Saturn Licensing LLC

Patent Trials and Appeals Board

Aug 5, 2021

2020006334 (P.T.A.B. Aug. 5, 2021)

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.
15/652,590 07/18/2017 Takeo ARAI 505624US 7149
22850 7590 08/05/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CATTANACH, COLIN J
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
08/05/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKEO ARAI and JUNJI MORIMOTO

Appeal 2020-006334
Application 15/652,590
Technology Center 2800

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J.
HUME, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 21–41. Claims App. Claims 2–20 are
allowed. Id. Claim 1 is cancelled. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We refer to the Specification, filed July 18, 2017 (“Spec.”); Final Office
Action, mailed Dec. 27, 2019 (“Final Act.”); Appeal Brief, filed May 26,
2020 (“Appeal Br.”); Reply Brief, filed Sept. 8, 2020 (“Reply Br.”); and the
Examiner’s Answer, mailed July 8, 2020 (“Ans.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Saturn
Licensing LLC. Appeal Br. 2.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
backlight apparatus equipped with a light source unit including light source
(7) and lens (1) containing concave light incident surface (1a) with
roughening processing portion (1d) to diffuse light emitted therefrom. Lens
(1) further includes light guide portion (1b) to further diffuse emitted light
passing therethough. Spec. 14: 20–32, id. at 16:4–13.
Figure 4, reproduced below, is useful for understanding the claimed
subject matter:

As depicted in Figure 4 above, lens 1 includes concave light-incident surface
(1a) light guide portion (1b), and light-emitting surface (1c). Id. LED
blocks (3) includes LEDs (7). Id. Upon entering light-incident surface (1a),
light emitted from each of the LED blocks (3) is diffused, then it passes
through light guide portion (1b), and it is emitted from the light-emitting
surface (1c) from which it is further diffused. Id.
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Independent claim 21 is illustrative of the claimed subject matter:
21. A display comprising:
a light source; and
lenses configured to diffuse light emitted from the light
source, each lens comprising:
a concave light-incident surface, wherein at least a portion
of the light emitted from the light source enters the light-incident
surface;
a light guide portion through which the light that has
entered the light-incident surface passes;
a light-emitting surface configured to emit the light that
passes through the light guide portion;
a bottom surface; and
a roughening processing portion disposed on a plane
portion of the concave light incident surface, wherein
a shape of the light guide portion performs a lens function
on light passing through the light guide portion such that the
passing light is additionally diffused after diffusion by the
roughening processing portion.

III. REFERENCES
The Examiner relies upon the following references as evidence.3
Name Reference Date
Bell US 1,465,585 May 29, 1923
Takekuma US 2003/0067264 A1 Apr. 10, 2003
Hashimoto US 2004/0065894 A1 Apr. 8, 2004
Omata US 2004/0201987 Al Oct. 14, 2004
Segawa US 2007/0070616 Al Mar. 29, 2007
Sakai US 2007/0147073 Al June 28, 2007
Park US 2007/0258247 Al Nov. 8, 2007

3 All reference citations are to the first named inventor only.
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IV. REJECTIONS
The Examiner rejects claims 21, 22, 24, 25, and 33 under 35 U.S.C.
§ 102 as anticipated by Park. Final Act. 2.
The Examiner rejects claim 23 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Park and Sakai. Final Act. 4.
The Examiner rejects claim 23 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Park and Bell. Final Act. 5.
The Examiner rejects claims 26–32 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Park and Hashimoto. Final
Act. 6.
The Examiner rejects claim 34 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Park and Segawa. Final Act. 9.
The Examiner rejects claim 35 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Park, Sakai and Takekuma. Final Act. 10.
The Examiner rejects claims 36 and 37 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Park, Sakai, Takekuma, and
Omata. Final Act. 12.
The Examiner rejects claims 38–41 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Park, Hashimoto, and Sakai.
Final Act. 13.
V. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 5–10.4 We are unpersuaded by Appellant’s

