Ex Parte Young

Board of Patent Appeals and Interferences

Sep 1, 2011

10632348 (B.P.A.I. Sep. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/632,348 07/31/2003 Sarah Young 11150/76 3597
26646 7590 09/01/2011
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
LIANG, REGINA
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
09/01/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SARAH YOUNG
____________________

Appeal 2009-014205
Application 10/632,348
Technology Center 2600
____________________

Before ERIC S. FRAHM, DAVID M. KOHUT, and BRUCE R. WINSOR,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014205
Application 10/632,348

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1 and 6-25. Claims 2-5 and 26 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added,
reads as follows:
1. A display device, comprising:
a display; and
an actuator layer arranged on an outwardly facing side of the display
and including (a) a material having a reversibly and controllably changeable
volume and (b) an operating surface geometry deformable as a function of a
control signal generated by at least one of (a) a computation device and (b) a
logic circuit;
wherein the display is configured to display information relevant to
operation of a motor vehicle.
Appeal 2009-014205
Application 10/632,348

3
The Examiner’s Rejections
1

1. The Examiner rejected claims 1, 6-13, and 15-25 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Franzen
(WO 0227645 A1);
2
Andreas Wingert et al., Hyper-Redundant Robot
Manipulators Actuated by Optimized Binary Dielectric Polymers,
Department of Mechanical Engineering, Massachusetts Institute of
Technology, pp. 8-9 (2002) (hereinafter, “Wingert”); and Palalau (US
6,373,472 B1).
2. The Examiner rejected claim 14 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Franzen, Wingert, and Palalau,
further in view of Mulligan (US 2004/0017362 A1).

1
Separate patentability is not argued in the (i) Appeal Brief for claims
6-13 and 15-25 (see generally App. Br. 4-7), or (ii) Reply Brief for claims 9,
11-13, and 15-25 (see generally Reply Br. 1-4). Although Appellant
nominally argues the rejection of claims 9, 11-13, 15-25 (App. Br. 7), the
arguments presented do not point out with particularity or explain why the
limitations of the claims are separately patentable.
Appellant, at page 3 of the Reply Brief, makes specific arguments for
dependent claims 6, 7, 8, and 10 that were not raised in the Appeal Brief.
Consequently, issues from these arguments are raised for the first time in the
Reply Brief, and, therefore, are deemed to be waived. See Optivus Tech.,
Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n
issue not raised by an appellant in its opening brief . . . is waived.”)
(citations and quotation marks omitted); see also Fuji Photo Film Co. v. Jazz
Photo Corp., 394 F.3d 1368, 1375 n.4 (Fed. Cir. 2005) (Arguments first
raised in the reply brief and not properly raised in the opening brief are not
addressed.).
2
Throughout this decision, we refer to the official translation of Wingert
provided to the USPTO by Schreiber Translations, Inc. and made of record
January 15, 2008 (PTO-08-1983).
Appeal 2009-014205
Application 10/632,348

4

Issue on Appeal
Did the Examiner err in combining Wingert with Franzen?
3

ANALYSIS
We agree with Appellant that the Examiner erred in rejecting claims 1
and 6-25. Claim 1 requires that a display contain an actuator layer that faces
outwardly on a display. Independent claims 20, 21, and 22 contain similar
limitations. Claims 6-19 and 23-25 depend upon claim 1. The Examiner
finds that Franzen discloses a transparent and flexible actuator layer S1 that
can be replaced with Wingert’s reversibly and controllably changeable
volume actuator in order to meet the limitation of the claim (Ans. 3).
Appellant argues that this combination would render Franzen’s device “unfit
for its intended purpose” since Wingert’s actuator is not transparent (App.
Br. 5). Thus, Appellant contends that the combination of Wingert with
Franzen would not have been obvious (App. Br. 5). In response, the
Examiner cites to Appellant’s Specification, on page 6, to show that
Appellant is using the same material as Wingert (Ans. 7). Thus, if Appellant
is using the same material as Wingert, Wingert’s material must be
transparent since Appellant’s display is visible through the actuator (Ans. 7).
We agree with Appellant.

3
Appellant makes additional arguments regarding claims 1 and 6-25 (App.
Br. 4-8; Reply Br. 1-4). We do not reach these additional issues as this issue
is dispositive of the case.
Appeal 2009-014205
Application 10/632,348

5
Wingert is silent as to the transmissivity or transparency of the
actuator material disclosed. Our close review of Appellant’s disclosure at
page 6, lines 14-33 reveals that Wingert’s material is disclosed by Appellant
as “easily controllable, but it is not transparent” (Spec. 6:19-20). In
addition, Appellant’s disclosure at page 6, lines 19-20 of the Specification
indicates that the claimed material’s hardness corresponds to Wingert’s
material, not that Appellant is specifically using Wingert’s material.
Thus, the base combination of Franzen and Wingert are not properly
combinable as set out by the Examiner (see Ans. 3-6), since we agree with
Appellant that the modification would change the principle of operation of
the references. Therefore, we cannot sustain the Examiner’s rejection of
claims 1 and 6-25.

CONCLUSION
The Examiner erred in combining Wingert with Franzen.

DECISION
The Examiner’s rejections of claims 1 and 6-25 are reversed.

REVERSED

ELD