Ex Parte Franklin et al

Patent Trial and Appeal Board

Sep 24, 2018

13250666 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/250,666 09/30/2011
65015 7590 09/26/2018
Treyz Law Group
870 Market Street, Suite 984
SAN FRANCISCO, CA 94102
FIRST NAMED INVENTOR
Jeremy C. Franklin
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.
Pl2444US1 7414
EXAMINER
BRADFORD, ELIZABETH
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY C. FRANKLIN,
SCOTT A. MYERS, STEPHEN BRIAN LYNCH,
and JOHN RAFF
Appeal2017-010833
Application 13/250,666
Technology Center 1700
Before MICHAEL P. COLAIANNI, RAEL YNN P. GUEST, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 15 and 16 of Application
13/250,666 under 35 U.S.C. § 112, ,r 1, for failing to comply with the written
description requirement. Final Act. 2 (July 29, 2016). 1 The Examiner
further rejected claims 20 and 21 under 35 U.S.C. § 102(b) as anticipated or,
in the alternative, under 35 U.S.C. § 103(a) as obvious; and claims 1, 5, 6, 8,
1 The Examiner has withdrawn the rejection of claims 1, 5, 6, 8, 9, 11-16,
22, and 23 under 35 U.S.C. § 112, ,r 2 as indefinite. Answer 16.
Appeal2017-010833
Application 13/250,666
9, and 11-23 under 35 U.S.C. § 103(a) as obvious. Id. at 4, 5, 9, 10, 11, 13.
Appellants2 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). 3
We have jurisdiction. 35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm-in-part.
BACKGROUND
The '666 Application describes displays for electronic devices, such
as a cellular telephone or a computer. Spec. 2:2-5.
Claims 1, 17, and 20 are representative of the '666 Application's
claims and are reproduced below:
1. A method for forming an electronic device with a
display, wherein the display comprises a flexible display layer
having a planar portion, comprising:
attaching the flexible display layer to a support layer with
adhesive;
simultaneously applying pressure and heat to the flexible
display layer and the support layer that bends the flexible
display layer and the support layer to form a bent portion in the
flexible display layer, wherein the bent portion is adjacent to
the planar portion;
forming a notch in the support layer to facilitate bending
of the support layer, wherein the flexible display layer forms a
continuous surface over the notch in the support layer; and
mounting the display in an electronic device housing.
2 Apple Inc. is identified as the real party in interest. Appeal Br. 2.
3 Claims 2--4 are withdrawn from consideration and, thus, are not subject to
the appealed rejections. Final Act. 1; Appeal Br. 2.
2
Appeal2017-010833
Application 13/250,666
1 7. A method for forming an electronic device display,
compnsmg:
simultaneously applying heat and pressure to a flexible
display layer to soften the display layer and bend an edge
portion of the display layer to form a bent edge portion;
attaching the flexible display layer to a rigid support
structure having at least one compound curve, wherein
attaching the flexible display layer to the rigid support structure
comprises conforming a shape of the bent edge portion to a
shape of the compound curve; and
while the edge portion is bent, cooling the display layer
to harden the display layer with the bent edge portion.
20. A method of bending an edge of a flexible display having
an active display region with display pixels, comprising:
attaching the flexible display to a flexible support layer;
and
bending the edge of the flexible display and an edge of
the support layer using a heated structure to form a bent edge
portion adjacent to a flat portion in the flexible display,
wherein the display pixels are located in the flat portion and in
the bent edge portion of the flexible display and wherein the
active display region extends into the bent edge portion of the
flexible display.
Appeal Br. 21, 24--25, 26 (Claims App.) (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 15 and 16 are rejected under 35 U.S.C. § 112, ,r 1 for
failing to comply with the written description requirement. Final
Act. 2; Answer 2.
3
Appeal2017-010833
Application 13/250,666
2. Claims 20 and 21 are rejected under 35 U.S.C. § I02(b) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as
unpatentable over Cho. 4 Final Act. 4; Answer 4.
3. Claims 1, 5, 8, 9, and 11-16 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Wu, 5
Yamazaki, 6 Kiyose, 7 Mori, 8 Koeda, 9 and Yamagata. 1 ° Final Act.
5; Answer 5.
4. Claim 6 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Yamazaki in view of Cho. Final Act. 9;
Answer 9-10.
5. Claims 22 and 23 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Wu, Yamazaki, Kiyose,
Mori, Koeda, Yamagata, and Yamada. 11 Final Act. 10; Answer
10-11.
