Ex parte Yamazaki et al.

Board of Patent Appeals and Interferences

Aug 9, 1999

07957107 (B.P.A.I. Aug. 9, 1999)

Application for patent filed October 7, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
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(2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHUNPEI YAMAZAKI,
MASAAKI HIROKI and YASUHIKO TAKEMURA

_____________
Appeal No. 97-2020
Application 07/957,1071
______________
HEARD: June 10, 1999
_______________
Before URYNOWICZ, FLEMING and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
Appeal No. 97-2020
Application 07/957,107
2
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 2 through 7 and 14 through 16, all of the
claims pending in the present application. Claims 1 and 8
through 13 have been cancelled.
This invention relates to a display method for a
high gradation displaying operation in an electro-optical
display device, such as a plasma display or a vacuum micro-
electronic display. The display device is constructed by a
plurality of picture elements which are arranged in a matrix
form and have driving switching elements. On page 3 of the
specification, Appellants disclose that a display which has a
switching element at each pixel is called an active matrix
display. On pages 3 through 6 of the specification, Appel-
lants describe the problems of providing a creation level for
these active displays. On page 6 of the specification,
Appellants disclose that their invention solves the described
Appeal No. 97-2020
Application 07/957,107
3
problems of the conventional gradation displaying systems.
Appellants disclose that they overcome the problems by not
only varying a pulse width but also a pulse height. Appel-
lants disclose on page 8 of the specification that Figure 3
shows the Appellants' invention
in which the pulse height as well as the pulse width is var-
ied. Appellants disclose on page 9 of the specification that
by using the Appellants' method, the Appellants are able to
minimize the pulse width by an order of four times that of the
conventional systems. Appellants also disclose that the
method allows high speed operation and reduced power consump-
tion. Independent claim 14 is reproduced as follows:
14. A method of driving an active matrix display
with a plurality of gradation levels, wherein the maximum
number of gradation level is N where N = (1+2 + @@@ 2 ) I, kmax max 1 k
and I each being a natural number, said method comprising the
steps of:
providing said active matrix display wherein a
plurality of transistors disposed on said on a liquid crystal
display respectively drive a plurality of pixels of the dis-
play;
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Application 07/957,107
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inputting into a pixel of said display one or more
pulses, each pulse having a pulse height and a pulse duration
depending upon a desired gradation level of the display at
said pixel,
wherein each of said one or more pulses has a rela-
tive pulse duration selected from the group consisting of 1,
2, @@@ 2 and has a relative pulse height selected from thek
group con- sisting of 0, 1, 2, @@@ I so that the pulse duration
and the pulse height of said pulses are both varied whereby
the minimum width of said pulses can be increased.
The Examiner relies on the following references:
De Jule 4,130,777 Dec. 19, 1978
Williams 4,427,978 Jan. 24, 1984
Claims 14 through 16 and 2 through 7 stand rejected
provisionally under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 1 and 12 of copending application Serial No.
07/957,106. Claims 2 through 7, 14 and 15 stand rejected
under 35 U.S.C. § 103 as being unpatentable over the
admitted prior art found in the Appellants' specification on
pages 1 through 7, and De Jule. Claim 16 stands rejected
under 35 U.S.C. § 103 as being unpatentable over the admitted
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Application 07/957,107
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prior art found in Appellants' specification on pages 1
through 7, De Jule and Williams.
Rather than reiterate the arguments of Appellants
and the Examiner, reference is made to the brief and answer
for the respective details thereof.
OPINION
We will not sustain the rejection of claims 2
through 7 and 14 through 16 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ
1, 6 (Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
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Application 07/957,107
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invention." Para-Ordnance Mfg. v. SGS Importers Int'l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assoc.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
"Obviousness may not be established using hindsight or in view
of the teachings or suggestions of the inventor." Para-
Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-313.
On page 6 of the brief, Appellants agree that De
Jule states at column 30, lines 5 through 13, that the
modulation used in De Jule's display may be amplitude
modulation, pulse width modulation, or a combination of both.
Appellants argue that there is no motivation based on De Jule
or the admitted prior art to combine the references in the
manner proposed by the Examiner. Appellants emphasize on page
7 of the brief that De Jule fails to provide a teaching or
motivation of using a combination of pulse
width and amplitude modulation in an active matrix display.
Appeal No. 97-2020
Application 07/957,107
7
Appellants further point out that Appellants have not only
recognized the problems in regard to active matrix displays,
but also have overcome these problems by the use of a
combination of pulse width and pulse amplitude modulations.
We note on page 4 of the answer, the Examiner simply
states that the reason for the combination of using De Jule's
pulse modulation and width modulation is so that gradation of
a matrix display could have been achieved by using combined
pulse modulation and width modulation in the driving circuit
as an alternative of using pulse modulation or width
modulation individually by itself. On page 7 of the answer,
the Examiner argues that De Jule is a broad teaching of using
combined pulse modulation and width modulation. However, the
Examiner does not address the fact that De Jule teaches uses
