Saturn Licensing LLC

Patent Trials and Appeals Board

Feb 15, 2022

2021002069 (P.T.A.B. Feb. 15, 2022)

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. 16/142,410 09/26/2018 Hiroaki Fujii SATURN 3.3-3286 CCC 1107 530 7590 02/15/2022 LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK 20 COMMERCE DRIVE CRANFORD, NJ 07016 EXAMINER LAU, EDMOND C ART UNIT PAPER NUMBER 2871 NOTIFICATION DATE DELIVERY MODE 02/15/2022 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): eOfficeAction@lernerdavid.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROAKI FUJII and SHINPEI NAGATANI Appeal 2021-002069 Application 16/142,410 Technology Center 2800 Before TERRY J. OWENS, CATHERINE Q. TIMM, and JANE E. INGLESE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2-44. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Saturn Licensing LLC, Sony Corporation, and InterDigital Madison Patent Holdings. Appeal Br. 3. Appeal 2021-002069 Application 16/142,410 2 CLAIMED SUBJECT MATTER The claims are directed to a display apparatus containing, amongst other structures, a heat source on at least one side surface, a heat absorbing section, a front surface plate, and a back surface plate such that, when the heat generated by the heat source is absorbed by the heat absorbing section, an amount of heat discharged from the front surface plate is less than that discharged from the back surface plate. See, e.g., claims 2, 21, 37, and 42. Appellant’s Figure 8 depicts an embodiment of the display apparatus. Spec. ¶ 113. Claim 2, reproduced below with reference numerals from Figure 8, and other figures where necessary, with the limitations most at issue italicized, is illustrative of the claimed subject matter: 2. A display apparatus [100] comprising: a display panel [102] for displaying an image; a heat source [light source 112] arranged at a side surface of at least one side of the display panel; a heat absorbing section [heat sink 130] for absorbing heat generated by the heat source; a back surface plate [rear cover 106] comprising a metal arranged at a back surface side of the display panel, wherein a portion of the back surface plate is in close contact with the heat absorbing section; an optical waveguide [114] arranged at the back surface side of the display panel; a front surface plate [front bezel 104] arranged at a front surface side of the display panel; a middle chassis [131] arranged between the front surface plate and the heat absorbing section; Appeal 2021-002069 Application 16/142,410 3 a back chassis [Fig. 2: 108] arranged at a back surface side of the back surface plate; and a panel control board [Fig. 4:151] mounted on the back chassis, the panel control board controlling drive of the display panel and being located at a central portion of the back surface side of the back surface plate, and in which when the generated heat is absorbed by the heat absorbing section [heat sink 130] an amount of heat discharged from the front surface plate [front bezel 104] is less than that discharged from the back surface plate [rear cover 106]. Appeal Br. 13 (Claims App.) (emphasis added). REJECTIONS The Examiner rejects the claims on the grounds of obviousness under 35 U.S.C. § 103(a) and on the grounds of nonstatutory double patenting. We reproduce the rejections as stated in the Answer. Ans. 3-5. Obviousness Grounds Claims 2, 3, 6-10, 14, 21, 22, 24, 25, and 28 are rejected under pre- AIA 35 U.S.C. § 103(a) as being unpatentable over US 2008/0297695 Al, published Dec. 4, 2008 to Sekiguchi et al. in view of US 2006/0243948 A1, published Nov. 2, 2006 to Ishiwa et al. Claims 11, 29-33, 37, and 39-43 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over US 2008/0297695 Al to Sekiguchi et al. in view of US 2006/0243948 Al to Ishiwa et al. further in view of US 2007/0153548 Al, published July 5, 2007 to Hamada et al. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 2 in view of US 20070046852 Al to Kim et al. Appeal 2021-002069 Application 16/142,410 4 Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 2 in view of US 2006/0279536 Al, published Dec. 14, 2006 to Choi et al. Claims 12 and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi, Ishiwa, and Hamada as applied to claim 11 in view of US 2008/0211406 Al, published Sept. 4, 2008 to Wantanabe et al. Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 2 in view of US 2008/0273139 Al, published Nov. 6, 2008 to Sugawara et al. Claims 16 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi, Ishiwa and Hamada as applied to claim 11 in view of US 2005/0023418 A1, published Feb. 3, 2005 to Kim et al. Claim 17 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi, Ishiwa, Hamada, and Kim ’418 as applied to claim 16 in view of US 6,912,120 B2, issued June 28, 2005 to Kim et al. Claims 19 and 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi, Ishiwa, Hamada, and Kim ’418 as applied to claim 16 in view of US 2006/0008103 Al, published Jan. 12, 2006 to Takahashi et al. Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 21 in view of US 2006/0227088 Al, published Oct. 12, 2006 to Jeon et al. Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 24 in view of US 2007/0091639 Al, published Apr. 26, 2007 to Yoo. Appeal 2021-002069 Application 16/142,410 5 Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 24 in view of US 2005/0276566 Al, published Dec. 15, 2005 to Iimura. Claim 34 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 21 in view of US 2008/0273139 Al, published Nov. 6, 2008 to Sugawara et al. Claims 35 and 36 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi and Ishiwa as applied to claim 22 in view of US 2007/0046852 Al, published Mar. 1, 2007 to Kim et al. Claim 38 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi, Ishiwa, and Hamada as applied to claim 37 in view of US 2007/0046852 Al, published Mar. 1, 2007 to Kim et al. Claim 44 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sekiguchi, Ishiwa, and Hamada as applied to claim 43 in view of US 2007/0046852 Al, published Mar. 1, 2007 to Kim et al. Nonstatutory Double Patenting Grounds Claims 2-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-37 of US 10,175,520 B2, issued Jan. 8, 2019 to Fujii et al. in view of US 20080297695 Al toSekiguchi et afurther in view of US 20060243948 Al to Ishiwa et al. Claims 37 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-37 of US 10175520 to Fujii et al. in view of US 20080297695 Al to Sekiguchi et al. further in view of US 20070153548 Al to Hamada et al. Claims 42 and 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-37 of US 10,175,520 B2, Appeal 2021-002069 Application 16/142,410 6 issued Jan. 8, 2019 to Fujii et al. in view of US 2008/0297695 Al, published Dec. 4, 2008 to Sekiguchi et al. further in view of US 2006/0243948 Al, published Nov. 2, 2006 to Ishiwa et al. further in view of US 2007/0153548 Al, published July 5, 2007 to Hamada et al. OPINION Obviousness In arguing against the Examiner’s obviousness rejections, Appellant focuses on the Examiner’s findings relating to Sekiguchi and Ishiwa as applied against the rejection of the independent claims and, particularly, Appellant focuses on the Examiner’s findings as they relate to claim 2. Appeal Br. 9-14. Thus, we also focus on the Examiner’s findings as they relate to the rejection of claim 2. Appellant’s arguments give rise to two issues. We state the issues as follows: 1. Has Appellant identified a reversible error in the Examiner’s finding that Sekiguchi’s front surface plate (first frame 137) and back surface plate (third frame 139) would inherently discharge heat in the manner required by claim 2? 2. Has Appellant identified a reversible error in the Examiner’s finding of a reason to form Sekiguchi’s back surface plate (third frame 139) from metal as required by claim 2? Issue 1 Claim 2 is directed to an apparatus, specifically, a display apparatus. This apparatus, amongst other structures, includes a heat source, a heat absorbing section for absorbing heat generated by the heat source, a back surface plate arranged at the back surface side of the display panel and with Appeal 2021-002069 Application 16/142,410 7 a portion in close contact with the heat absorbing section, and a front surface plate arranged at a front surface side of the display panel. See claim 2. The Examiner finds that Sekiguchi teaches the arrangement of parts required by claim 2. Final Act. 10-11. Specifically, the Examiner finds that the required structure is shown in Sekiguchi’s Figures 1 and 2 and that Sekiguchi’s light source 124 is a heat source, heatsink 101 is a heat absorbing section for absorbing heat generated by the heat source, third frame 139 is a back surface plate arranged at the back surface side of the display panel and with a portion in close contact with the heat absorbing section, and first frame 137 is a front surface plate arranged at a front surface side of the display panel. Id. Appellant does not directly challenge those findings. Appeal Br. 10-14; Reply Br. 1-7. Appellant contends that Sekiguchi’s third frame 139 and first frame 137 are not taught as dissipating heat. Appeal Br. 10-11. That is true, but beside the point. The Examiner’s rejection is based on the arrangement of Sekiguchi’s parts. We conclude, as did the Examiner, that Sekiguchi’s arrangement would result in the heat dissipation required by claim 2. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellant has not identified a difference in apparatus structure that is grounded in the limitations of claim 2. We explain further below. First, we consider Sekiguchi’s first frame 137, which the Examiner finds, without dispute by Appellant, is the front surface plate of claim 2. As acknowledged by Appellant, Sekiguchi’s first frame 137, a plastic frame, is mounted on the front of liquid crystal panel 120 and functions as a front cover. Appeal Br. 10. As further acknowledged by Appellant, a second Appeal 2021-002069 Application 16/142,410 8 frame 138 is disposed under first frame 138 and functions as a thermal insulator and separates first frame 137 from heat sink 101. Appeal Br. 11. We agree with Appellant that the ordinary artisan “would not want to use Sekiguchi’s plastic frame 137 to dissipate heat.” Appeal