Xerox Corporation

Patent Trials and Appeals Board

Dec 28, 2020

2020001686 (P.T.A.B. Dec. 28, 2020)

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.
15/630,210 06/22/2017 Chu-Heng Liu 20170337US01 4159
75931 7590 12/28/2020
Basch & Nickerson LLP
1751 Penfield Road
Penfield, NY 14526
EXAMINER
CONNELLY, MICHELLE R
ART UNIT PAPER NUMBER
2874
NOTIFICATION DATE DELIVERY MODE
12/28/2020 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):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHU-HENG LIU and DAVID C. CRAIG

____________
Appeal 2020-001686
Application 15/630,210
Technology Center 2800
____________

Before: MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 3–9, 11–17, 19, and 20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Xerox Corporation as the real party in
interest. Appeal Brief filed September 9, 2019 (“Appeal Br.”) at 2.
2 Final Office Action entered April 11, 2019 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a display device component. Appeal Br. 2–5.
Independent claims 1 and 9 illustrate the subject matter on appeal, and read
as follows:
1. A display device component comprising:
an optical waveguide having a front surface and a back
surface, said back surface of said optical waveguide
corresponding to a non-viewing side of said optical waveguide,
said front surface of said optical waveguide corresponding to a
viewing side of said optical waveguide;
a first marking material formed on a portion of said back
surface of said optical waveguide;
a second marking material formed on a portion of said
first marking material; and
a third marking material formed on a portion of said front
surface of said optical waveguide;
said third marking material having a first surface adjacent
to said front surface of said optical waveguide and a second
surface away from said front surface of said optical waveguide;
said second surface of said third marking material being
non-smooth, said non-smooth second surface of said third
marking material frustrating a portion of light to direct the
portion of light away from said front surface of said optical
waveguide and to prevent the portion of light from being
reflected into said optical waveguide, said non-smooth second
surface of said third marking material causing an image created
by said third marking material to be viewed when viewing said
front surface of said optical waveguide;
said second marking material having light scattering
properties, said light scattering properties causing an image
created by said first marking material to be viewed when
viewing said front surface of said optical waveguide;
said third marking material being an ink.

9. A display device component comprising:
an optical waveguide having a front surface and a back
surface, said back surface of said optical waveguide
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corresponding to a non-viewing side of said optical waveguide,
said front surface of said optical waveguide corresponding to a
viewing side of said optical waveguide;
a first marking material formed on a portion of said back
surface of said optical waveguide;
a second marking material formed on a portion of said
first marking material; and
a third marking material formed on a portion of said front
surface of said optical waveguide;
said third marking material having a first surface adjacent
to said front surface of said optical waveguide and a second
surface away from said front surface of said optical waveguide;
said second surface of said third marking material being
non-smooth, said non-smooth second surface of said third
marking material frustrating a portion of light to direct the
portion of light away from said front surface of said optical
waveguide and to prevent the portion of light from being
reflected into said optical waveguide, said non-smooth second
surface of said third marking material causing an image created
by said third marking material to be viewed when viewing said
front surface of said optical waveguide;
said second marking material having light scattering
particles embedded therein, said light scattering particles
embedded therein causing an image created by said first
marking material to be viewed when viewing said front surface
of said optical waveguide;
said third marking material being an ink.

Appeal Br. 34–37 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered November 12, 2019 (“Ans.”):
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I. Claims 1, 6, 7, and 17 under 35 U.S.C. § 103 as unpatentable
over Brychell,3 in view of Hardesty;4 and
II. Claims 3–5, 8, 9, 11–16, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over Brychell in view of Hardesty and Vasylyev.5
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1, 3–9, 11–17, 19, and 20 under 35 U.S.C. § 103, for the reasons set
forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Rejection I
We turn first to the Examiner’s rejection of claims 1, 6, 7, and 17
under 35 U.S.C. § 103 as unpatentable over Brychell in view of Hardesty.
To address this rejection, Appellant presents separate arguments for
each of independent claims 1 and 17. Appeal Br. 6–24. Appellant’s
arguments for claim 17 are the same as the arguments that Appellant

3 Brychell, US 7,762,704 B2; issued July 27, 2010.
4 Hardesty, US 2,886,911; issued May 19, 1959.
5 Vasylyev, US 2018/0113244 A1; published April 26, 2018.
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presents for claim 1, however. Compare Appeal Br. 6–15, with Appeal Br.
15–24. We, therefore, select claim 1 as representative, and decide the appeal
as to claims 1, 6, 7, and 17 based on claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant does not dispute the Examiner’s finding that Brychell
discloses an edge-lit sign (display device component) having all the
structural features recited in claim 1, except that Brychell discloses that
image 170 (corresponding to second marking material) has reflective
properties, rather than the recited light scattering properties. Compare Final
Act. 3–5, with Appeal Br. 6–24.
More specifically, Brychell discloses an edge-lit sign (display device
component) comprising panel 100 of optical transmission medium (optical
waveguide). Brychell col. 4, ll. 2–6. Brychell discloses that extractor pixels
105 “are formed on the surface of the panel 100 and used to cause light to
be emitted from the surface of the panel 100.” Brychell col. 4, ll. 48–51,
Fig. 2. Brychell discloses that extractor pixels 105 may include an area of
surface roughness or an ink coated area, and Brychell indicates that extractor
pixels 105 may be applied to both the front and back surfaces of panel 100.
Brychell col. 2, ll. 23–25, col. 5, ll. 54–56.
Brychell discloses that light from light source 110 propagating within
panel 100 is directed out of panel 100 by extractor pixels 105. Brychell col.
5, ll. 56–58. Brychell explains that the “display pattern viewed at the output
of the panel 100 is defined by the arrangement and distribution of the
extractor pixels,” and the “pixel size determines the resolution.” Brychell
col. 4, ll. 51–52, col. 5, ll. 58–60.
Brychell discloses embodiments in which extractor pixels 105
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comprising a region of surface roughness are applied to the front or light-
emitting surface of panel 100 (third marking material), and extractor pixels
105 comprising “paint, ink or dye [are] printed on the back surface of the
panel” (first marking material). Brychell col. 4, ll. 54–62, col. 5, ll. 1–2, 16–
18. Brychell discloses that light-reflecting or light-absorbing image 170
(second marking material) may be applied over extractor pixels 105.
Brychell col. 5, ll. 61–65. Brychell discloses that “[t]he extractor pixels
allow light propagating within the panel to escape through the front surface
of the panel by processes of refraction (e.g., bending), reflection, diffraction,
and/or scattering,” and “light emitted through the front surface corresponds
to the image printed on the back surface, which comprises extractor pixels.”
Brychell col. 5, ll. 3–8.
The Examiner finds that although Brychell discloses that image 170
(second marking material) may reflect light, Brychell does not explicitly
disclose that image 170 (second marking material) has light scattering
properties. Final Act. 5. The Examiner finds, however, that it was
“generally well known in the art that reflective surfaces that scatter light
within displays or signs provide a more uniform light output due to the
scattering effect of the light thereby allowing an image to be viewed with a
higher degree of uniform brightness.” Id.
The Examiner further relies on Hardesty’s disclosure of illumination
system 10 for dials and panels that provides uniform illumination of “all
visible markings of the dials and panels.” Hardesty col. 2, ll. 44–47.
Hardesty discloses that illumination system 10 includes light transmitting
panel 12 and light diffusing panel 14, separated by air space 16. Hardesty
col. 3, ll. 16–21, and Fig. 1. Hardesty discloses that diffusing areas 22 are
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provided on the lower surface of panel 12 opposite indicia on a dial to be
illuminated. Hardesty col. 3, ll. 30–32, Fig. 1. Hardesty discloses that
diffusing areas 22 “produce diffuse reflection of the light rays impinging
thereon in the desired locations such that the light rays are reflected adjacent
to and in the direction of the indicia [26] [resulting in] substantially uniform
illumination of all visible indicia [26] on the dial.” Hardesty col. 4, l. 72–
col. 5, l. 16, and Fig. 1.
In view of these disclosures in Hardesty, and considering the
knowledge in the art that materials that scatter light are known to
advantageously provide uniform illumination, the Examiner concludes that
“one of ordinary skill in the art would have found it obvious to use a
material having light scattering properties” as Brychell’s image 170 (second