of these modulation techniques for a display device that does
not have an active switching element at each pixel.
Turning to Appellants' specification, we note on
page 2 of the specification that Appellants disclose that the
prior art used the optical material itself as the switching
element. Appellants state that this type of display device is
Appeal No. 97-2020
Application 07/957,107
8
called a simple matrix structure. Appellants point out
problems which
arise with this type of display device in that optical on/off
switching operations are difficult to obtain intermediate
brightness or color tone. On page 3 of the specification,
Appellants disclose that this problem has been solved in the
prior art by installing a switching element at each pixel
element of the display device. Appellants state that this
type of device is called an active matrix display.
On pages 3 and 4 of the Appellants' specification,
Appellants point out the problems of an active display device
are that these devices have difficulty in achieving an
implementation of the gradation displaying operation. In
particular, Appellants disclose that it is not easy to
generate a voltage with a resolution of 300 microvolts or
less, and such a minute voltage is attenuated by various
factors until it reaches a picture element. These factors
contain resistance of wirings, resistance of thin film
transistors, reduction of the potential of a picture element
Appeal No. 97-2020
Application 07/957,107
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due to a parasitic capacitance of the thin film tran- sistors
and the like. Appellants further disclose that since these
parameters, causing the voltage variation or fluctuation, are
different in accordance with an active element of each picture
element, the fluctuation of the voltage of the picture
element can be actually suppressed in the range of plus and
minus 0.2 volts at a maximum over the whole panel.
On page 7 of the specification, Appellants state
that this invention has been implemented to solve the problems
described above in a conventional gradation displaying system.
Appellants disclose a new type of gradation displaying system
which adopts advantages of both a gradation displaying system
which is completely dependent on a voltage as shown in
Figure 1(A) and a gradation displaying system which is
completely dependent on pulse width as shown in Figure 1(B).
Appellants further disclose that their system does not require
minute voltage control and short speed pulses as pointed out
above.
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Upon a careful review of De Jule, we find that
De Jule is a plasma-sac-type gas-discharge image display panel
which does not have an active switching element at each pixel.
Thus, De Jule is not concerned with the problem confronted by
Appellants. Appellants are concerned with an active matrix
display which would have voltage variations or fluctuations
due to the different active elements at each picture element
as well as the parasitic capacitance due to the active
elements at each picture element.
The Federal Circuit states that "[t]he 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 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). In addition, the
Federal Circuit reasons in Para-Ordnance Mfg., 73 F.3d at
1088-89, 37 USPQ2d at 1239-40, that for the determination of
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Application 07/957,107
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obviousness, the court must answer whether one of ordinary
skill in the art who sets out to solve the problem and who had
before him in his workshop the prior art, would have been
reasonably expected to use the solution that is claimed by the
Appellants.
As we had shown above, De Jule is not concerned with
the problem of active elements at each pixel. We find that it
would not be reasonable to expect the solution of using a
combination of pulse width and amplitude modulation as taught
by De Jule to solve a problem in a different display device
using completely different circuitry. Furthermore, we fail to
find that there is any suggestion of the desirability of using
the combination of pulse width and amplitude modulation in an
active
display device. Thus, we are only left with the Examiner's
implied argument that it would be obvious to try. However,
obvious to try is not the standard that we must use to
determine obviousness under 35 U.S.C. § 103. The use of the
obvious to try test ignores problem recognition as an element
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Application 07/957,107
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of the obviousness inquiry and is improper. Gillette Co. v.
S.C. Johnson & Son, Inc., 919 F.2d 720, 725, 16 USPQ2d 1923,
1928 (Fed. Cir. 1990).
Therefore, we will not sustain the Examiner's
rejection of claims 2 through 7, 14 and 15 under 35 U.S.C. §
103 as being unpatentable over the admitted prior art in view
of De Jule. Furthermore, we note that the Examiner relies on
the same reasons for combinability in the rejection of claim
16. Therefore, we will not sustain the rejection of claim 16
under 35 U.S.C. § 103 as being unpatentable over the admitted
prior art in view of De Jule and further in view of Williams.
Claims 2 through 7 and 14 through 16 are
provisionally rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable
over claims 1 and 12 of copending application Serial No.
07/957,106. We note that these claims are before this panel
in Appeal No. 96-2591. In that appeal, we have determined
that we cannot ascertain the
Appeal No. 97-2020
Application 07/957,107
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scope of these claims. Thus, because we cannot ascertain the
scope of claims 1 and 12 of the above copending application,
we find that we are unable to determine whether the rejection
under the judicially created doctrine of obviousness-type
double patenting is proper. Therefore, at this time, we will
not sustain the Examiner's rejection under the obviousness-
type double patenting doctrine.
We have not sustained the rejection of claims 2
through 7 and 14 through 16 under 35 U.S.C. § 103 or under the
judicially created doctrine of obviousness-type double
patenting. Accordingly, the Examiner's decision is reversed.
REVERSED