4 US 2010/0117975 Al, published May 13, 2010.
5 US 2009/0284904 Al, published Nov. 19, 2009.
6 US 2010/0253902 Al, published Oct. 7, 2010.
7 JP 2010-060866, published Mar. 18, 2010. We shall follow the Examiner
and Appellants by referring to a machine translation that was made of record
in this appeal on Oct. 25, 2012
8 US 2009/0090928 Al, published Apr. 9, 2009.
9 JP 2001-060655, published Mar. 6, 2001. We shall follow the Examiner
and Appellants by referring to a translation that was made of record in this
appeal on Dec. 30, 2015.
10 US 2012/0020056 Al, published Jan. 26, 2012.
11 US 2011/0050657 Al, published Mar. 3, 2011.
4
Appeal2017-010833
Application 13/250,666
6. Claims 17 and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Yamazaki and Cho. Final
Act. 11; Answer 11.
7. Claim 19 is rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Yamazaki, Cho, and Yoshida. 12 Final
Act. 13; Answer 13.
8. Claims 20 and 21 rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Wu, Yamazaki, and Kiyose.
Final Act. 13; Answer 14.
DISCUSSION
Rejection 1. The Examiner rejected claims 15 and 16 for failing to
comply with the written description requirement. Answer 2. The Examiner
found that each of the embodiments from the language of claims 15 and 16,
respectively combined with the embodiment recited in independent claim 1,
were not described in the '666 Application's Specification. Id. at 2-3. In
particular, the Examiner found that these claims are drawn to new matter
because "the specific combination of the notch in an additional support layer
52 ( as required by claim 1) with the electronic housing support 26 and clamp
28 of figure 4 has not been previously disclosed by the [S]pecification." Id.
at 18.
We reverse this rejection.
The language of claims 15 and 16 was present in the originally-filed
dependent claims. Although claim 16 was amended to require that the step
of "applying the pressure and heat to the display" is "simultaneous[]," this
12 US 2010/0208190 Al, published Aug. 19, 2010.
5
Appeal2017-010833
Application 13/250,666
simultaneous application step is supported by the '666 Application's
Specification. Spec. 19:16-25.
We note that the originally-filed independent claim 1 did not recite the
notch embodiment as presently recited. Our review of the '666
Application's Specification, however, finds that it describes embodiments
wherein the display is attached to a curved support structure as recited in
claims 15 and 16, each respectively combinable with the notch embodiment
presently recited in independent claim 1. For example, support structure 92
of Figure 11 is described such that the support structure embodiments can
support either display layer 14 (see Fig. 11) or a multi-layer structure 56.
See id. 18:14--20; Fig. 11. Multi-layer structure 56 includes support layer 52
and display layer 14. See id. 12:22-29 (Fig. 5), 18:14--20 (Fig. 11). We find
that the Specification describes that notch 54 in support layer 52 of layer 56
(as depicted in Figure 5) can facilitate the bending of the multi-layer
structure 56. Accordingly, we find written description support for a notch
54 present when bending a multi-layer structure 56 around a support
structure, e.g., support structure 92 or support structure 26, which can then
be clamped in place using clamp structure 28 ( as depicted in Figure 4 ).
We, therefore, conclude that the original language of the dependent
claims, along with support in the '666 Application's Specification,
demonstrates that the inventor possessed an invention comprising the
mounting arrangements described in claims 15 and 16 in combination with
the notched feature recited in claim 1.
Thus, we reverse the rejection of claims 15 and 16 for lack of written
description.
6
Appeal2017-010833
Application 13/250,666
Rejection 2. As explained in the Examiner's Answer, the Examiner
found that claims 20 and 21 read on or, in the alternative, are rendered
obvious by Cho's method. See Answer 4--5.
Appellants argue that because "Cho fails to show or suggest that heat
is used in any way to bend the display, Cho does not anticipate the feature of
'bending the edge of the flexible display and an edge of the support layer
using a heated structure"' as recited in claims 20 and 21. Appeal Br. 9; see
id. at 10. Appellants further argue that Cho neither renders claims 20 nor 21
obvious because Cho only "suggests that the display is bent using mere
force." Id. at 11.
For the following reasons, we are not persuaded by Appellants'
argument. As the Examiner found, Cho suggests a method of using "the
user[']s hands" as heated structures for bending or folding flexible display
335 and supporting elements 341 and 343. 13 Answer 4 (citing Cho ,r 96; see
also Fig. 21). We agree with the Examiner that the recitation of"'heated
structures' is so broad as to read on any structure that is heated, including a
human body." Answer 18.