4 We have considered in this Decision only those arguments Appellant
actually raised in the Brief. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv) (2017).
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contentions. Except as otherwise indicated herein below, we adopt as our
own the findings and reasons set forth in the Final Action, and the
Examiner’s Answer in response to Appellant’s Appeal Brief. Final Act. 2–
16; Ans. 3–17. However, we highlight and address specific arguments and
findings for emphasis as follows.
a. Anticipation Rejection
Appellant argues that the Examiner errs in finding Park discloses “a
shape of the light guide portion performs a lens function on light passing
through the light guide portion such that the passing light is additionally
diffused after diffusion by the roughening processing portion.” Appeal Br.
5–6. Appellant specifically contends the Examiner errs because Park’s
prism pattern embossed on the upper surface (156) of the optical cap (150)
would perform a prism function, not a lens function, on light emitted from
the upper surface (156). Appeal Br. 6.
The Examiner finds Park’s outer surface 156 performs a lens function
that additionally diffuses the light first diffused by roughening processing
portion 158. Final Act. 3.
We are not persuaded by Appellant’s argument because we agree with
the Examiner’s finding that Park’s prism pattern 156 is capable of
performing a lens function. Park Fig. 3; Ans. 3–7. Furthermore, we do not
find a limiting definition in the Specification for the claim term “lens
function” that would preclude the Examiner’s broad but reasonable
interpretation of the disclosed prism to encompass such a function. See
Spec. generally.
We agree with the Examiner’s findings because Park’s light emitted
from LED 110 first passes through lens 115, and then is diffused after
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passing through Park’s roughening processing portion 158, and then is
additionally diffused after it passes through Park’s outer surface 156. Park,
Fig. 3. Our reviewing court guides that an apparatus claim “depends on the
claimed structure, not on the use or purpose of that structure.” Catalina
Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). Accord Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not
what a device does.”). “It is well settled that the recitation of a new intended
use for an old product does not make a claim to that old product patentable.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Appellant also argues “nothing in Park describes that the shape of the
area between the upper and lower surfaces performs any optical function on
the light passing through this area.” Appeal Br. 6.
We are not persuaded by this argument and we agree with the
Examiner’s finding because Park’s optical cap 15 discloses the light passing
through the light guide portion. Final Act. 3; Ans. 5. The “lens function” is
provided by the lens features of Park as described in Figure 3 and paragraphs
53–58.
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of Examiner error. Therefore, we sustain the
Examiner’s anticipation rejection of claim 21 and not separately argued
grouped claims 22, 24, 25, and 33.
b. Obviousness Rejections
Regarding the rejection of claim 23, Appellant contends Park does not
teach the limitation “the bottom surface contacts a side surface of a substrate
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of the light source” and argues the Examiner’s interpretation of the recited
“side surface of a substrate” ignores the word “side.” Appeal Br. 7.
We are not persuaded by Appellant’s arguments because Appellant is
arguing the references separately when the rejection for obviousness based
upon what the reference combination would have suggested to a person of
ordinary skill in the art. “[O]ne cannot show non-obviousness by attacking
references individually where . . . the rejections are based on combinations
of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). The
Examiner relies upon the combined teachings of Park and Sakai for at least
suggesting the limitations of claim 23. Final Act. 4–5. As correctly noted
by the Examiner, Park’s bottom surface 105 contacts side surfaces 154 and
152, thereby teaching the disputed limitations. Park, Fig. 3.
Because we are not persuaded of reversible Examiner error, we
sustain the Examiner’s obviousness rejection of dependent claim 23.
Although Appellant separately argues independent claim 35, these
arguments are substantially the same arguments as those made for claim 21.
Appeal Br. 9. Therefore, for the same reasons explained above for claim 21,
we are not persuaded by Appellant’s arguments on claim 35.
We are likewise not persuaded of reversible Examiner error in the
rejection of claim 35. Consequently, we sustain the Examiner’s obviousness
rejection of independent claim 35.
Regarding the separate 103 rejections of claims 26–32, 34, and 36–41,
because Appellant does not present substantive patentability arguments, and
the additional 103 references do not remedy the deficiencies in the 102
rejection based on Park discussed in the previous section, these claims fall
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
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VI. CONCLUSION
We affirm the Examiner’s rejections of claims 21–41.
VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 22, 24,
25, 33 102 Park
21, 22,
24, 25,
33

23 103 Park, Sakai 23
26–32 103 Park, Hashimoto 26–32
34 103 Park, Segawa 34
35 103 Park, Sakai, Takekuma 35
36, 37 103 Park, Sakai, Takekuma, Omata 36, 37
38–41 103 Park, Hashimoto, Sakai 38–41
Overall
Outcome
21–41

VIII. TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED