Xerox Corporation

Patent Trials and Appeals Board

Mar 2, 2022

2021000736 (P.T.A.B. Mar. 2, 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. 16/229,116 12/21/2018 Donald A. Brown 20180878US01 1847 81368 7590 03/02/2022 GIBB & RILEY, LLC Frederick W. Gibb, III, Esq. 550M Ritchie Highway, #286 Severna Park, MD 21146 EXAMINER GARCIA, GABRIEL I ART UNIT PAPER NUMBER 2674 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): support@gibbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD A. BROWN Appeal 2021-000736 Application 16/229,116 Technology Center 2600 Before ALLEN R. MACDONALD, MINN CHUNG, and ADAM J. PYONIN, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-20. See Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this Decision, we refer to Appellant’s Appeal Brief filed June 11, 2020 (“Appeal Br.”) and Reply Brief filed November 2, 2020 (“Reply Br.”), as well as the Examiner’s Final Office Action mailed January 16, 2020 (“Final Act.”) and Answer mailed September 9, 2020 (“Ans.”). We also refer the Specification filed December 21, 2018 (“Spec.”). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. 2 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as Xerox Corporation. Appeal Br. 2. Appeal 2021-000736 Application 16/229,116 2 CLAIMED SUBJECT MATTER The subject matter of the present application pertains to document processing devices that produce ambient lighting indicating machine status conditions. Spec. ¶ 1. Claims 1, 8, and 15 are independent. Claim 1, reproduced below with the disputed limitations emphasized, is illustrative of the claimed subject matter: 1. An apparatus comprising: a document processing device having an exterior; a display device connected to the exterior, wherein the display device includes a screen positioned to display in a first direction away from the exterior; lights connected to the display device, wherein the lights are connected to a surface of the display device that is opposite the screen, and wherein the lights are positioned to emit light in second direction toward the exterior; and a processor operatively connected to the display device and the lights, wherein the processor is adapted to control the lights to emit corresponding lighting of a graphic item appearing on the screen. Appeal Br. 25 (Claims App.) (emphases added). REJECTIONS The Examiner relies on the following references: Name3 Reference Date Krolczyk US 6,658,218 B2 Dec. 2, 2003 Fukuoka US 10,048,538 B1 Aug. 14, 2018 Skrainar US 10,073,664 B2 Sept. 11, 2018 3 All citations herein to the prior art are by reference to the first named inventor only. Appeal 2021-000736 Application 16/229,116 3 Claims 1-7 and 15-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Skrainar and Fukuoka. Final Act. 3-6. Claims 8-14 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Skrainar, Fukuoka, and Krolczyk. Final Act. 6-7. ISSUE4 The issue presented by Appellant’s contentions is whether the Examiner erred in finding that the combination of Skrainar and Fukuoka teaches or suggests a display device including a display screen and “lights connected to the display device, wherein the lights are connected to a surface of the display device that is opposite the screen,” as recited in claim 1 and similarly recited in independent claims 8 and 15. ANALYSIS In rejecting claim 1 over the combination of Skrainar and Fukuoka, the Examiner finds that Skrainar teaches most of the recited limitations, including “a document processing device having an exterior,” “a display device connected to the exterior, wherein the display device includes a screen positioned to display in a first direction away from the exterior,” and “lights connected to the display device.” Final Act. 3-4 (citing Skrainar, Figs. 1, 2, 3, 9, 6:31-44). The Examiner finds, however, Skrainar “does not teach the lights are connected to a surface of the display device that is opposite to the screen.” Id. at 4. For this limitation, the Examiner 4 Appellant’s arguments raise additional issues. Because the identified issue is dispositive of the appeal, we do not reach the additional issues. Appeal 2021-000736 Application 16/229,116 4 additionally relies on Fukuoka to find that Fukuoka teaches “lights that are connected to a surface of the display device that is opposite (or back) to the screen.” Id. (citing Fukuoka, Figs. 1-6). Specifically, the Examiner finds that Figure 2 of Fukuoka describes how “a screen 20” is “affixed with LEDs in the back of