Ex Parte Dunn et al

Patent Trial and Appeal Board

Oct 31, 2017

12706602 (P.T.A.B. Oct. 31, 2017)

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.
12/706,602 02/16/2010 William Dunn MAN2241-049C 1956
8698 7590 11/02/2017
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
LEE, GENE W
ART UNIT PAPER NUMBER
2692
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
standley docketing @ standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM DUNN and DAVID WILLIAMS
Appeal 2017-002932
Application 12/706,6021
Technology Center 2600
Before JASON V. MORGAN, BARBARA A. BENOIT, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 8—16, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “maintaining similar optical performance
over two electronic displays” using a “color light sensor . . . placed in front
of the viewable area of each electronic display.” Spec. Abstract.
1 According to Appellants, the real party in interest is Manufacturing
Resources International, Inc. App. Br. 2.
Appeal 2017-002932
Application 12/706,602
Illustrative Claim
Claim 8 is illustrative and reproduced below with the limitations at
issue emphasized:
8. A system for maintaining similar optical performance over
multiple electronic displays, the system comprising:
a first electronic display and a second electronic display
placed adjacent to one another, each display having
an electrical backplane,
a network interface in electrical communication
with the backplane; and
a display controller assembly in electrical
communication with the backplane and a video input, said
display controller adapted to transmit image data along
with a watermark to the display to simultaneously display
image data and the watermark;
a first color light sensor associated with the first electronic
display, the first color light sensor in electrical communication
with the backplane of the first electronic display and positioned
such that photodiodes of the first color light sensor are in front of
the watermark of the first display;
a second color light sensor associated with the second
electronic display, the second color light sensor in electrical
communication with the backplane of the second electronic
display and positioned such that photodiodes of the second color
light sensor are in front of the watermark of the second display;
and
a remote device in electrical communication with the
network interface of each display that receives the optical
property data of said first color light sensor and the optical
property data of said second color light sensor to enable a
comparison of the data from the first and second color light
sensors.
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Rejections
Claims 8—11, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Brabander et al. (US 2005/0184983 Al; Aug. 25, 2005),
Milner (US 2009/0273568 Al; Nov. 5, 2009), Kupper et al. (US
2008/0246871 Al; Oct. 9, 2008), and Ven de Van (US 2002/0190972 Al;
Dec. 19, 2002). Final Act. 2.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over
Brabander, Milner, Kupper, Ven de Van, and Phillips et al. (US 7,480,042
Bl; Jan. 20, 2009). Final Act. 6.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious
over Brabander, Milner, Kupper, Ven de Van, and Johnson et al. (US
6,553,336 Bl; Apr. 22, 2003). Final Act. 7.
ISSUE
Did the Examiner err in finding a person of ordinary skill in the art
would have been motivated to combine Brabander and Kupper for purposes
of positioning a sensor “in front of’ the display, as recited in claim 8?
ANALYSIS
A) The Prior Art Kupper and Brabander
Claim 8 recites that photodiodes of the sensors are “in front of’ the
watermarks of the displays. The Examiner relies on Kupper for teaching or
suggesting a sensor “in front of’ the display. Final Act. 4. Figure 2 of
Kupper is reproduced below.
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Kupper’s Figure 2 is a cross-section of an image display unit, which
depicts front frame 2, display 7, and sensor device 6 (the latter including
mounting arm 5 and sensor 9). Kupper || 12—14.
In Figure 2, front frame 2 is at the bottom, above which is placed
display 7. Kupper 114. Thus, an observer looking at the display would be
at the top of Figure 2 looking down. Mounting arm 5 is fixed to front frame
2 with the arm extending slightly over display 7. Id. At the end of mounting
arm 5 (i.e., above display 7) is sensor 9. Id. The Examiner therefore finds
Kupper’s sensor 9 is “in front of’ display 7. Final Act. 4.
The Examiner proposes applying Kupper’s sensor placement to a
second reference Brabander. According to Appellants, Brabander “places
the light sensor behind the display, and uses a light guide [34] to direct the
light from the front of the display, around to the back where the light sensor
[22] is located.” App. Br. 7. Figure 4 of Brabander, reproduced below,
shows an example of this.
