Ex Parte Fisher et alDownload PDFPatent Trial and Appeal BoardOct 7, 201613591400 (P.T.A.B. Oct. 7, 2016) Copy Citation 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.) 2 Appeal2015-005003 Application 13/591,400 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. 3 Appeal2015-005003 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 4 Appeal2015-005003 Application 13/591,400 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 5 Appeal2015-005003 Application 13/591,400 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. 6 Appeal2015-005003 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 7 Appeal2015-005003 Application 13/591,400 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. 8 Appeal2015-005003 Application 13/591,400 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.) 9 Appeal2015-005003 Application 13/591,400 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 10 Appeal2015-005003 Application 13/591,400 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 11 Appeal2015-005003 Application 13/591,400 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. 12 Appeal2015-005003 Application 13/591,400 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 13 Copy with citationCopy as parenthetical citation