Ex Parte Fisher et al

Patent Trial and Appeal Board

Oct 7, 2016

13591400 (P.T.A.B. Oct. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/591,400 08/22/2012
26587 7590 10/11/2016
MCNEES WALLACE & NURICK LLC
100 PINE STREET
P.O. BOX 1166
HARRISBURG, PA 17108-1166
FIRST NAMED INVENTOR
Mark Eliott FISHER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
31767-0005-01 1048
EXAMINER
BEARD, CHARLES LLOYD
ART UNIT PAPER NUMBER
2616
MAILDATE DELIVERY MODE
10/11/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ELIOTT FISHER and
FREDERIC FRANK OPSOMER
Appeal2015-005003
Application 13/591,400
Technology Center 2600
Before JON M. WRGOVAN, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify TAIT Technologies, BVBA as the real party in interest.
(App. Br. 1.)
Appeal2015-005003
Application 13/591,400
STATEMENT OF THE CASE
Appellants' invention is directed to a three-dimensional display
device. (Spec. i-f 1.) Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A three-dimensional display device, comprising:
a rotatable portion; and
a plurality of light emitting elements connected to the rotatable
portion;
wherein rotation of the rotatable portion rotates the light
emitting elements, thereby displaying an illusion of a three-
dimensional image corresponding to a sequence of segmented
images.
REJECTIONS
Claims 1, 2, 4, 7, 20, and 21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination ofYasunaga (US 2011/0304614 Al;
published Dec. 15, 2011) and Otsuka et al. (US 2010/0259599 Al; published
Oct. 14, 2010) ("Otsuka"). (Final Act. 12-25.)
Claims 3, 5, 6, 12, and 14--17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Y asunaga, Otsuka, and Yukich (US
2009/0303313 Al; published Dec. 10, 2009). (Final Act. 25-38.)
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Y asunaga, Otsuka, and Kit (US
2007 /0228999 Al; published Oct. 4, 2007). (Final Act. 38--42.)
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Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Y asunaga, Otsuka, and Tachi et al. (US
2008/0043014 Al; published Feb. 21, 2008) ("Tachi"). (Final Act. 42--44.)
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Yasunaga, Otsuka, and Fenq Lin (TW M4089 l Ul ).
(Final Act. 45--47.)
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Y asunaga, Otsuka, and Latta et al. (US
2013/0044129 Al; published Feb. 21, 2013) ("Latta"). (Final Act. 47-50.)
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Y asunaga, Otsuka, Herrmann et al. (US
2009/0304149 Al; published Dec. 10, 2009) ("Herrmann") and Streid et al.
(US 2005/0041219 Al; published Feb. 24, 2005) ("Streid"). (Final Act. 50-
53.)
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Y asunaga, Otsuka, Herrmann, Streid, and Latta.
(Final Act. 53-54.)
ANALYSIS
After considering of each of Appellants' arguments, we agree with the
Examiner. We refer to and adopt the Examiner's findings and conclusions
as set forth in the Examiner's Answer and in the action from which this
appeal was taken. (Ans. 4---63; Final Act. 4--54). Our discussions here will
be limited to the following points of emphasis.
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Application 13/591,400
Claims 1, 2, 4, 7, 20, and 21
Issue 1: Did the Examiner err in combining Yasunaga and Otsuka?
Appellants contend incorporating Otsuka' s teaching of generating a
three-dimensional/stereoscopic effect based on a sequence of images into the
display device of Y asunaga would require extensive modification to
Yasunaga. (App. Br. 7-8; Reply Br. 3.) Specifically, Appellants contend:
Here, the way the Y asunaga device operates would need
to be changed. If segmented images were to be used, the entire
interaction between the light emission array and the display
controller which performs emission control on the light
emission to form the image would need to be modified and/ or
removed. A stereoscopic screen would need to be added so that
any projected image would be seen. The simplicity of the
operation of the Y asunaga device would be destroyed.
Moreover, if segmented images were added to the device of
Y asunaga, the light emission element array and the display
controller would not perform the same function and
consequently, the operation of the Yasunaga device \'l/ould
change.
(App. Br. 7; see also App. Br. 8.) Appellants argue such an extensive
amount of modification is not suggested in the cited art, and is borne from
the use of impermissible hindsight. (Id.; see Reply Br. 3-5.)
We are not persuaded by Appellants' arguments, which are premised
on a "physical" or "bodily" incorporation of limitations of one reference into
the other. However, this is not the standard. See In re Sneed, 710 F .2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."). The relevant inquiry is whether the claimed subject matter would
have been obvious to those of ordinary skill in the art in light of the
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combined teachings of those references. See Jn re Keller, 642 F.2d 413, 425
(CCP A 1981 ). "Combining the teachings of references does not involve an
ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968
(CCP A 1973). Rather than express obviousness as the physical
incorporation of a structure from one reference into the structure of another
reference, the prior art should be viewed as a combination of teachings from
different sources, and the use of those teachings by one of ordinary skill in
the art. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art.)