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In Figure 4 of Brabander, light from the active display area 6 travels
upward toward an observer. See Brabander | 60. At the right side of active
display area 6 is a sensor unit 10, which includes a light guide 34. Id. H 61,
73. Shaped like an upside-down hook, the light guide 34 takes in light from
an aperture 21 that is above the active display area 6 and redirects that light
around two comers to a sensor 22 located to the right of and below the active
display area 6. Id. 64, 73. Thus, in Figure 4, Brabander’s sensor is not
“in front of’ the display.
Appellants contend a person of ordinary skill in the art would not have
been motivated to modify Brabander with Kupper to put the sensor “in front
of’ the display. App. Br. 12—20; Reply Br. 3—7. We address each of
Appellants’ arguments below.
B) Appellants argue the modification would not improve Brabander
Appellants argue modifying Brabander to put the sensor in front of the
display as in Kupper “would not ‘improve’ the Brabander device” because it
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would “obstruct more of the viewable image”; “increase^ the thickness of
the display”; and “expose the light sensor to a large amount of ambient light,
which interferes with the light of the display.” App. Br. 12—14. Appellants
cite to Brabander for these assertions, but Brabander does not support
Appellants’ broad statements. At best, the cited portions of Brabander
describe minimizing thickness and ambient light as desirable features
provided by a “preferred” embodiment. E.g., Brabander || 28 (“According
to a preferred embodiment”), 65 (“Preferably”), 76 (“In this case [of only
Figure 5]”), 78 (discussing further modifications only in Figure 6).
Thus, the citations relied on by Appellants “are all couched in terms
of specific embodiments, not general requirements of the invention.”
Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d 1406, 1412 (Fed.
Cir. 2016). However, “the fact that a specific embodiment is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quotation omitted).
Unlike the preferred embodiments, other embodiments disclosed in
Brabander lack the features identified by Appellants, such as the attenuation
of ambient light. For example, Brabander discloses that its “first
embodiment has the disadvantage that.... stray light or ambient light can
enter the light guide 34.” Brabander 170; see also Brabander claims 14—15
(separately claiming a contact that “is light tight for ambient light” and “is
not light tight for ambient light”) (emphasis added).2
2 We also note Kupper discloses using “a sealing lip 11 to shield the sensor 9
from ambient light.” Kupper 114. Thus, Kupper does address ambient
light, merely in a different way.
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Similarly for thickness, claim 17 of Brabander depends from claim 1
and further recites the sensor unit’s housing stands out “by a distance of 5
mm or less.” This creates a presumption that the distance in claim 1 is not
so limited. Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d
1374, 1380 (Fed. Cir. 2006) (‘“claim differentiation’ refers to the
presumption that an independent claim should not be construed as requiring
a limitation added by a dependent claim”); see also Brabander | 65.
Appellants also do not sufficiently explain their reasoning. For
example, if a certain size of the screen must be measured (e.g.,
“6 mmx4 mm” in Brabander 129), it is not clear why a sensor of that size
would obstruct any more of the display than a light guide of the same size.
Accordingly, we are not persuaded by Appellants’ argument that the
combination does not “improve” Brabander.
C) Appellants argue the combination is not “simpler ” and “cheaper ”
Appellants further argue Brabander’s design is “simpler” and
“cheaper” because (1) the sensor can be placed anywhere; (2) the aesthetics
of the sensor and its attachment do not need to be considered because the
sensor cannot be seen; and (3) moving Brabander’s sensor in front of the
display would require increased thickness of the display, which would
increase costs for the housing, packaging, and shipping. App. Br. 15—16.
We agree with the Examiner, however, that “the mere absence of a light
guide makes the construction simpler” and “reduces the cost” “insofar as one
does not require light guides to construct the device.” Ans. 7, 9. We further
agree with the Examiner that if visibility of components was a concern,
“Appellants ignore the fact that the light guide employed by Brabander is
visible to the user.” Id. at 8. We also agree with the Examiner that any
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differences in shipping, packaging, or housing costs “would likely be
minimal and vastly outweighed by the cost of light guides.”3 Id.
At best, Appellants have identified readily understood and predictable
tradeoffs between the sensor locations of Brabander versus Kupper. Ans. 8—
9. “The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000). Put another way, “a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006). Thus, we are not persuaded by Appellants’ argument
that Brabander alone is “simpler” and “cheaper.”
D) Appellants argue the modified device would be unsatisfactory for
Brabander’s intended purpose
Appellants argue the Examiner’s modification “makes the Brabander
display no longer satisfactory for its intended purpose of attenuating ambient
light.” App. Br. 17. As discussed above, though, we agree with the
3 We note that eliminating the sensor from the side or back of the display
also may reduce the product’s dimensions in those directions, which would
reduce costs under Appellants’ logic. Such reduced costs for those
dimensions may offset any increased costs from the front of the display.
