Ex parte Wood

Board of Patent Appeals and Interferences

Aug 30, 2001

08381156 (B.P.A.I. Aug. 30, 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for publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LAWSON A. WOOD
____________
Appeal No. 1998-2570
Application No. 08/381,156
____________
ON BRIEF
____________
Before THOMAS, RUGGIERO, and BLANKENSHIP, Administrative
Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 13-19. Claims 2-4 have been canceled, and claims 1,
5-12, and 20-50 have been allowed. An amendment filed August
7, 1997 after final rejection was denied entry by the
Examiner.
Appeal No. 1998-2570
Application No. 08/381,156
2
The claimed invention relates to a display apparatus
employing a digital micromirror device having an array of
movable micromirrors. In one embodiment, a resetting
operation to dislodge micromirrors that have become stuck is
achieved by emitting current pulses through the micromirrors
while exposing them to a magnetic field. In a variation of
this embodiment, a voltage differential applied across
piezoelectric material coated on electrodes beneath the
mirrors is utilized to cause mechanical movement to dislodge
stuck mirrors. In a further embodiment, an updating technique
is employed which, instead of moving the micromirrors from a
latched position to their updated states simultaneously, the
micromirrors are updated on a row-by-row basis while being
exposed steadily to light.
Claims 13 and 15 are illustrative of the invention and read
as follows:
13. A display apparatus, comprising:
a digital micromirror device having an array of movable
micromirrors;
resetting means for dislodging any micromirrors that
become stuck, the resetting means including means for exposing
the array of micromirrors to a magnetic field and means for
causing current to flow through the micromirrors; and
Appeal No. 1998-2570
Application No. 08/381,156
3
15. A method of displaying a sequence of frames of video
information on a digital micromirror device having an array of
micromirrors that are disposed in rows and that are movable
between a first position and a second position, the video
information for a frame including a plurality of first multi-
bit video words, each micromirror corresponding to one of the
first multi-bit video words, each of the first multi-bit video
words including at least a most significant bit and a least
significant bit, comprising:
(a) moving micromirrors which correspond to first video
words whose least significant bit has a predetermined value
from their first positions to their second positions, the
micromirrors of a first one of the rows being moved before the
micromirrors of a last one of the rows;
(b) returning the micromirrors that were moved during
step (a) to their first positions, the micromirrors of the
first row being returned before the morcromirrors of the last
row; and
(c) steadily exposing the micromirrors to light at a
first level while step (a) is conducted and while step (b) is
conducted.
The Examiner relies on the following prior art:
Nathanson et al. (Nathanson) 3,896,338 Jul.
22,
1975
Schell 5,210,653 May 11,
1993
Sampsell 5,452,024 Sep. 19,
1995
(filed Nov. 01, 1993)
Claims 13 and 14 stand finally rejected under 35 U.S.C.
§ 103 as being unpatentable over Nathanson in view of Schell.
Claims 15-17 stand finally rejected under 35 U.S.C. § 102(e)
Appeal No. 1998-2570
Application No. 08/381,156
4
as being anticipated by Sampsell. Claims 18 and 19 stand
finally rejected under 35 U.S.C. § 103 as being unpatentable
over Sampsell in view of Schell.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 17) and
Answer (Paper No. 18) for the respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence of anticipation and obviousness relied upon by the
Examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Brief along
with the Examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
Appeal No. 1998-2570
Application No. 08/381,156
1 We decline Appellant’s request (Brief, page 11) to enter a new ground
of rejection of claim 17 under 37 CFR § 1.196(b) since, in our view, Appellant
has not provided sufficient reasons for us to do so. We would point out,
however, that, in view of our decision in this appeal, the Examiner may wish
to reconsider the decision not to enter the amendment after final filed August
7, 1997 (Paper No. 12)
5
skill in the art the obviousness of the invention as recited
in claims 13, 14, 18, and 19. We are also of the view that
the Sampsell reference does not fully meet the invention as
set forth in claims 15-17. Accordingly, we reverse.1
We consider first the Examiner’s 35 U.S.C. § 103
rejection of claims 13 and 14 as being unpatentable over
Nathanson in view of Schell. In rejecting claims under 35
U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
Appeal No. 1998-2570
Application No. 08/381,156
6
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
Cir. 1984). These showings by the Examiner are an essential
part
Appeal No. 1998-2570
Application No. 08/381,156
7
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claim 13, the Examiner
proposes to modify the video display system disclosure of
Nathanson. According to the Examiner (Answer, page 4),
Nathanson discloses the claimed invention except for the
feature of utilizing magnetic fields or piezoelectric material
for resetting any movable mirror display elements which may
have become stuck. To address this deficiency, the Examiner
turns to the Schell reference which describes the use of
magnetostrictive and piezoelectric actuators to change the
configuration of deformable mirror faceplates. In the
Examiner’s line of reasoning, the skilled artisan would have
been motivated and found it obvious to have modified
Nathanson’s device with the deformable mirror configuration
teachings of Schell “...because using magnetic field and
piezoelectric material is one of the way [sic, ways] to
control the deflection of the mirrors.” (Answer, page 4).
