Rong Liu et al.

Patent Trials and Appeals Board

Oct 3, 2019

14943202 - (D) (P.T.A.B. Oct. 3, 2019)

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.
14/943,202 11/17/2015 Rong Liu P28604US1 2131
65015 7590 10/03/2019
Treyz Law Group
15279 N. Scottsdale Rd., Suite 250
Scottsdale, AZ 85254
EXAMINER
LAU, EDMOND C
ART UNIT PAPER NUMBER
2871
NOTIFICATION DATE DELIVERY MODE
10/03/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RONG LIU, YU P. SUN,
JUN QI, and VICTOR H. YIN
____________________

Appeal 2018-009205
Application 14/943,202
Technology Center 2800
____________________

Before KAREN M. HASTINGS, LILAN REN, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The record on appeal includes the Specification filed November 17, 2015
(“Spec.”), the Examiner’s Final Action mailed January 12, 2018 (“Final
Act.”), the Examiner’s Final Office Action mailed September 15, 2017
(“Final Act.”), Appellants’ Appeal Brief filed June 1, 2018 (“App. Br.”), the
Examiner’s Answer mailed September 5, 2018 (“Ans.”), and Appellants’
Reply Brief filed September 26, 2018 (“Reply Br.”).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11, 13, and 16–18.2, 3 We have jurisdiction under 35 U.S.C. § 6(b).
We procedurally reverse and enter a new ground of rejection pursuant
to 37 CFR § 41.50(b).

CLAIMED SUBJECT MATTER
The claims are directed to a display backlight with an optical film.
Claim 11, reproduced below, is illustrative of the claimed subject matter
(emphasis added to highlight a key limitation):
11. A display comprising:
a plurality of light-emitting diodes;
an upper polarizer;
a lower polarizer;
first and second transparent substrates interposed
between the upper and lower polarizers;
a liquid crystal layer between the first and second
transparent substrates;
a turning film that comprises a plurality of protrusions,
wherein each protrusion of the plurality of protrusions
comprises a concave surface and a surface that is positioned
at an angle with respect to the concave surface; and

2 Appellants identify “Apple Inc.” as the real party in interest. Br. 2.
3 Appellants state that the “claims currently on appeal are claims 11, 13, and
16–18” (Reply Br. 2) which is consistent with the Examiner’s statement that
the rejection of claims 11, 13, and 16–18 is on appeal. Ans. 7. Although the
Claims Appendix of the Appeal Brief includes claims other than 11, 13, and
16–18, our opinion only addresses the rejections of 11, 13, and 16–18 and
the references from which the appeal arises. Compare Final Act. 2 (stating
that claims 12 and 21 are withdrawn, claims 19 and 20 have been allowed,
claim 23 is objected to as being dependent from a rejected claim, and claim
21 has been withdrawn), with App. Br. 2 (stating that claims “11–13, 16–21,
and 23 are pending.”).
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a light guide layer configured to pass backlight from
the plurality of light-emitting diodes through the turning
film, the lower and upper polarizers, the first and second
substrates, and the liquid crystal layer, wherein the turning
film has a top surface, wherein the turning film is interposed
between the liquid crystal layer and the light guide layer,
wherein each protrusion of the plurality of the protrusions
extends away from the top surface of the turning film
towards the light guide layer, and wherein the surface of
each protrusion is interposed between the plurality of light-
emitting diodes and the respective concave surface of that
protrusion.

App. Br. 12–13 (Claims Appendix).

REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Akins et al. US 6,166,787 Dec. 26, 2000
(hereinafter “Akins”)
Ouderkirk et al. US 2011/0149554 A1 Jun. 23, 2011
(hereinafter “Ouderkirk”)

REJECTIONS
Claims 11 and 16 are rejected under 35 U.S.C. 103 as unpatentable
over Ouderkirk and Akins. Final Act. 5–7.
Dependent claims 13, 17, and 18 are rejected under 35 U.S.C. 103 as
unpatentable over Ouderkirk, Akins, and additional respective references.
Final Act. 7–9.

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OPINION
Appellants argue that the Examiner erred in finding that the prior art
teaches or suggests each and every limitation of claim 11 including the
limitation “wherein the surface of each protrusion is interposed between the
plurality of light-emitting diodes and the respective concave surface of that
protrusion.” Br. 10.
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ 2d 1207, *5 (BPAI 2008) (precedential).
In this case, this claim language “wherein the surface of each
protrusion is interposed between the plurality of light-emitting diodes and
the respective concave surface of that protrusion” is unclear as to whether
“the surface of each protrusion is interposed between” “the respective
concave surface of that protrusion” and (1) a respective one of “the plurality
of light-emitting diodes” or (2) all of “the plurality of light-emitting diodes.”
The specification including the hand-drawn illustrations does not appear to
clearly support either interpretation. See Br. 4 (citing FIGS. 6–8 and
paragraphs 47 and 49 as support for this claim element); see also Carnegie
Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008) (holding that the specification is required under 35 U.S.C. § 112 to
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“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention”).4
Review of the rejection under 35 U.S.C. § 103 would therefore require
considerable speculation as to the scope of claim 11. Such speculation would
not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do
not think a rejection under 35 U.S.C. § 103 should be based on such
speculations and assumptions.”). We, therefore, procedurally reverse the 35
U.S.C. § 103 rejection of claim 11 as well as the 35 U.S.C. § 103 rejection
of claims 16, 13, 17, and 18. We emphasize that this is a technical reversal
of the rejections under 35 U.S.C. § 103, and not a reversal based upon the
merits of the rejections.
We accordingly enter a new ground of rejection that claim 11 is
indefinite under 35 U.S.C. § 112 (b). As a result, dependent claims 13, and
16–18 are also rejected for indefiniteness.

CONCLUSION
The Examiner’s decision is reversed.
Claims
Rejected
Basis Affirmed Reversed New Ground
11, 13, and
16–18
35 U.S.C. § 103 11, 13, and
16–18

11, 13, and
16–18
35 U.S.C. § 112
(b)
11, 13, and
16–18
Overall
Outcome
35 U.S.C. § 112
(b)
11, 13, and
16–18

4 Should prosecution continue after the appeal, Appellants and the Examiner
should consider whether this claim limitation complies with the written
description requirement under 35 U.S.C. § 112(a).
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A new ground of rejection of claim 11, 13, and 16–18 for
indefiniteness under 35 U.S.C. § 112 (b) has been entered.

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellants,
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
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellants may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
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ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; NEW GROUND OF REJECTION