Here, the Examiner has presented two references, Y asunaga and
Otsuka. Both references are directed to the three dimensional display of an
image. (Yasunaga Abstract, i-fi-122, 87, Fig. 1; Otsuka Abstract, i177 .)
Y asunaga teaches a rotatable portion, a plurality of light emitting elements
connected to the rotatable portion, wherein rotation of the rotatable portion
rotates the light emitting elements, thereby displaying an illusion of a three-
dimensional image. (Y asunaga Abstract, i-fi-1 22, 87, Fig. 1; see Final Act.
12-13.) Otsuka teaches an image display device including a plurality of
image segments, and hence, a three-dimensional image corresponding to a
sequence of image segments. (Otsuka i-fi-177, 79, 108, Figs. 2-3, 14; see
Final Act. 14.)
We find these teachings to be properly combinable. "Common sense
teaches ... that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
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teachings of multiple patents together like pieces of a puzzle" since the
skilled artisan is "a person of ordinary creativity, not an automaton." Id. at
420-21. We further find that the Examiner has articulated how the claimed
features are met by the proposed combination of the reference teachings with
some rational underpinning, consistent with the guidelines stated in KSR.
(See Final Act. 15.) Appellants have not provided persuasive evidence that
combining such teachings was "uniquely challenging or difficult for one of
ordinary skill in the art," or that such a combination "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
\Ve also are not persuaded of error by Appellants' argument that the
Examiner's proposed combination of Yasunaga and Otsuka is improper
because it is based on the irnpennissible use of hindsight (App. Br. 8). As
discussed supra, the Examiner provides articulated reasoning with some
rational underpinning to suppmi the obviousness determination. We note
Appe11ants' argmnent does not persuasively address the substance of the
Examiner's rationale, but rather relies on argurnents based on the bodily
incorporation of Otsuka into Yasunaga. l\foreover, Appellants do not
identify any knowledge relied upon by the Examiner that was gleaned only
from Appellants' disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (C.C.P.A. 1971).
Accordingly, we are not persuaded the Examiner erred in combining
Yasunaga and Otsuka. We therefore sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of independent claims 1and20, and dependent claims 2,
4, 7, and 21, which were not separately argued.
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Application 13/591,400
Claims 3, 5, 6, 12, and 14-17
Issue 2: Did the Examiner err in combining Yasunaga, Otsuka, and
Yuki ch?
Appellants contend "there is absolutely no motivation to add the
teaching Yukich to the combination of Yasunaga in view of Otsuka other
than blatant hindsight. The only suggestion for providing this modification
comes from Appellants' own disclosure." (App. Br. 9.)
We are not persuaded by Appellants' arguments for substantially the
same reasons as set forth supra with respect to Issue 1, particularly that
Appellants have not persuasively addressed the Examiner's articulated
rationale. We determine the Examiner's articulated reasoning (Final Act.
25-38) supports a conclusion of obviousness. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). By not addressing the Examiner's reasoning,
Appellants have not persuasively shown error. See id. (Discussing how, if a
prima facie case is presented, "the burden of coming forward with evidence
or argument shifts to the applicant.").
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of dependent claims 3, 5, 6, 12, and 14-17.
Claims 8 and 9
Issue 3: Did the Examiner err in combining Y asunaga, Otsuka, and
Kit?
Appellants contend ''[ o ]ne of ordinary skill in the art in stereoscopic
images display device would not look to a reference directed to an energy
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saving device for an LED lamp mounted in an existing fixture for a
fluorescent lamp where the ballast is removed or bypassed." (App. Br. 9----
10.) Appellants forther contend:
[T]he Examiner has not provided a teaching or
suggestion in Kit that would indicate the desirability of
incorporating into Yasunaga one or more protruding members
rigidly or flexibly secured to a rotatable portion as taught by
Kit, nor has the Examiner cited any passage in Kit that would
indicate that the one or more protn1ding rnembers rigidly (or
flexibly) secured to a rotatable portion taught by Kit can be
used in the Yasunaga device.
(Id.) Appellants fhrther contend "the Examiner has ernployed impermissible
hindsight." (Id.)
\Ve are not persuaded by _.Appellants' arguments, which do not
persuasively address the rationale as articulated by the Examiner. VVe note
Appellants again raise arguments based upon bodily incorporation of the
references, which we do not find persuasive for the same reasons as set fmih
supra with respect to Issue 1. l\t1oreover, the proper inquiry to determine
obviousness is not whether there is some suggestion or motivation explicitly
stated in the references thernselves, but whether the Examiner has articulated
adequate reasoning based on a rational underpinning to explain why a person
of ordinary skill in the art would have been led to combine Y asunaga,
Otsuka, and Kit. See KSJ?., 440 U.S. at 418. We determine the Examiner's
articulated reasoning (Final Act. 38-40) supports a conclusion of
obviousness. l\t1oreover, we are not persuaded by Appellants' hindsight
argument for the same reasons as set forth supra with respect to Issue 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of dependent claims 8 and 9.
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Claim 1 ()
Issue 4: Did the Examiner eff in combining Yasunaga, Otsuka, and
Tachi?
