a color display to the
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admitted prior art.” Id. Here, we disagree with the examiner’s picking and choosing of
elements/features of the references at his discretion. Clearly, Nicholson teaches the use of
multiple voltages to produce the available colors as discussed above. So, for the
examiner to assert that the color would not be in the combination would tend to negate the
examiner’s use of two voltages. Further, if the color were not to be used, then there would
not be a need to have the segment and background conductor formed of the same layer
since the color need not be matched as Nicholson suggests.
Here, we find that the examiner has not clearly addressed the language of the
claims. We find that the examiner believes that the basic invention is obvious and
attempts to buttress this belief with bits and pieces of prior art teachings combined
together to reject the gist of the invention, yet never coming to grips with the language of
the claims. This is impermissible. Further, this is clear from the prosecution of the case
where the examiner originally rejects the claim over the APA in view of Nicholson and then
discussed four other references throughout the prosecution, but never relying upon any of
the other teachings. In a § 103(a) rejection, It is incumbent upon the examiner to make a
prima facie case of obviousness. As discussed above, we find that the examiner has not
made this prima facie case with respect to claim 1. Nor has
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the examiner made a prima facie case with respect to claims 6, 11, 17, 21, 27 and 32
which contain similar limitations but are more detailed than claim 1. Therefore, we cannot
sustain the rejection of claims 1-36.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-36 under 35 U.S.C. §
103(a) is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
jld/vsh
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