This underscores that many changes entail straightforward tradeoffs.
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Examiner that “[ajmbient light attenuation is merely a feature” and “not the
intended purpose itself.” Ans. 10; see also Reply Br. 3.4
E) Appellants argue the modification changes Brabander’s principle
of operation
Appellants further argue the modifications would change Brabander’s
principle of operation. Ans. 16—18; Reply Br. 3—5. Appellants rely on
MPEP § 2143.01 (VI), which in turn summarizes and cites exclusively to In
re Ratti, 270 F.2d 810, 813 (CCPA 1959). App. Br. 16; Reply Br. 5. Yet
both Ratti and the Federal Circuit’s more recent precedent make clear that
“changing a principle of operation” is much narrower than Appellants assert.
a. Whether the Examiner’s Proposed Modification Changes
a Principle of Operation of the Prior Art
The first question is whether the Examiner’s proposed modification
actually is “a change in the basic principles ... to operate.” Ratti, 270 F.2d
at 813. Given the facts of the case here and more recent precedent, we are
not persuaded that the Examiner’s proposed modification changes
Brabander’s principle of operation.
Appellants argue that “use of the light guide 34 and aperture 21 is
Brabander’s contribution to the art and its principle of operation.” Reply Br.
4. Brabander’s light guide, however, is merely a “design feature” of the
preferred embodiments, not a principle of operation. Ans. 11. For example,
Brabander discloses “[t]he optical sensor unit of the present invention
preferably comprises a light guide between the optical aperture and the light
4 Even if ambient light attenuation were Brabander’s purpose, paragraph 14
of Kupper discloses “a sealing lip 11 to shield the sensor 9 from ambient
light.” Thus, Kupper accomplishes the same purpose by a different means.
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sensor.” Brabander 126 (emphasis added). Similarly, claim 1 does not
require a light guide, which is instead added by dependent claim 4 (“the light
sensor furthermore comprises a light guide between the optical aperture and
the light sensor”). Appellants’ interpretation requiring a light guide in all
embodiments would render dependent claim 4 superfluous, which is
contrary to claim differentiation’s “presumption that an independent claim
should not be construed as requiring a limitation added by a dependent
claim.” Curtiss-Wright, 438 F.3d at 1380. Thus, a light guide is a preferred
embodiment of Brabander, not its principle of operation.
Despite this overstatement of the necessity of the light guide, we agree
with Appellants’ more general statement that one teaching of Brabander is
“to relocate the light” using aperture 21. Ans. 17. For example, Brabander’s
claim 1 recites “the optical aperture is located in the active display area and
the light sensor is located outside the active display area.” See also
Brabander claim 18. Thus, the claims of Brabander require that the sensor
not be in front of the active display area, thereby conflicting with the claims
of the present application. Brabander’s specification, however, elsewhere
discloses this as only a preferred embodiment: “Preferably, the step of
making optical measurements furthermore comprises a step of transmitting
the light emitted from the active display area from within the active display
area to outside the active display area.” Brabander 145 (emphasis added).
Thus, like a light guide, redirecting light is merely a preferred embodiment,
not Brabander’s principle of operation.
Even without the statements about being preferred embodiments,
Brabander’s redirecting of light is not its principle of operation under
Federal Circuit precedent. In the Federal Circuit’s most recent precedent
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addressing Ratti, the Federal Circuit found there was no change to the prior
art’s “principle of operation” despite the Examiner’s proposed modification
contradicting the claims of the prior art. In re Mouttet, 686 F.3d 1322,
1331—32 (Fed. Cir. 2012). In Mouttet, the applicant (Mouttet) argued the
Examiner’s proposed modification changed the principle of operation of the
prior art (Falk). Id. at 1331. Mouttet’s application taught using electronic
wires whereas the prior art Falk taught using optical paths. Id. at 1331—32.
The prior art Falk repeatedly emphasized that it was directed to an “optical”
implementation, such as explaining “[t]he invention relates generally to
optical information processing, and in particular, to an optical crossbar
apparatus.” Falk 1:6—8 (US 5,249,144; Sept. 28, 1993) (emphasis added).