marking material) “for the purpose of providing uniform illumination to the
panel of Brychell to eliminate unwanted bright or dark spots in the displayed
image.” Final Act. 5–6.
Appellant argues that Hardesty discloses that diffusing surfaces 22
illuminate an image on the front surface of the display system, “whereas the
claimed invention recites that the second marking material causes an image
created by the first marking material, formed on the back surface [of the
recited waveguide], to be viewed when viewing the front surface [of the
waveguide].” Appeal Br. 9. Appellant argues that if Hardesty’s diffusing
surfaces 22 illuminated an image on the back surface of Hardesty’s optical
panel 12, light exiting Hardesty’s optical panel 14 would be more diffuse
than if the image were formed on the front surface of optical panel 12,
“thereby blurring the image, contrary to the stated objective of Hardesty.”
Id.
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Appellant’s arguments, however, do not address the basis for the
Examiner’s reliance on Hardesty, and Appellant’s argument, therefore, do
not identify reversible error in the Examiner’s rejection.
More specifically, as discussed above, it is undisputed on the record
before us that Brychell discloses an edge-lit sign (display device component)
having all the structural features recited in claim 1, except that Brychell does
not explicitly disclose that image 170 (corresponding to second marking
material) has light scattering properties. As the Examiner explains in the
Answer, Hardesty, therefore, “was not relied upon [in the Final Action] to
teach the claimed display structure,” but, rather, “Hardesty is relied upon
solely to illustrate the use of a diffusively reflecting material used to scatter
light within a display panel to obtain uniform illumination.” Ans. 5.
As discussed above, Brychell discloses applying extractor pixels 105
comprising a region of surface roughness to the front or light-emitting
surface of panel 100 (third marking material), printing extractor pixels 105
comprising paint, ink, or dye on the back surface of the panel (first marking
material), and applying light-reflecting image 170 (second marking material)
over extractor pixels 105. Brychell col. 4, ll. 54–62, col. 5, ll. 1–2, 16–18,
and col. 5, ll. 61–65.
As also discussed above, the Examiner takes official notice that it was
“generally well known in the art that reflective surfaces that scatter light
within displays or signs provide a more uniform light output due to the
scattering effect of the light thereby allowing an image to be viewed with a
higher degree of uniform brightness.” Because this finding is reasonable
and Appellant does not challenge it, we accept it as fact. In re Ahlert, 424
F.2d 1088, 1091 (CCPA 1970) (“Where the [A]ppellant has failed to
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challenge a fact judicially noticed and it is clear that he has been amply
apprised of such finding so as to have the opportunity to make such
challenge, the [B]oard’s finding will be considered conclusive by this
[C]ourt.”)
This general knowledge in the art that reflective surfaces that scatter
light within displays or signs provide more uniform light output, combined
with Hardesty’s disclosure of diffusing areas 22 that produce diffuse
reflection (or scattering) of light rays within a display to obtain substantially
uniform illumination of indicia, reasonably would have suggested using a
diffusively reflecting—or light scattering—material to form Bruchell’s light-
reflecting image 170 (second marking material). KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007) (“Under the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”), 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
Appellant’s argument that Hardesty discloses that diffusing surfaces
22 illuminate an image on the front surface of the display system, “whereas
the claimed invention recites that the second marking material causes an
image created by the first marking material, formed on the back surface [of
the recited waveguide], to be viewed when viewing the front surface [of the
waveguide]” mischaracterizes the language of claim 1. Contrary to
Appellant’s argument, claim 1 recites “said second marking material having
light scattering properties, said light scattering properties causing an image
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created by said first marking material to be viewed when viewing said front
surface of said optical waveguide.”
Brychell’s disclosure (discussed above) that “[t]he extractor pixels
allow light propagating within the panel to escape through the front surface
of the panel by processes of refraction (e.g., bending), reflection, diffraction,
