Ex Parte Whitesides et al

Patent Trial and Appeal Board

May 8, 2013

12018252 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS H. WHITESIDES, MICHAEL
MCCREARY, and RICHARD J. JR. PAOLINI
____________________

Appeal 2010-012561
Application 12/018,252
Technology Center 2800
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012561
Application 12/018,252

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection for claim 22.

Illustrative Claim
The disclosure relates to electrophoretic light modulators. Abstract.
Claim 1 is illustrative and is reproduced below with the disputed
limitation emphasized:
1. An electrophoretic medium comprising a suspending fluid
and a plurality of electrically charged particles disposed in the
suspending fluid and capable of moving therethrough on
application of an electric field to the suspending fluid, the
suspending fluid and electrically charged particles being present
as a plurality of discrete droplets, the electrophoretic medium
further comprising a continuous phase surrounding the droplets,
wherein the difference between the refractive index of the
suspending fluid and the continuous phase is not greater than
about 0.03.

Rejections
The Examiner made the following rejections:
Claims 1, 2, 6, 12, 13, 22, and 23 stand rejected under 35 U.S.C
§102(b) as anticipated by U.S. Pat. No. 6,262,706 (“Albert”) (Ans. 4).
Claims 3–5, 7–11, and 14–21 stand rejected under 35 U.S.C. §103(a)
as unpatentable over Albert (Ans. 9).

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ANALYSIS
We have reviewed Appellants’ arguments in their Appeal Brief and
have reviewed the Examiner’s response to Appellants’ arguments.1

Claims 1-4, 6, 12, and 13
Appellants argue on pages 13–18 of the Appeal Brief that the
Examiner’s rejection of claim 1 is in error.2 This argument presents us with
the issue of:
Whether the Examiner erred in finding that Albert discloses the
limitation of claim 1 that recites “wherein the difference between the
refractive index of the suspending fluid and the continuous phase is not
greater than about 0.03.”
We disagree that the Examiner has erred.
Appellants acknowledge that Albert discloses an electrophoretic
medium having all features recited in claim 1 except for the specified
difference between the refractive index of the suspending fluid and the

1 Appellants present no arguments directed to patentability of claims 18–21,
and have accordingly waived any potential argument with respect to such
claims. 37 C.F.R. §41.37(o)(2)(2004). We sustain the Examiner’s
rejections of those claims pro forma.
2 Appellants present arguments for claims 1, 2, and 6 collectively. Although
claims 3 and 4 are addressed under a separate heading (Br. 21), Appellants
merely reference the arguments presented for claim 1 without presenting any
additional arguments to establish separate patentability. Similarly, claims 12
and 13 are addressed under a separate heading (Br. 18), with Appellants
relying on reasoning that parallels that articulated for claim 1. We
accordingly treat claim 1 as representative for claims 2–4, 6, 12, and 13.
Except for our ultimate decision, those claims are not discussed further
herein.
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Application 12/018,252

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continuous phase (Br. 14). In addressing the Examiner’s citation of col. 20,
ll. 16–41 of Albert, particularly the disclosure at ll. 37–41 that “[t]he wall
material may … be chosen to match the refractive index of the internal phase
of the capsule (i.e., the suspending fluid) or a binder in which the capsules
are to be dispersed,” Appellants argue that this defines a “relatively minor
objective” in Albert (Br. 17). Appellants further contend that it would be
“highly unlikely” for a skilled worker following the teaching of Albert to
produce a structure having refractive indices that meet the claim limitation
(Br. 17).
This argument misapplies the test for anticipation, which is satisfied
when a single prior-art reference describes each and every element as set
forth in the claim. See, e.g., Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 631 (Fed. Cir. 1987). In the Specification, Appellants
describe polymer-dispersed electrophoretic media as subspecies of
encapsulated electrophoretic media (Spec. ¶18). Since Albert discloses
index matching of a suspending fluid to a capsule wall in an electrophoretic
medium, we disagree that the Examiner has erred in finding the limitation
disclosed. We accordingly sustain the Examiner’s rejection of claim 1.

Claim 22
Appellants argue on pages 18–19 of the Appeal Brief that the
Examiner’s rejection of claim 22 is in error. These arguments present us
with the following issues:
(1) Whether the Examiner erred in finding that Albert discloses “two
light-transmissive panels spaced from one another”; and
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(2) Whether the Examiner erred in finding that Albert discloses that
“at least one of the light-transmissive panels comprises an absorber for
electromagnetic radiation of [a wavelength to which the electrophoretic
medium is sensitive].”
With respect to the first issue, we disagree that the Examiner has
erred. We disagree with Appellants’ assertion that Albert has no suggestion
that both substrates be transparent and provided with light-transmissive
electrodes so that the whole display is light-transmissive (see Br. 18). The
Examiner correctly observes that Albert discloses an embodiment at col. 12,
ll. 29–38 in which “all of the pixels present in the display are largely
transparent,” thereby requiring two transmissive substrates to contain the
electrophoretic medium (Ans. 20). Therefore, Albert discloses two light-
transmissive panels spaced from one another.
With respect to the second issue, the Examiner finds that Albert
teaches the carbon black particles are contained on the transparent
substrate/panel. Ans. 20. The Examiner finds that this association teaches
that the panel comprises an absorber and meets the claim limitation. Ans 20.
We disagree; the claim distinguishes between the light-transmissive panels
and the electrophoretic medium. Albert teaches the carbon-black particles
are part of the electrophoretic medium but we do not find that the light-
transmissive panels are also part of the medium. We accordingly do not
sustain the Examiner’s rejection.