Appellants contend "[t]he only suggestion for this cmnbination comes
from Appe11ants' own disclosure. This is again nothing more than
hindsight." App. Br. 10----1 L
vVe are not persuaded by Appellants' arguments for substantially the
same reasons as set forth supra with respect to Issues L 2, and 3. We
determine the Examiner's articulated reasoning (Final Act. 42-44) supports
a conclusion of obviousness. I\1oreoveri we are not persuaded by
_.Appellants' hindsight argument for the sarne reasons as set forth supra with
respect to Issue 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of dependent claim 10.
Clairn 11
Issue 4: Did the Exarniner err in cmnbining Yasunaga, Otsuka, and
Fenq-Lin?
Appellants argue "[t]here is absolutely no reason that one of ordinary
skill in the art would be making changes to the Y asunaga light array 101
which has a predetermined shape (see paragraph [0089]) absent hindsight.
Such change in Y asunaga would change the principle and operation of
Yasunaga." (App. Br. 11-12.)
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We are not persuaded by Appellants' arguments for substantially the
same reasons as set forth supra with respect to Issues 1, 2, and 3. Appellants
provide no evidence in support of their position and do not address the
rationale articulated by the Examiner. Rather, Appellants' arguments
constitute little more than attorney argurnent and a conclusory statement
unsupported by factual evidence. We determine the Examiner~ s articulated
reasoning (Final Act 45----4 7) supports a conclusion of obviousness.
Yvioreover, we are not persuaded by Appellants' hindsight argument for the
same reasons as set forth supra with respect to Issue 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of dependent claim 11.
Latta?
(
~,, . j ') /.cum _.,
Issue 6: Did the Exarniner en in cmnbining Yasunaga, Otsuka, and
Appellants contend "[t]he cmnbination is not suggested by the
references themselves nor is it warranted." (App. Br. 12.) AppeHants
further contend "the principle of operation of the Yasunaga viewer detection
sensor ... is very different from the Latta capture devices." (Id.) Therefore,
according to Appellants, '"[a]bsent hindsight, there is no reason that one of
ordinary skill in the art would combine these teachings.~'
\Ve are not persuaded by Appellants' arguments for substantially the
same reasons as set forth supra with respect to Issues 1, 2, and 3. \Ve again
note that KSR does not require an explicit teaching or suggestion in the
references thernselves. Regardless, we detennine the Examiner's articulated
reasoning (Final Act. 47----50), which has not been persuasively addressed by
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Appellants, suppmis a conclusion of obviousness. J\iloreover, we are not
persuaded by Appellants' hindsight argument for the same reasons as set
forth supra with respect to Issue l.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of dependent claim 13.
Claim 18
Issue 7: Did the Examiner err in combining Yasunaga, Otsuka,
Herrmann, and Streid?
Appellants contend:
[T]he Examiner concludes it would be obvious to modify the
rotational means and image generation means of Y asunaga to
incorporate an image display rate of 900 frames per second as
taught by Herrmann. The Examiner further modifies the
teaching of Herrmann with the image display rate by Streid
stating that the rotational portion rotates at a revolution
corresponding to about one-half an image display rate. This is
improper and constitutes modifying a modifying reference.
This is due to hindsight on part of the Examiner.
(App. Br. 13.)
We are not persuaded by Appellants' arguments for substantially the
same reasons as set forth supra with respect to Issues 1, 2, and 3. In
addition, . Appellants do not persuasively address the rejection as articulated
by the Examiner. For example, the Examiner relies on Hermann to teach or
suggest the image display rate being about 900 frames for second (Final Act.
51-52), and Streid to teach or suggest the revolution rate corresponding to
about one-half an image display rate (Final Act 52-53). The Examiner does
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not modify the teaching of Hermann with Streid, as argued by Appellants.
(See Final Act. 51----53.) \Ve determine the Examiner's articulated reasoning
(Final Act 51-53), which was not persuasively addressed by Appellants,
supports a conclusion of obviousness. f\/foreover, we are not persuaded by
Appellants' hindsight argument for the sarne reasons as set forth supra with
respect to Issue 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of dependent claim 18.
Claim 19
Issue 8: Did the Examiner err in combining Yasunaga, Otsuka,
Herrmann, Streid, and Latta?
Appellants contend ''[t]he addition of LaUa does not c01Tect the
impropriety [as discussed with respect to claim 18] but fmiher bolsters
Appellants' conclusion that the Examiner has used Appellants' specification
as a roadmap to put together a myriad of references without any motivation
or justification in doing so.'' (App. Br. 13.)
We are not persuaded by Appellants' arguments for
substantiaIIy the same reasons as set forth supra with respect to Issues
1, 2, and 3. We determine the Examiner's articulated reasoning (Final
Act. 53----54), \vhich was not persuasively addressed by Appellants,
suppmis a conclusion of obviousness. :tvioreover, we are not
persuaded by Appellants' hindsight argument for the sarne reasons as
set forth supra with respect to Issue 1.
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Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of dependent claim 19.
DECISION
For the above reasons, the Examiner's rejection of claims 1-21 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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