and/or scattering,” and disclosure that “light emitted through the front
surface corresponds to the image printed on the back surface, which
comprises extractor pixels,” reasonably would have suggested that forming
Brychell’s image 170 (second marking material) of a light scattering
material as suggested by Hardesty, and applying such modified image 170
over extractor pixels 105 printed on the back surface of panel 100 as
disclosed in Brychell, would cause an image created by such extractor pixels
105 to be viewed when viewing the front surface of Brychell’s panel 100
(optical waveguide), as recited in claim 1. Brychell col. 5, ll. 3–8.
Appellant argues that Hardesty teaches that diffusing surfaces 22 are
formed directly on the surface of Hardesty’s light transmitting panel 12
(optical waveguide) and Brychell teaches that extractor pixels 105 are
formed directly on the surface of Brychell’s panel 100 (optical waveguide).
Appeal Br. 9–10. Appellant argues that neither Hardesty nor Brychell
teaches or would have suggested forming diffusing surfaces directly on a
marking material. Appeal Br. 9. Appellant argues that “if the teachings of
Brychell are modified by the teachings of Hardesty, one of ordinary skill in
the art would be taught by both, Brychell and Hardesty, to form the light
scattering material directly on the optical waveguide’s surface, not directly
on a marking material, as claimed.” Id.
Appellant’s arguments again do not address the basis for the
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Examiner’s reliance on Hardesty, and, therefore, do not address the rejection
as presented by the Examiner. Regardless, as discussed above, although
Brychell does disclose applying extractor pixels 105 to the surface of panel
100, Brychell nonetheless also discloses applying light-reflecting image 170
over extractor pixels 105. As also discussed above, Hardesty’s disclosure of
diffusing areas 22 that scatter light rays within a display to uniformly
illuminate indicia reasonably would have suggested using a light scattering
material to form Bruchell’s light-reflecting image 170, resulting in a light
scattering material (second marking material) formed on Brychells’s
extractor pixels 105 (first marking material) as recited in claim 1.
Appellant argues that Brychell teaches that reflection/absorption
material 170 is the actual image, and if one of ordinary skill in the art were
to replace Brychell’s reflection/absorption material 170 with Hardesty’s
diffusing surfaces 22, “the resulting combination would not have any image
to illuminate because the image layer (reflection/absorption material (170))
will be eliminated.” Appeal Br. 10.
As discussed above, however, Brychell discloses that extractor pixels
105 may be applied to both the front and back surfaces of panel 100, and
Brychell discloses that image 170 may be applied over extractor pixels 105
formed on the back surface of panel 100. Brychell col. 5, ll. 1–2, 16–18, and
61–65. As also discussed above, Brychell explains that extractor pixels 105
cause light to be emitted from the surface of panel 100, with the “display
pattern [image] viewed at the output of the panel 100 . . . defined by the
arrangement and distribution of the extractor pixels.” Brychell col. 2, ll. 23–
25, col. 4, ll. 48–51, and col. 5, ll. 58–60. One of ordinary skill in the art
reasonably would have understood from these disclosures that image 170
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that diffusively reflects (or scatters) light, as suggested by Hardesty, applied
over extractor pixels 105 formed on the back surface of Brychell’s panel 100
would reflect diffuse (scattered) light into panel 100 to illuminate an image
formed by extractor pixels 105 applied to the front and/or back surface of
panel 100. KSR, 550 U.S. at 418 (An obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for [an Examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”); see also In re
Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
Contrary to Appellant’s arguments, the Examiner’s proposed
combination of Brychell and Hardesty, therefore, would illuminate an
image.
Appellant argues that one of ordinary skill in the art would not have
found it obvious to replace Brychell’s reflection/absorption material 170
with Hardesty’s diffusing surfaces 22 because Brychell discloses that the
pattern and density of extractor pixels 105 provide light scattering properties
and produce uniform illumination. Appeal Br. 10–13. Appellant argues that
the density of Brychell’s extractor pixels 105 “would override” utilization of
diffusing surfaces as disclosed in Hardesty as the second marking material to
provide uniform illumination “because, as taught by Brychell, the density of