the display 20” and column 2, lines 33 to 40 of Fukuoka describes “how light plate can [be] affixed to the back or the front surface of the display.” Ans. 4 (citing Fukuoka, Fig. 2, 2:33-40). Appellant argues that the Examiner’s rejection is in error because Figures 1-6 of Fukuoka do not disclose lights connected to the surface of a display, but instead only illustrate a single internal light source (LED 61) that supplies light internally within the display device to reflective dots 62 via a light guiding plate 60 (both of which are also internal components of the display device) to illuminate an image display area 21 and project light to a user. Appeal Br. 15 (emphases added). Appellant asserts that “all lighting structures discussed in the Fukuoka reference are internal to the display device, not lights facing the exterior of the document processing device.” Reply Br. 2. According to Appellant, “no elements of any kind are described by Fukuoka as being affixed to the ‘back of the display 20’ and instead only reflective elements are affixed to the back of the light guiding plate 60 that is interior to the display device and not connected to the ‘back of the display.’” Id. at 3 (emphasis omitted) (citing Fukuoka, Fig. 2). We agree with Appellant. Appeal 2021-000736 Application 16/229,116 5 Figure 2 of Fukuoka is reproduced below. Figure 2 is a diagram illustrating the configuration of the display portion 80 of the liquid crystal display device 10 according to the present embodiment. Fukuoka 9:35-37. As depicted in Figure 2 of Fukuoka, disposed in the display portion 80 are, sequentially from the front to the back side, the absorptive polarizing plate 21, the liquid crystal panel 20, the absorptive polarizing plate 22, and the light guiding plate 60. The absorptive polarizing plate 21 is affixed to the front surface of the liquid crystal panel 20, and the absorptive polarizing plate 22 is affixed to the back surface. The light guiding plate 60 has the light source 61, which consists of LEDs (not shown) for emitting red, green, and blue light, attached thereto along the edge. Id. at 9:37-46 (emphases added). Appeal 2021-000736 Application 16/229,116 6 We agree with Appellant that Figure 2 of Fukuoka describes that LEDs are affixed at the bottom edge of light guiding plate 60, not at the back of “screen 20” or “display 20,” as the Examiner finds. We also agree with Appellant that “all lighting structures discussed in the Fukuoka reference are internal to the display device, not lights facing the exterior of the document processing device.” Reply Br. 2; Fukuoka 9:35-46, Fig. 2. Column 2, lines 33 to 40 of Fukuoka cited by the Examiner states that A third aspect of the present invention provides the display device according to the first aspect of the present invention, wherein the light-emitting area formed in the light guiding plate has a scattering film containing a scattering material and affixed to a front or back surface or a coating film formed of the scattering material on the front or back surface, the scattering material scattering incident light from the light source. Fukuoka 2:33-40 (emphases added). Thus, the cited portion of Fukuoka describes that a “scattering film” is affixed to a front or back surface of the “light guiding plate,” not “to the back or the front surface of the display,” i.e., display 20 or screen 20 shown in Figure 2 of Fukuoka, as the Examiner finds. See Ans. 4 (citing Fukuoka, Fig. 2, 2:33-40). Accordingly, we determine that the Examiner errs in finding that the combination of Skrainar and Fukuoka teaches or suggests a display device including a display screen and “lights connected to the display device, wherein the lights are connected to a surface of the display device that is opposite the screen,” as recited in claim 1 and similarly recited in independent claims 8 and 15. As the Examiner does not rely on the other cited reference for these limitations, we are persuaded that the Examiner’s rejection of claims 1, 8, and 15 is in error. Appeal 2021-000736 Application 16/229,116 7 In sum, we agree the Examiner erred, and, therefore, do not sustain the Examiner’s rejection of claims 1, 8, and 15 or the rejection of dependent claims 2-7, 9-14, and 16-20. CONCLUSION The decision of the Examiner to reject claims 1-20 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7, 15-20 103 Skrainar, Fukuoka 1-7, 15-20 8-14 103 Skrainar, Fukuoka, Krolczyk 8-14 Overall Outcome 1-20 REVERSED