The specification of Falk expressly emphasized the distinction between
“optical” and “electronic” implementations: “There is a fundamental
difference between optical circuits, in which the information carriers are
photons, and electronic circuits, where the carriers are electrons. . . . This
means that in optical devices there exist interconnect possibilities that do not
exist with electronic hardware.” Falk 1:11—17. Claim 1 of Falk even recited
the word “optical” fifteen times. Thus, claim 1 of Falk required an optical
implementation.
The Federal Circuit, however, agreed with the Board that “eliminating
the optical components of Falk would not destroy its principle of operation.”
Mouttet, 686 F.3d at 1332.
As the examiner found, the type of circuitry used is the main
difference between Mouttet’s invention, which is based on
electrical conductivity, and Falk’s invention, which is based on
optical paths. But this difference does not affect the operability
of Mouttet’s broadly claimed device—a programmable
arithmetic processor. The Board found, and we agree, that the
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principle of operation of Falk’s computing device is its high level
ability to receive inputs into a programmable crossbar array and
processing the output to obtain an arithmetic result. . . . Stated
differently, the examiner saw nothing in the programming and
processing of junction states in Falk that is unique to its optical
implementation, and Mouttet has not shown otherwise. Thus, the
Board’s determination that the difference in the circuitry—
electrical versus optical—does not affect the overall principle of
operation of a programmable arithmetic processor was supported
by substantial evidence.
Mouttet, 686 F.3d at 1332. Thus, the Federal Circuit agreed with the Board
that Falk’s principle of operation was a “high level ability” and not limited
to a specific “optical” implementation, despite Falk’s claims requiring an
optical implementation and its background contrasting “optical” and
“electronic” implementations.
Here, the present application is analogous to that in Mouttet.
Appellants argue Brabander’s principle of operation is redirecting light
(App. Br. 17), but the Examiner finds “the device here is not merely the light
guide configuration, but is the ‘system and method for real time correction
of light output and/or colour of an image displayed on a display device.’”
Ans. 10 (quoting Brabander Abstract). We agree with the Examiner that
“‘principle of operation’ refers to something more fundamental than a
particular design feature, even if that design feature is described favorably.”
Ans. 10. In the Examiner’s proposed combination, the same sensor detects
the same light from the same display. The only thing that would change is
the location of the sensor due to the omission of Brabander’s light guide.
Thus, just as in Mouttet, the minor implementation difference in location of
the sensor does not affect the “high level” or “overall” principle of operation
of using a sensor to detect light from a display.
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Therefore, we are not persuaded by Appellants’ argument that the
Examiner’s modification changes Brabander’s principle of operation.
b. A Change in the Prior Art’s Principle of Operation Is
Merely One Factor for Motivation to Combine
i. Legal Background
Even if the Examiner’s proposed modification did change the prior
art’s principle of operation, that does not preclude obviousness. The
decision in Ratti never states that changing a prior art’s principle of
operation is dispositive of non-obviousness. Rather, any change to a prior
art reference’s principle of operation, when present, is one factor in whether
a person of ordinary skill in the art would have been motivated to make that
modification.
Ratti involved claims to a shaft seal with a “resiliently deformable
material” pushed outward by “spring fingers.” 270 F.2d at 810. The prior
art Chinnery taught a shaft seal with a “stiffened” rubber “reinforced” by a
“stiffened” sheet metal casing. Id. at 811—12. A second prior art reference
Jepson taught a coffee-maker gasket with “spring fingers” to push a rubber
ring outward. Id. at 812. The rejection sought to replace Chinnery’s “sheet
metal reinforcing member” with Jepson’s spring fingers. Id.
In Ratti, the Court analyzed multiple factors affecting obviousness.
First, the Court found Chinnery’s stiffened rubber was incapable of
functioning as the claimed “resilient” material:
Considering the incompressible nature of the rubber in the
sealing element disclosed in Chinnery et al., its stiffening and
reinforcement by the cylindrical sheet metal member, and its
‘interference press fit’ in the bore, it seems clear to us that the
Chinnery et al. seal cannot function in the manner of appellant’s
seal.
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Ratti, 270 F.2d at 813. Second, the Court found the modification with
Jepson would not work because Jepson’s spring fingers could not push
Chinnery’s stiffened rubber:
Now, as to the contention that Jepson would suggest inserting a
set of spring fingers, the resilient element of Chinnery et al. is
forced so tightly into the bore and is so ‘stiffened’ that the use of
the resilient spring fingers of Jepson could not possibly increase
the resilient deformation of the Chinnery et al. seal in the
direction of the bore or increase the sealing engagement of the
seal with the bore.