the extractor pixels 105 provides uniform illumination.” Appeal Br. 13.
Although Brychell does disclose adjusting the density of the extractor
pixels to produce uniform illumination, as discussed above, it is undisputed
on the record before us that it was well known in the art that reflective
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surfaces that scatter light within displays or signs provide a more uniform
light output due to the scattering effect of the light, allowing an image to be
viewed with a higher degree of uniform brightness. Brychell col. 2, l. 59–
col. 3, l. 23. As the Examiner explains in the Answer, “the density of the
extractor pixels does not negate the effects of scattering light with the
second marking material, which increases overall uniformity of the light
distribution and the clearness of the resulting images.” Ans. 12.
Appellant does not provide any objective evidence to support
Appellant’s assertion that the density of Brychell’s extractor pixels 105
“would override” utilization of diffusing surfaces as disclosed in Hardesty as
Bruchyell’s image 170 (the second marking material) to provide uniform
illumination. Such an unsupported assertion does not constitute the requisite
evidence necessary to establish that uniform illumination imparted by use of
a light-scattering material to form Bruchyell’s image 170 would be negated
(or overridden) by the density of Brychell’s extractor pixels 105. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems
to follow from common experience is just attorney argument and not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness.”); see also Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d
1034, 1043 (Fed. Cir. 2017) (“[A]ttorney argument is not evidence” and
cannot rebut other admitted evidence.); and In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (“Argument in the brief does not take the place of evidence in
the record.”).
One of ordinary skill in the art seeking to uniformly illuminate an
edge-lit sign (display device component) comprising panel 100 as disclosed
in Bruchell, therefore, reasonably would have been led to utilize a light
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scattering material as disclosed in Hardesty to form Bruchyell’s image 170,
in view of the knowledge in the art—and disclosure in Hardesty—that light-
scattering surfaces within a display allow an image to be viewed with a
higher degree of uniform brightness. Dystar Textilfarben GmbH v. C.H.
Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) (quoting In re
Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)) (“[E]vidence of a
motivation to combine need not be found in the prior art references
themselves, but rather may be found in ‘the knowledge of one of ordinary
skill in the art, or, in some cases, from the nature of the problem to be
solved.’”). One of ordinary skill in the art reasonably would have expected
that use of such a light-scattering material as disclosed in Hardesty to form
Bruchell’s image 170 would successfully further Bruchell’s objective of
producing uniform illumination from panel 100. In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903‒04
(Fed. Cir. 1988)) (“Obviousness does not require absolute predictability of
success . . . all that is required is a reasonable expectation of success.”)
(emphasis omitted).
Appellant argues that the Examiner “changed the motivation for
combining the teachings of Brychell and Hardesty” in the Advisory Action
entered July 3, 2019, and Appellant provides arguments contesting the
asserted new motivation. Appeal Br. 13–15 (“[O]ne of ordinary skill in the
art would NOT be motivated to use the diffusing surfaces (22) of Hardesty
alone to resolve the issue of dark adaptation,” and “one of ordinary skill in
the art would NOT be motivated to use the diffusing surfaces (22) of
Hardesty alone to reduce and/or eliminate of parallax, haze, and reflected
images.”).
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Appellant’s arguments directed to the asserted “changed motivation”
for combining the relied-upon disclosures of Brychell with those of Hardesty
do not identify reversible error in the Examiner’s rejection because, as the
Examiner explains in the Answer, “[t]he motivation, however, to provide a
clear image and increased uniformity of light to eliminate unwanted bright
or dark spots in the displayed image remains the same. The rejection
remains unchanged.” Ans. 12.
We, accordingly, sustain the Examiner’s rejection of claims 1, 6, 7,
and 17 under 35 U.S.C. § 103 as unpatentable over Brychell in view of
Hardesty.
Rejection II
We turn now to the Examiner’s rejection of claims 3–5, 8, 9, 11–16,
19, and 20 under 35 U.S.C. § 103 as unpatentable over Brychell in view of