MICHAEL R. FLEMING )
Administrative Patent Judge )
) BOARD OF
PATENT
) APPEALS AND
) INTERFERENCES
JOSEPH RUGGIERO )
Administrative Patent Judge )
Appeal No. 97-2020
Application 07/957,107
14
MRF:psb

URYNOWICZ, Administrative Patent Judge, Dissenting-in-Part:
I agree with the majority that the rejection of
claims 2-7 and 14-16 under the judicially created doctrine of
obviousness-type double patenting should not be sustained.
However, the examiner's decision to reject claims 2-7 and 14-
16 over the admitted prior art in view of De Jule should be
affirmed.
I am of the opinion that the combined prior art
evidences a prima facie case of obviousness which the
appellants have not overcome with argument or evidence. Only
arguments actually made by appellants should be considered in
this decision. 37 CFR § 1.192(a).
The examiner has pointed out the teachings of the
admitted prior art and the De Jule reference. He has
indicated which teachings of the admitted prior art and De
Jule, considered as a whole, render the claims obvious. The
prior art is from the same field of endeavor as appellants
Appeal No. 97-2020
Application 07/957,107
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were engaged in, matrix displays, and is concerned with
methods of driving matrix displays. The admitted prior art is
evidence that appellants neither invented active matrix
displays nor the method of driving such displays with
modulated (amplitude) signals. De Jule is
evidence that it was known in the prior art to drive matrix
displays with a signal that was both amplitude and width
modulated.
One of ordinary skill in the art is presumed to have
full knowledge of the prior art in his field of endeavor and
the ability to select and utilize knowledge from analogous
arts. In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315
(Fed. Cir. 1986). A conclusion of obviousness may be made
from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or
suggestion in a particular reference. In re Bosek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969). To properly
combine references, there must have been some teaching,
suggestion, or inference in the references, or knowledge
Appeal No. 97-2020
Application 07/957,107
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generally available to one of ordinary skill in the art, that
would have led one to combine the relevant teachings. Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
297 n.24, 227 USPQ 657, 667 n.24 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986).
Here, knowledge by the person of ordinary skill in
the art would have included an awareness that the three drive
methods of De Jule (those including amplitude modulation,
width modulation and a combination of both) were different,
and
that each would have provided its own distinct operating
characteristics for matrix displays, with inherent advantages
and disadvantages. That person would have been motivated to
combine the above teaching of De Jule to the admitted prior
art to overcome disadvantages of the purely amplitude
modulated system of the admitted prior art and/or to benefit
from the one or more advantages to be realized by utilizing De
Jule's combined amplitude and width modulated drive signals
with a matrix display. It is a self-evident proposition that
Appeal No. 97-2020
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mankind, in particular, inventors, strive to improve that
which already exists. Pro-Mold and Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30
(Fed. Cir. 1996).
Appellants' argument that a suggestion to modify the
prior art to produce the claimed invention is not expressly
stated in the art applied against the claims is unpersuasive.
An express suggestion is not necessary. B.F. Goodrich Co. v.
Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314, 1318 (Fed. Cir. 1996). Appellants' other argument, that
the prior art is silent with respect to the problem which is
addressed in its invention is also unpersuasive. The law does
not require that references be combined for the reason
contemplated by the inventor. In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). Lastly,
appellants have not established that one of ordinary skill in
the art, after reading (1) De Jule and its teaching of
utilizing amplitude modulated signals, width modulated
signals, and a combination of amplitude and width modulated
Appeal No. 97-2020
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signals to drive matrix displays and (2) the admitted prior
art with its teaching of driving active matrix displays with
amplitude modulated signals, would have been led in a
direction away from the path taken by appellants. In re
Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir.
1994).
Whereas the examiner established a prima facie case
of obviousness which has not been rebutted by argument or
evidence, the rejection should be sustained.

STANLEY M. URYNOWICZ, JR. ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS
AND
) INTERFERENCES

SMU:psb

Appeal No. 97-2020
Application 07/957,107
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