Id. Third, based on these findings, the Court found
[t]he teaching of the Chinnery et al. patent points away from the
addition of any spring element.
Id. Fourth, the Court found Jepson was not analogous art to a shaft seal
because the Court found
nothing in the disclosure of Jepson’s coffee maker gasket to
suggest that any part of it has applicability to shaft seals. The
two arts are at least somewhat remote from each other even if
they both involve sealing.
Id. Thus, neither Chinnery alone nor Jepson alone provided motivation for
the proposed modification.
The Court next turned to “the combination of Jepson with Chinnery”
and held the combination was not a proper ground of rejection:
This suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in
Chinnery et al. as well as a change in the basic principles under
which the Chinnery et al. construction was designed to operate.
Ratti, 270 F.2d at 813.
Finally, after addressing all these findings, the Court reached its
conclusion of non-obviousness:
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Once appellant had taught how this could be done, the redesign
may, by hindsight, seem to be obvious to one having ordinary
skills in the shaft sealing art. However, when viewed as of the
time appellant’s invention was made, and without the benefit of
appellant’s disclosure, we find nothing in the art of record which
suggests appellant’s novel oil seal as defined in claims 1,4 and 7.
Ratti, 270 F.2d at 813.
Thus, the Court in Ratti did not consider “changing the principle of
operation” in isolation. Instead, the Court determined that (1) one prior art
reference taught away, (2) a second prior art reference was not analogous art
and did not suggest it would apply to the art at hand, (3) the combination
would not work, (4) the combination would require substantial
reconstruction and redesign, and (5) the combination would require a change
in the basic principles under which the prior art was designed to operate.
Given the totality of these findings, the Court found a person of ordinary
skill in the art would not have been motivated to modify Chinnery with
Jepson without the benefit of hindsight. Thus, Ratti shows that “changing a
principle of operation,” when present, is one factor affecting motivation to
combine.
Evaluating “changing a principle of operation” as part of a motivation
to combine analysis is consistent with more recent Federal Circuit case law.
E. g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825
F. 3d 1373, 1380 (Fed. Cir. 2016) (noting “principle of operation” arguments
in a section on “Motivation to Combine”).5 Similarly, the section of the
5 See also Smartdoor Holdings, Inc. v. Edmit Indus., Inc., No. 2016-2152,
2017 WL 3911800, at *3 (Fed. Cir. Sept. 7, 2017) (unpublished) (discussing
“principle of operation” in addressing an argument on “motivation to
combine”); Plas-PakIndus., Inc. v. Sulzer Mixpac AG, 600 F. App’x 755,
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MPEP cited by Appellants is a sub-section of § 2143.01, which is titled
“Suggestion or Motivation To Modify the References.”
Analyzing “changing a principle of operation” as merely one factor
affecting a motivation to combine also is consistent with precedent. For
example, in In re Umbarger, the Court of Customs & Patent Appeals said:
It is true that such substitution omits the circuit portion which
Horsch apparently regarded as his contribution to the art along
with such advantages as it might provide. However, the modified
apparatus is clearly obvious in view of the prior art .... In re
Ratti [and two other cases] . . . clearly are not authority for
holding a rejection improper under such circumstances.
In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969). Thus, the Court held
Ratti did not preclude obviousness even though the proposed modification
omitted the prior art’s “contribution to the art.” Such omission was one
factor, but the totality of the evidence must be considered. More recently,
the Federal Circuit looked to “the antithetical principles of operation and the
absence of any teaching or suggestion to combine these prior art devices'1'’ in
concluding it would not have been obvious for a person of ordinary skill to
make the combination. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d
1044, 1052 (Fed. Cir. 1988) (emphasis added). If changing the principle of
operation was dispositive, there would have been no need to look to other
factors such as “any teaching or suggestion to combine.”
Treating “changing a principle of operation” as merely one factor also
is consistent with the Federal Circuit’s treatment of obviousness more
generally, in which “patentability is determined on the totality of the
759 (Fed. Cir. 2015) (unpublished) (“Such a change in a reference’s
‘principle of operation’ is unlikely to motivate a person of ordinary skill to
pursue a combination with that reference.”).