Hardesty and Vasylyev.
To address this rejection, Appellant presents arguments directed to
independent claim 9 only, to which we accordingly limit our discussion.
Appeal Br. 25–32; 37 C.F.R. § 41.37(c)(1)(iv).
The only difference between independent claim 9 and claim 1 relates
to the recited second marking material. Claim 9 recites that “said second
marking material having light scattering particles embedded therein, said
light scattering particles embedded therein causing an image created by said
first marking material to be viewed when viewing said front surface of said
optical waveguide,” while, as discussed above, claim 1 recites “said second
marking material having light scattering properties, said light scattering
properties causing an image created by said first marking material to be
viewed when viewing said front surface of said optical waveguide.”
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The Examiner finds that Brychell and Hardesty teach or would have
suggested all of the limitations of claim 9 for the reasons set forth in the
Examiner’s rejection of claim 1, “except for the second marking material
having light scattering particles embedded therein,” and the Examiner relies
on Vasylyev for suggesting modifying the material used to form Brychell’s
image 170 by embedding light-scattering particles in the material. Final Act.
10–11.
More specifically, Vasylyev discloses edge-lit illumination device 900
comprising light guide 4 (optical waveguide). Vasylyev ¶ 42, Fig. 1.
Vasylyev discloses that a plurality of light extraction elements 6 that contain
forward-scattering particles 9 are widely distributed over the surface of light
guide 4 (optical waveguide). Vasylyev ¶¶ 42, 54, 98, and Fig. 1. Vasylyev
explains that light extraction elements 6 may be formed by depositing small
drops of white ink or paint that include a uniform suspension of forward-
scattering particles 9 on the surface of light guide 4, and curing the ink or
paint with UV light. Vasylyev ¶¶ 98–99.
In view of these disclosures in Vasylyev, and considering Brychell’s
disclosure of using UV-cured inks to form extractor pixels 105 on the
surface of Brychell’s panel 100, together with the knowledge in the art that
“materials that scatter light are known to advantageously provide uniform
illumination,” the Examiner concludes that it would have been obvious to
one of ordinary skill in the art to use a UV-curable ink material including
embedded light-scattering particles as Brychell’s image 170 (second
marking material) to obtain uniform illumination of Brychell’s panel 100.
Final Act. 10–11.
Appellant argues that “the filing date of Vasylyev is after the filing
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date of the present application, thus for Vasylyev to qualify as prior art, the
Examiner must rely upon the filing date of Provisional Patent Application
Number 62/412,596 [to which Vasylyev claims priority] to pre-date the
filing date of the present application.” Appeal Br. 30. Appellant argues that,
however, “Provisional Patent Application Number 62/412,596 fails to teach
or suggest the utilization of a marking material having light scattering
particles embedded therein,” and Vasylyev, therefore, “does NOT qualify as
prior art because the effective filing date of the teachings of a marking
material having light scattering particles embedded therein is after the
effective filing date of the present application.” Appeal Br. 31–32.
We point out that Vasylyev not only claims priority to provisional
patent application number 62/412,596, but Vasylyev also incorporates the
entirety of the provisional application by reference. Vasylyev ¶ 1.
The Examiner responds to Appellant’s arguments in the Answer by
pointing out that paragraph 43 of provisional application 62/412,596
discloses that “light extraction elements 6 may be formed by forward-
scattering particles or relatively shallow surface relief structures configured
to incrementally deflect light rays from the original propagation path by
relatively small angles upon each interaction. Examples particularly include
. . . volumetrically distributed forward-scattering particles.” Ans. 17–18.
The Examiner finds that “[l]ight scattering particles that are volumetrically
distributed are embedded within the material of the light extraction
elements,” and, “[t]hus, the provisional application does provide support for
the particles and Vasylyev qualifies as prior art.” Ans. 18.
In Appellant’s Reply Brief, Appellant does not challenge or dispute
the Examiner’s findings in the Answer related to provisional patent
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application number 62/412,596, and the Examiner’s consequent
determination that Vasylyev qualifies as prior art. See generally Reply Br.