Moreover, the '666 Application's Specification describes that "heated
structures" in general "may be used to press the display layer into a desired
13 We note that the Examiner further found that Cho discloses or suggests
that "a wrist" can be used as a heated structure for such bending or folding.
Answer 4, 18-19. The Examiner's finding, however, is erroneous because
Cho merely discloses that the user can "bend the flexible display 335 into
the shape of a bracelet" and then subsequently wear the formed bracelet. In
other words, Cho is silent as to any use of the wrist as a heated structure to
bend Cho' s disclosed display and support layer. Cho ,r 96. The Examiner's
error, though, is harmless given the Examiner's reasoned finding that Cho
suggests that a user's hands can accomplish the requisite bending. See id.
7
Appeal2017-010833
Application 13/250,666
shape." Spec. 3: 19--20. Although the Specification discloses that "bending
and heating equipment may include heated structures such as heated
blocks," no restrictions are provided as to what comprises a heated structure.
Id. at 3: 16-18 ( emphasis added). In construing a claim's language, we are
not to read limitations derived from embodiments described in an
application's specification into the claims. See Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) ("[A]lthough the specification
often describes very specific embodiments of the invention, we have
repeatedly warned against confining the claims to those embodiments.").
We, therefore, affirm the rejection of claims 20 and 21.
Rejections 3--5. Appellants argue for the reversal of the obviousness
rejections to claims 1, 5, 6, 8, 9, 11-16, 22, and 23 on the basis of limitations
present in independent claim 1. See Appeal Br. 9--16; Reply Br. 4--5. We
select claim 1 as representative. Accordingly, claims 5, 6, 8, 9, 11-16, 22,
and 23 will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
In rejecting claim 1, the Examiner found that Wu teaches the claimed
method for forming an electronic device with a display, but does not
explicitly disclose, inter alia, that the claimed flexible display layer has a
planar portion adjacent the bent portion. Answer 6.
The Examiner relies on Yamazaki for disclosing "displays having a
planar portion adjacent bent portions ... obtainable by bending ... a resin
based flexible display." Id. at 6 (citing Yamazaki ,r 47; Fig. 7). The
Examiner further relies on Kiyose for teaching that "using a resin ...
predictably results in the ability to obtain a small radius of curvature as
compared to glass." Answer 7 (citing Kiyose ,r,r 22, 52; Fig. 1--4).
Based on these findings, the Examiner determined that a person of
ordinary skill in the art at the time of the invention would have modified
8
Appeal2017-010833
Application 13/250,666
Wu's glass layers to include a resin to facilitate creating Yamazaki's shaped
display. Answer 6. According to the Examiner, the ordinary skilled artisan
would have been motivated to do so because Yamazaki teaches "that to use
such a shape predictably results in the ability to have a more convenient
display device with a shape suitable for its intended purpose." Id.
Appellants argue that "the whole purpose" of Wu's method "is to
form a uniformly curved display ... without causing stress concentration in
the display." Appeal Br. 14 (citing Wu Fig. 8). Appellants further argue
that Wu avoids stress concentrations "'by exerting force on two ends of the
first fixing substrate 2."' Appeal Br. 13 (quoting Wu ,r 33). In particular,
Appellants contend that "[i]f one were to attempt to create" Yamazaki's
shape with Wu's device, "excessive stress concentration would likely cause
damage to the liquid crystal display module, which would likely render the
device inoperable and is precisely what Wu seeks to avoid with his method."
Appeal Br. 14 ( citing Wu ,r 6).
The Examiner responded by asserting that the combination of Wu and
Yamazaki would have "result[ ed] in the desire to apply force specific to the
areas of the curves in the display of Yamazaki, where the two curves are
located at the edges of the planar portion." Answer 19 (emphasis added).
We have no evidence or reasoning to suggest to the skilled artisan that
the application of force specific to the curved areas of Yamazaki' s display
would have been successful in bending Wu's liquid crystal display module
without causing damage. In fact, as pointed out by Appellants, Wu
specifically warns against "directly exerting force to act on the liquid crystal
display module." Wu ,r 6. Similarly, we note that Wu teaches that display
bending must be indirect in order to protect the display and improve
production of curved display panels. See id. ,r 43. The Examiner has not
9
Appeal2017-010833
Application 13/250,666
provided a reasoned explanation as to how Yamazaki's application of force
to the curved display areas would have avoided Wu's objective of avoiding
direct stress concentrations to prevent display inoperability.