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record.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (rejecting a “rigid
approach” in determining obviousness); In re Piasecki, 745 F.2d 1468, 1471
(Fed. Cir. 1984) (“All the evidence on the question of obviousness must be
considered.”). For example, “obviousness must be determined in light of all
the facts, and there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness.” Medichem, 437 F.3d at 1165.
Therefore, consistent with Ratti and subsequent case law, a
modification changing a principle of operation of a prior art reference, when
present, is one factor in determining whether a person of ordinary skill in the
art would have been motivated to make that modification. Changing a
principle of operation is not necessarily dispositive of non-obviousness.
ii. Application to Brabander and Kupper
Here, we agree with the Examiner that even if the Examiner’s
proposed modification of Brabander did change the principle of operation of
Brabander, the modification still would have been obvious. We agree with
the Examiner that “[t]he specific light attenuation and light guide feature are
not required for operation of the monitoring system.” Ans. 10. “Kupper
clearly teaches that it is possible to locate a sensor directly in front of the
display ... for an analogous purpose as the device taught by Brabander.” Id.
at 11. Thus, “it would have been obvious to one of ordinary skill to modify
the design of Brabander by a more direct design such as that of Kupper in
order to reduce cost, acknowledging that a certain level of performance
would be lost as a tradeoff. This type of tradeoff is a normal part of design.”
Ans. 9. Therefore, “modifying the teaching of Brabander by this teaching of
Kupper is an application of a known technique to a comparable device to
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produce predictable results for one of ordinary skill in the art.” Final Act. 4.
Appellants have not sufficiently addressed the Examiner’s findings that any
tradeoffs between the two sensor locations were known and predictable.
Notably, none of the other factors in Ratti are present in this case.
First, Brabander teaches light guides and attenuating ambient light may be
preferred, but nothing in Brabander rises to the level of teaching away from
placing the sensor in front of the display. DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference
does not teach away, however, if it merely expresses a general preference for
an alternative invention but does not criticize, discredit, or otherwise
discourage investigation into the invention claimed.”) (quotation omitted).
As the Federal Circuit has said, “just because better alternatives exist in the
prior art does not mean that an inferior combination is inapt for obviousness
purposes.” Mouttet, 686 F.3d at 1334. Second, both Brabander and Kupper
are analogous art in the same field of endeavor as the present application. In
re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017). Third, Appellants do
not proffer persuasive evidence suggesting that the combination would have
been unlikely to be productive for the result sought by Appellants. See
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012);
Mouttet, 686 F.3d at 1334 (finding no teaching away when the appellant
“fails to cite any reference suggesting that the claimed invention would be
unlikely to work using electrical circuitry”).6 Rather, the Examiner finds the
combination provides benefits of lower cost and simplicity, and Appellants
6 See also In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011)
(unpublished) (declining to apply Ratti because “[h]ere, however, the Board
determined that Mr. Gardner had not established that Sprague’s fast charge-
discharge battery could not be used in Ellers’ system”).
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Application 12/706,602
have not identified any unexpected benefits from the claimed invention
having the sensor in front of the display. Finally, contrary to Appellants’
argument that the proposed modification would require “substantial
reconstruction” and “necessitate a complete redesign” (Reply Br. 5), both
Kupper and Brabander teach the sensor should be removably attached to the
display and thus the two sensor units can be easily swapped. Kupper || 9
(“the fixation structure is made of a magnetic material or takes the form of a
Velcro strip fastener or a snap-on connection, e.g. to ensure simple mounting
and removal of the sensor device”), 7 (“Easy mounting and removal of the
sensor device”), 8 (“units that are not equipped with a luminance detection
device can be retrofitted with such a sensor device by simply mounting”);
Brabander | 63 (disclosing the sensor unit is “removably fixed” and
“interchangeable”). Thus, the totality of circumstances in Ratti is not
present here.
Instead, just as in Umbarger, even if the Examiner’s modification did
omit Brabander’s “contribution to the art along with such advantages as it
might provide,” that alone is insufficient to overcome the obviousness of
replacing Brabander’s sensor unit with that of Kupper. 407 F.2d at 430.
We thus agree with the Examiner that even if Brabander’s
contribution to the art were its light guide redirecting light, a person of
ordinary skill in the art still would have recognized that the sensor units of
Brabander and Kupper were comparable and interchangeable devices for
predictable tradeoffs in cost, simplicity, and performance.
Accordingly, we sustain the Examiner’s rejection of claim 8, and
claims 9-16, which Appellants do not argue separately. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
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DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 8—16.
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).
AFFIRMED
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