Claim 23
Appellants argue on pages 19–20 of the Appeal Brief that the
Examiner’s rejection of claim 23 is in error. This argument presents us with
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the issue of whether the Examiner erred in finding that Albert discloses
electrically charged, substantially transparent particles within an
electrophoretic medium. We disagree that the Examiner has erred.
Appellants have not presented sufficient evidence or argument to
persuade us of error in the Examiner’s findings. Specifically, Appellants
have not shown the Examiner erred in finding Albert discloses a second set
of clear or transparent particles that have an electrical charge (see Ans. 7,
citing Albert, col. 6, ll. 52–62; col. 7, ll. 37–40) We accordingly sustain the
Examiner’s rejection of claim 23.

Claim 5
Appellants argue on pages 20–21 of the Appeal Brief that the
Examiner’s rejection of claim 5 is in error. This argument presents us with
the issue of whether the Examiner erred in finding it obvious over Albert for
the suspending fluid to comprise a mixture of a hydrocarbon and
chloronaphthalene. We agree that the Examiner has erred.
The Examiner identifies a lengthy disclosure in Albert for various
compositions of the suspending fluid. This disclosure includes
hydrocarbons and “naphthalene” (Albert, col. 16, ll. 43–44), but does not
disclose chloronaphthalene. The Examiner notes certain similarities in
chemical structures for some of the disclosed compositions to what is recited
in the claim (Ans. 21). However, the Examiner has provided insufficient
reasoning to support the conclusion that it would be obvious to one of skill
in the art to substitute chloronaphthalene for naphthalene in a suspending-
fluid mixture. We therefore do not sustain the Examiner’s rejection of
claim 5.
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Claims 7–11 and 14–17
Appellants argue on page 21 of the Appeal Brief that the Examiner’s
rejection of claims 7–11 and 14–17 is in error. This argument presents us
with the issue of whether the Examiner erred in finding that Albert discloses
“an electrophoretic medium … sandwiched between two transparent
substrates” (Br. 21). We disagree that the Examiner has erred.
Appellants’ argument refers to the argument that we address supra in
connection with the first issue discussed in connection with claim 22. For
the reasons we express there, we find that Albert discloses the claimed
structure. We accordingly sustain the Examiner’s rejection of claims 7–11
and 14–17.

REJECTION OF CLAIM 22 UNDER 37 C.F.R. § 41.50(b)

We enter a new ground of rejection of claim 22 under 35 U.S.C.
§103(a) as unpatentable over Albert in view of U.S. Pat. No. 6,950,220
(“Abramson”). Except for the limitation of “at least one of the light-
transmissive panels compris[ing] an absorber for electromagnetic radiation
of [a wavelength to which the electrophoretic medium is sensitive],” Albert
discloses all limitations of claim 22 for the reasons given by the Examiner,
which we adopt, along with the Examiner’s findings, as our own. In
addition, Albert notes the sensitivity of the working lifetime of the
electrophoretic medium to ultraviolet wavelengths (Albert, col. 22, ll. 12–
13), i.e., the same reason that Appellants identify for having at least one of
the panels comprise an electromagnetic absorber (see Br. 10, citing Spec.
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¶80). Abramson is directed to electro-optic displays (Abramson, col. 1, ll.
18–19), including those having a medium whose lifetime is sensitive to
ultraviolet wavelengths (id., col. 13, ll. 46–60).
Abramson further discloses including ultraviolet filters and applying
them to glass substrates in electro-optic displays to address this sensitivity
(id., col. 32, l. 13 – col. 33, l. 30). Accordingly, Abramson teaches light-
transmissive panels that comprise an absorber for electromagnetic radiation
of this wavelength. Thus, we find Abramson teaches “at least one of the
light-transmissive panels comprises an absorber for electromagnetic
radiation of this wavelength.” We further find an ordinarily skilled artisan
would include such ultraviolet filters with the devices disclosed in Albert to
address the recognized ultraviolet sensitivity of the electrophoretic medium.
We thus conclude that Albert and Abramson render the invention as recited
in claim 22 obvious.

CONCLUSION
On the record before us, we conclude the following:
(1) The Examiner has not erred in rejecting claims 1, 2, 6, 12, 13, and
23 under 35 U.S.C. §102(b) as anticipated by Albert.
(2) The Examiner has erred in rejecting claim 22 under 35 U.S.C.
§102(b) as anticipated by Albert.
(3) The Examiner has not erred in rejecting claims 3, 4, 7–11, and
14–21 under 35 U.S.C. §103(a) as unpatentable over Albert.
(4) The Examiner has erred in rejecting claim 5 under 35 U.S.C.
§103(a) as unpatentable over Albert.
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DECISION
The Examiner’s decision rejecting claims 1–4, 6–21, and 23 is
affirmed.
The Examiner’s decision rejecting claims 5 and 22 is reversed.
A new ground of rejection is entered pursuant to 37 C.F.R. §41.50(b),
rejecting claim 22 under 35 U.S.C. §103(a) as unpatentable over Albert in
view of Abramson.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection …
shall not be considered final for judicial review.” This section also provides
that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(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. . . .

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-IN-PART
37 C.F.R. § 41.50(b)

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