Appeal No. 1998-2570
Application No. 08/381,156
8
In response, Appellant asserts several arguments (Brief,
pages 7-9) in support of the position that the Examiner has
not established proper motivation for the proposed combination
of references so as to set forth a prima facie case of
obviousness. After careful review of the applied prior art in
light of the arguments of record, we are in agreement with
Appellant’s position as stated in the Brief. 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. In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992).
It is our view that, while a showing of proper motivation
does not require that a combination of prior art teachings be
made for the same reason as Appellant to achieve the claimed
invention, we can find no motivation for the skilled artisan
to apply the deformable faceplate configuration teachings of
Schell to the micromirror device of Nathanson. There is
nothing in the disclosure of Nathanson to indicate that the
correction of phase errors or perturbations in an impinging
light beam wavefront to produce an undistorted image, the
Appeal No. 1998-2570
Application No. 08/381,156
9
problem addressed by Schell, was ever a concern. It is our
opinion that the only basis for applying the teachings of
Schell to the micromirror structure of Nathanson comes from an
improper attempt to reconstruct Appellant's invention in
hindsight. Accordingly, since the Examiner has not
established a prima facie case of obviousness, the rejection
of independent claim 13 and claim 14 dependent thereon, over
the combination of Nathanson and Schell is not sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(e) rejection of claims 15-17 as being anticipated by
Sampsell, we do not sustain this rejection as well.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
Appeal No. 1998-2570
Application No. 08/381,156
10
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to independent claim 15, the Examiner
attempts to read the claimed limitations on the disclosure of
Sampsell. In particular, the Examiner points to Sampsell’s
description at column 8, line 3 to column 9, line 12 of the
operation illustrated in Figure 3 as disclosing the claimed
mirror positioning feature.
After reviewing Appellant's arguments in response (Brief,
pages 10 and 11), we are in agreement with Appellants’
position as stated in the Brief. Our interpretation of the
disclosure of Sampsell coincides with that of Appellant, i.e.
Sampsell’s micromirrors are returned to their original
positions only when there is a change in bit value from one
bit to the next. As pointed out by Appellant, if the bit
values in Sampsell stay at the same level, the micromirrors
will stay in the same position as the processing continues
from a lesser significant bit to the next lesser significant
bit (e.g. region 306b illustrated in Sampsell’s Figure 3).
Sampsell’s micromirrors are returned to their original
position only when the next lesser significant bit has a
Appeal No. 1998-2570
Application No. 08/381,156
11
change in bit value (e.g. the “OFF” period after region 306b
in Figure 3 representing a bit value change from a “1” to a
“0”).
We agree with Appellant that this disclosed operation of
Sampsell does not meet the requirements set forth in step (b)
of claim 15 when it is read in conjunction with step (a) of
the claim. In our view, the limitations of appealed claim 15
require the returning of the micromirrors to their original
position during the processing of each bit position. In other
words, if a micromirror is moved to an “ON” position during
the processing of the least significant bit having a value of
“1”, the micromirror will then be returned to the “OFF”
position during the processing of this same least significant
bit and regardless of the bit value of the next bit. This is
unlike the operation described in Sampsell in which the
micromirrors are returned to their original position only if
the bit value changes from one bit position to the next.
In view of the above discussion, it is our opinion that,
since all of the claim limitations are not present in the
disclosure of Sampsell, we do not sustain the Examiner’s 35
U.S.C. § 102(e) rejection of independent claim 15, nor of
claims 16 and 17 dependent thereon.
Lastly, we also do not sustain the Examiner’s obviousness
rejection of claims 18 and 19 which add the previously
Appeal No. 1998-2570
Application No. 08/381,156
12
discussed stuck mirror feature to the micromirror positioning
operation set forth in independent claim 15. As with
rejection of claims 13 and 14 discussed supra with respect to
the Nathanson reference, the Examiner has proposed a
modification of Sampsell with the deformable faceplate
configuration teachings of Schell. Notwithstanding the fact
that we find a similar lack of establishment by the Examiner
of proper motivation for combining Schell with Sampsell as we
did in the proposed combination with Nathanson, we also find
no disclosure in Schell which would overcome the innate
deficiencies discussed above with regard to Sampsell. Since
all of the claim limitations are not taught or
suggested by the applied prior art, it is our opinion that the
Examiner has not established a prima facie case of obviousness
with respect to appealed claims 18 and 19.
In summary, we have not sustained any of the Examiner’s
rejections of the claims on appeal. Therefore, the decision
of the Examiner rejecting claims 13-19 is reversed.
REVERSED
Appeal No. 1998-2570
Application No. 08/381,156
13
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
lp
Appeal No. 1998-2570
Application No. 08/381,156
14
ALLEN WOOD
SPENCER & FRANK
SUITE 300 EAST
1100 NEW YORK, AVE. N.W.
WASHINGTON, D.C. 20005-3955
Leticia
Appeal No. 1998-2570
Application No. 08/381,156
APJ RUGGIERO
APJ THOMAS
APJ BLANKENSHIP
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: March 28, 2002
Draft Final
3 MEM. CONF. Y N
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