A preponderance of the evidence relied-upon in this appeal, therefore,
supports the Examiner’s determination that Vasylyev qualifies as prior art,
and Appellant’s arguments to the contrary do not identify reversible error in
the Examiner’s rejection.
Appellant argues that Vasylyev discloses a UV-curable ink including
forward-scattering particles, rather than “backward- scattering particles” as
would be required for an image created by Brychell’s extractor pixels 105
printed on the back surface of panel 100 (first marking material) to be
viewed on the front surface side of Brychell’s panel 100 (optical
waveguide). Appeal Br. 26. Appellant argues that, therefore, “one of
ordinary skill in the art would NOT be taught to replace the
reflection/absorption material (170) of Brychell with the UV curable ink of
Vasylyev because the image would not be viewable on the front surface side
of the optical waveguide [panel 100] due to the forward-scattering property
of the UV curable ink.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Appellant does not dispute the Examiner’s finding that Brychell
discloses an edge-lit sign (display device component) having all the
structural features recited in claim 9, except that Brychell does not explicitly
disclose that image 170 (corresponding to second marking material) is
formed of a material including embedded light scattering particles.
Compare Final Act. 10–11, with Appeal Br. 25–32. Brychell’s disclosure
(discussed above) that “[t]he extractor pixels allow light propagating within
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the panel to escape through the front surface of the panel by processes of
refraction (e.g., bending), reflection, diffraction, and/or scattering,” and
disclosure that “light emitted through the front surface corresponds to the
image printed on the back surface, which comprises extractor pixels,”,
reasonably would have suggested that forming Brychell’s image 170 (second
marking material) of a UV-curable ink containing embedded light scattering
particles as disclosed in Vasylyev, and applying such modified image 170
over extractor pixels 105 printed on the back surface of Brychell’s panel
100, would cause an image created by such extractor pixels 105 to be
viewed when viewing the front surface of Brychell’s panel 100 (optical
waveguide), as recited in claim 9. Brychell col. 5, ll. 3–8.
Appellant argues that Brychell teaches that reflection/absorption
material 170 is the actual image, and if one of ordinary skill in the art were
to replace Brychell’s reflection/absorption material 170 with Vasylyev’s UV
curable ink, “the resulting combination would not have any image to
illuminate because the image layer (reflection/absorption material (170))
will be eliminated.” Appeal Br. 27.
This argument, however, is essentially the same as one of the
arguments discussed above that Appellant presents for claim 1, and the
argument, therefore, does not identify reversible error in the Examiner’s
rejection of claim 9 for the same reasons that the argument does not identify
reversible error in the Examiner’s rejection of claim 1, discussed above.
Appellant argues that one of ordinary skill in the art would not have
found it obvious to replace Brychell’s reflection/absorption material 170
with Vasylyev’s UV curable ink because Brychell discloses that the pattern
and density of extractor pixels 105 provide light scattering properties and
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produce uniform illumination. Appeal Br. 27–29. Appellant argues that the
density of Brychell’s extractor pixels 105 “would override the utilization of
diffusing surfaces, to provide uniform illumination, as the second marking
material because, as taught by Brychell, the density of the extractor pixels
105 provides uniform illumination.” Appeal Br. 30.
This argument again is essentially the same as one of the arguments
discussed above that Appellant presents for claim 1, and the argument,
therefore, does not identify reversible error in the Examiner’s rejection of
claim 9 for the same reasons that the argument does not identify reversible
error in the Examiner’s rejection of claim 1, discussed above.
We, accordingly, sustain the Examiner’s rejection of claims 3–5, 8, 9,
11–16, 19, and 20 under 35 U.S.C. § 103 as unpatentable over Brychell in
view of Hardesty and Vasylyev.
CONCLUSION

Claims
Rejected

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 7, 17 103 Brychell, Hardesty 1, 6, 7, 17

3–5, 8, 9,
11–16, 19,
20
103 Brychell, Hardesty,
Vasylyev
3–5, 8, 9,
11–16, 19,
20

Overall
Outcome
1, 3–9, 11–
17, 19, 20

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).

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21
AFFIRMED