Ex Parte Dunn et alDownload PDFPatent Trial and Appeal BoardOct 31, 201712706602 (P.T.A.B. Oct. 31, 2017) Copy Citation 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. 2 Appeal 2017-002932 Application 12/706,602 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. 3 Appeal 2017-002932 Application 12/706,602 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. 4 Appeal 2017-002932 Application 12/706,602 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 5 Appeal 2017-002932 Application 12/706,602 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. 6 Appeal 2017-002932 Application 12/706,602 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 7 Appeal 2017-002932 Application 12/706,602 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. 8 Appeal 2017-002932 Application 12/706,602 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. 9 Appeal 2017-002932 Application 12/706,602 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 10 Appeal 2017-002932 Application 12/706,602 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 11 Appeal 2017-002932 Application 12/706,602 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. 12 Appeal 2017-002932 Application 12/706,602 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. 13 Appeal 2017-002932 Application 12/706,602 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: 14 Appeal 2017-002932 Application 12/706,602 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, 15 Appeal 2017-002932 Application 12/706,602 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.”). 16 Appeal 2017-002932 Application 12/706,602 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 17 Appeal 2017-002932 Application 12/706,602 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”). 18 Appeal 2017-002932 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). 19 Appeal 2017-002932 Application 12/706,602 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 20 Copy with citationCopy as parenthetical citation