Ex Parte Anderson et al

Patent Trial and Appeal BoardSep 17, 2012

10757104 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DARYL E. ANDERSON and ERIC MARTIN ____________ Appeal 2009-012811 Application 10/757,1041 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, MARC S. HOFF, and CAROLYN D. THOMAS, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-8, 10-21, 23-54, and 63 (App. Br. 4).2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is Hewlett-Packard Development Company, LP. 2 Claims 9, 22, and 55-62 have been cancelled (App. Br. 4). Appeal 2009-012811 Application 10/757,104 2 STATEMENT OF THE CASE Appellants’ invention is directed to a type of Micro-electromechanical System (MEMS) known as a diffractive Light Device (DLD) that produces colors based on the precise spacing of a pixel plate to related lower (and possibly upper) plates. The MEMS includes a flexure, a voltage generator, and a temperature sensor thermally coupled to the MEMS. The voltage generator is configured to produce a temperature compensated voltage in response to a thermal measurement performed by the temperature sensor (Spec. 1-2). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A diffractive light device (DLD) comprising: a substrate; a force plate disposed on said substrate, said force plate configured to produce an electrostatic force in response to an applied voltage; a pixel plate supported by a flexture adjacent to said force plate, wherein a position of said pixel plate is controlled by said electrostatic force and by said flexure coupled to said pixel plate to display a pixel of an image; a temperature sensor thermally coupled to said flexure, without affecting movement of said flexure, and outputting a thermal measurement indicative of a temperature of said flexure; and a circuit that generates and applies a temperature compensated voltage to said force plate in response to said thermal measurement produced by said temperature sensor. Appeal 2009-012811 Application 10/757,104 3 REFERENCES McCartney US 5,088,806 February 18, 1992 Mori US 5,903,251 May 11, 1999 Kouri US 6,847,737 B1 January 25, 2005 Naiki US 7,038,654 B2 May 2, 2006 Romo US 7,197,225 B2 March 27, 2007 Appellants’ Admitted Prior Art (“APA”). REJECTIONS Claims 1, 12, 13, 24, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over APA in view of Romo. Claims 2, 3, 5-8, 14-16, 18-21, 25, 26, 28, 29, 32, 33, 35-38, and 63 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over APA in view of Romo and McCartney. Claims 10, 11, 23, 30, and 39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over APA in view of Romo and Mori. Claims 4, 17, 27, and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over APA in view of Romo, McCartney, and Naiki. Claims 40, 42, 44-46, and 49-54 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McCartney in view of APA. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over McCartney in view of APA and Romo. Claim 43 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over McCartney in view of APA and Naiki. Claims 47 and 48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McCartney in view of APA and Mori. Appeal 2009-012811 Application 10/757,104 4 ISSUE Appellants argue, inter alia, that the Examiner erred in finding Appellants’ statement that “DLDs such as that illustrated in Figure 1 have traditionally been used” (Spec. ¶ [0023]) to be an admission that Figure 1 constitutes prior art (App. Br. 12-14). The Examiner finds that this statement, in combination with Appellants’ lack of evidence that Figure 1 constitutes the foundational work of Appellants, is properly interpreted as an admission of prior art and may be used in rejecting the claims (Ans. 23-24). Appellants’ contentions present us with the following issue: Does Appellants’ statement that “DLDs such as that illustrated in Figure 1 have traditionally been used” (Spec. ¶ [0023]) constitute an admission that Figure 1 is prior art? PRINCIPLES OF LAW “A] statement by an applicant during prosecution identifying certain matter not the work of the inventor as ‘prior art’ is an admission that the matter is prior art.” Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003) (citing In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975)). “W]here the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work.” Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650 (Fed. Cir. 1984). ANALYSIS The Examiner finds that Appellants’ statement, “DLDs such as that illustrated in Figure 1 have traditionally been used to produce a desired image” (Spec. ¶ [0023]), constitutes an admission of prior art. The Appeal 2009-012811 Application 10/757,104 5 Examiner notes that this statement appears in a discussion of Figure 1 and “the problems that are associated with the Figure 1 configuration,” and opines that “[t]his discussion . . . seems to be a very clear description of the relevant prior art and the problems associated with it” (Ans. 23). The Examiner also asserts that “Appellants have not met their burden to show that Figure 1 is Appellants’ ‘own work product’ (MPEP § 2129)” (Ans. 24). We find error in the Examiner’s finding, because it lacks a factual basis. Regardless of whether that which is illustrated in Figure 1 is Appellants’ foundational work, or the work of others, the Examiner has failed to establish that Figure 1 can be considered admitted prior art. If we assume arguendo that Figure 1 illustrates the work of others, paragraph [0023] contains no explicit admission that the particular device illustrated in Figure 1 is prior art. See Riverwood, 324 F.3d at 1354. If we assume instead that Figure 1 is Appellants’ foundational work, the Examiner has no statutory basis under which Appellants’ paragraph [0023] qualifies as prior art against the appealed claims. See Reading & Bates, 748 F.2d at 650. Note that in either case, the Examiner’s opinion that a section of the Specification “seems to be a very clear description of the relevant prior art” (Ans. 23), without more, is of no weight in determining whether an admission of prior art is present. The rejection of every appealed claim rests in some fashion upon the Examiner’s erroneous finding that Appellants admitted that Figure 1 constitutes prior art. We therefore find that the Examiner erred in rejecting the claims under appeal. We will not sustain the Examiner’s § 103rejection of claims 1-8, 10-21, 23-54, and 63. Appeal 2009-012811 Application 10/757,104 6 CONCLUSION Appellants’ statement that “DLDs such as that illustrated in Figure 1 have traditionally been used” does not constitute an admission that Figure 1 is prior art. DECISION The Examiner’s decision rejecting claims 1-8, 10-21, 23-54, and 63 is reversed. REVERSED pgc/llw