Even assuming that Wu's display module is capable of bending at a
smaller radius as compared to glass after incorporating resin, Appellants
persuasively argue that Wu's bending method "by applying force on
opposite ends of the fixing substrate 2," would have merely resulted "in a
continuous and symmetric curving." Appeal Br. 13. Absent any finding that
the applied prior art teaches or suggests that resin should be concentrated: (i)
higher in a display portion intended to be bent and (ii) less so in in a display
portion intended to be planar, we are unpersuaded that Wu's bending
method would have resulted in a planar portion adjacent a bent portion.
In view of the foregoing, we reverse the Examiner's rejection of
independent claim 1. Thus, we also reverse the rejections of claims 5, 6, 8,
9, 11-16, 22, and 23.
Rejections 6--7. Appellants argue for the reversal of the obviousness
rejections to claims 17, 18, and 19 on the basis of limitations present in
independent claim 17. See Appeal Br. 16-18; Reply Br. 6-7. We select
claim 17 as representative. Accordingly, claims 18 and 19 will stand or fall
with claim 17. 37 C.F.R. § 4I.37(c)(l)(iv).
In rejecting claim 17, the Examiner found that Yamazaki teaches the
claimed method for forming an electronic device display, but does not
disclose, inter alia, supports with compound curves. Answer 11-12.
The Examiner relies on Cho for disclosing "that displays with
compound curves ... were known alternatives to planar displays adjacent
bent portions." Id. at 12 (citing Cho Figs. 8c, 5-7, and 13c). The Examiner
determined that a person of ordinary skill in the art at the time of the
10
Appeal2017-010833
Application 13/250,666
invention would have modified "the shape of the support of Yamazaki so as
to achieve the desired known alternative shape of a compound curve."
Answer 12.
A proper § 103 analysis requires "a searching comparison of the
claimed invention-including all its limitations-with the teaching of the
prior art." In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed.
Cir. 1995). In this instance, Appellants correctly argue that Figure 8c merely
illustrates a half-sphere, which "is not equivalent to a compound curve."
Appeal Br. 16. According to Appellants, "a compound curve is a curve
made up of multiple circular arcs with shorter or longer radii joined
tangentially without reversal of curvature." 14 Id. As explained by
Appellants, each curve depicted in Cho' s depicted half-sphere "only has one
radius of curvature ... [with] no curves made up of multiple circular arcs
with different radii." Id. at 17.
The Examiner responded by asserting "that the difference between a
compound curve and a hemisphere comes down to a question of design
optimization." Answer 20.
We find that the Examiner has not provided a persuasive explanation
as to how Cho discloses the concept of a display with a curve made up of
multiple circular arcs with shorter or longer radii. We are further
unpersuaded by the Examiner's determination, absent any basis, that
selection of a compound curve over a hemisphere would have been mere
design optimization. We, therefore, agree with Appellants that the
14 Appellants' proffered definition comports with the dictionary definition of
the disputed term provided by https://www.merriam-
webster.com/dictionmy/compound%20curve.
11
Appeal2017-010833
Application 13/250,666
Examiner's findings regarding Cho's alleged compound curve teachings are
not supported by a preponderance of evidence in the record. Therefore, we
reverse the Examiner's rejection of independent claim 17. Thus, we also
reverse the rejections of claims 18 and 19.
Rejection 8. Appellants argue for the reversal of the obviousness
rejection to claims 20 and 21 on the basis of limitations present in
independent claim 20. See Appeal Br. 18-20. We select claim 20 as
representative. Accordingly, claim 21 will stand or fall with claim 20. 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
The Examiner's reasons for combining Wu's and Yamazaki's
teachings are substantially similar to the reasons provided in Rejection 3.
Compare Answer 6 with id. at 14--15. For the reasons set forth above
discussing Rejections 3--5, Appellants' arguments are persuasive that
Yamazaki's excessive stress concentration would likely have rendered Wu's
liquid crystal display module inoperable. Appeal Br. 14, 19-20.
Therefore, we reverse the Examiner's rejection of independent claim
20. Thus, we also reverse the rejection of claim 21.
CONCLUSION
For the reasons set forth above, we reverse the§ 112, ,r 1 written
description rejection of claims 15 and 16; affirm the § 102(b) or, in the
alternative,§ 103(a) rejection of claims 20 and 21; and reverse the§ 103(a)
rejections of claims 1, 5, 6, 8, 9, and 11-23.
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-IN-PART
12