Br. 11 (emphasis omitted). Thus, a preponderance of the evidence supports the finding that first frame 137 would not dissipate much heat. Second, we consider Sekiguchi’s third frame 139, which the Examiner finds, without dispute by Appellant, is the back surface plate of claim 2. As argued by Appellant, Sekiguchi does not disclose that third frame 139 discharges heat. Appeal Br. 11. Although true, it is reasonable to conclude that third frame 139 would dissipate more heat than first frame 137. Sekiguchi’s third frame 139 abuts heatsink 101 whereas first frame 137 is thermally insulated from heatsink 101. It is the relative positions of the structures that result in the heat discharging function recited in claim 2. In the Reply Brief, Appellant points out that Sekiguchi dissipates heat by air convention. Reply Br. 1-4. Again, that is true. See Sekiguchi Fig. 5 and ¶ 58. But this fact does not change the arrangement of the first frame 137 and third frame 139. It remains that first frame 137 is thermally separated from heatsink 101 while third frame abuts heatsink 101. Based on the respective positions of the frames, it is reasonable to conclude that the heat discharged from first frame 137 would be less than that discharged from third frame 139. Because Appellant has not identified a structural difference between the frame arrangement of claim 2 and that of Sekiguchi, Appellant has not identified a reversible error in the Examiner’s finding that Sekiguchi’s front surface plate (first frame 137) and back surface plate (third frame 139) Appeal 2021-002069 Application 16/142,410 9 would inherently discharge heat in the manner required by claim 2. This is particularly true when one considers the teachings of Ishiwa, which we discuss below. Issue 2 The second issue is whether Appellant has identified a reversible error in the Examiner’s finding of a reason to form Sekiguchi’s back surface plate (third frame 139) from metal as required by claim 2. Appellant has not identified such an error. Sekiguchi is silent on the material from which third frame 139 is made. Beyond pointing out that liquid crystal display device 1 has third frame 139 and depicting third frame 139 in a location between reflective sheet 136 and heatsink 101, Sekiguchi says nothing. Sekiguchi ¶ 28; Fig. 2. Thus, the ordinary artisan would have looked to similar devices for teachings of frame material. Ishiwa teaches such a similar device. Ishiwa teaches a liquid crystal display with a rear frame 7. Ishiwa ¶ 26. Like Sekiguchi’s third frame 139, Ishiwa’s rear frame 7 lies adjacent a reflective sheet (reflective sheet 13) and is in contact with a heat sink (heat sink 27). Compare Ishiwa ¶¶ 28-29, 37 and Fig. 4A (showing rear frame 7 adjacent to reflective sheet 13 and in contact with heat sink 27), with Sekiguchi ¶¶ and Fig. 2 (showing third frame 139 adjacent to second reflective sheet 136 and in contact with heatsink 101). Given the two frames are in similar positions within a display apparatus, Ishiwa provides a suggestion for using metal as the third frame material of Sekiguchi. Given that both Ishiwa and Sekiguchi seek to remove heat, using a thermally conductive metal such as aluminum in the third Appeal 2021-002069 Application 16/142,410 10 frame, which is in contact with heatsink 101, follows from the teachings of the references. Appellant has not identified a reversible error in the Examiner’s finding of a reason to form Sekiguchi’s back surface plate (third frame 139) from metal as required by claim 2. Nonstatutory Double Patenting Turning to the rejections on the grounds of nonstatutory double patenting, Appellant relies on the same arguments advanced against the Examiner’s obviousness rejections. Appeal Br. 15. For the reasons we discussed above, we determine that those arguments fail to identify a reversible error in the Examiner’s rejections. CONCLUSION The Examiner’s decision to reject claims 2-44 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3, 6-10, 14, 21, 22, 24, 25, 28 103 Sekiguchi, Ishiwa 2, 3, 6-10, 14, 21, 22, 24, 25, 28 11, 29-33, 37, 39-43 103 Sekiguchi, Ishiwa, Hamada 11, 29-33, 37, 39-43 4 103 Sekiguchi, Ishiwa, Kim ’852 4 5 103 Sekiguchi, Ishiwa, Choi 5 12, 13 103 Sekiguchi, Ishiwa, Hamada, Watanabe 12, 13 Appeal 2021-002069 Application 16/142,410 11 15 103 Sekiguchi, Ishiwa, Sugawara 15 16, 18 103 Sekiguchi, Ishiwa, Hamada, Kim ’418 16, 18 17 103 Sekiguchi, Ishiwa, Hamada, Kim ’418, Kim ’120 17 19, 20 103 Sekiguchi, Ishiwa, Hamada, Kim ’418, Takahashi 19, 20 23 103 Sekiguchi, Ishiwa, Jeon 23 26 103 Sekiguchi, Ishiwa, Yoo 26 27 103 Sekiguchi, Ishiwa, Iimura 27 34 103 Sekiguchi, Ishiwa, Sugawara 34 35, 36 103 Sekiguchi, Ishiwa, Kim ’852 35, 36 38 103 Sekiguchi, Ishiwa, Hamada 38 44 103 Sekiguchi, Ishiwa, Hamada, Kim ’852 44 2-36 Nonstatutory Double Patenting Fujii, Sekiguchi, Ishiwa 2-36 37, 39 Nonstatutory Double Patenting Fujii, Sekiguchi, Hamada 37, 39 42, 43 Nonstatutory Double Patenting Fujii, Sekiguchi, Ishiwa, Hamada 42, 43 Overall Outcome 2-44 Appeal 2021-002069 Application 16/142,410 12 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2020). AFFIRMED