Ex Parte Hull

Patent Trial and Appeal Board

Jan 31, 2019

14225806 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/225,806 03/26/2014 N. Scot Hull
115726 7590 02/04/2019
BANNER & WITCOFF, LTD
& attorneys for client 005127
1100 13th STREET NW
SUITE 1200
WASHINGTON, DC 20005
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.
005127.09022/130083US01 4461
EXAMINER
PATEL, JITESH
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
PT0-115726@bannerwitcoff.com
nike _ docketing@cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte N. SCOT HULL
Appeal2018-003890
Application 14/225,806 1
Technology Center 2600
Before JASON V. MORGAN, JEREMY J. CURCURI, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-18, 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 "a subtractive color change system for
displaying a selected color to a viewer." Spec. ,r 8.
1 According to Appellant, the real party in interest is NIKE, Inc. App. Br. 2.
Appeal2018-003890
Application 14/225,806
Illustrative Claim
Claims 1-18 are pending; of these, claims 1 and 10 are independent.
Claim 1 is illustrative and reproduced below:
1. A subtractive color change system for displaying a
selected color to a viewer, the system comprising;
a layered assembly comprising a set of transparent panels
including a first transparent panel of a first color, a second
transparent panel of a second color, and a third transparent panel
of a third color;
a fixed-color background anterior of the layered assembly;
a control unit comprising a circuit to individually control
the intensities and values of the set of transparent panels to render
a color;
the first transparent panel including a first electrochromic
color change composition that changes color in response to
electrical stimulation, the control unit providing a first electrical
stimulation to the first transparent panel;
the second transparent panel including a second
electrochromic color change composition that changes color in
response to electrical stimulation, the control unit providing a
second electrical stimulation to the second transparent panel; and
the third transparent panel including a third electrochromic
color change composition that changes color in response to
electrical stimulation, the control unit providing a third electrical
stimulation to the third transparent panel;
wherein the control unit controls the first electrical
stimulation, the second electrical stimulation, and the third
electrical stimulation to render the selected color.
2
Appeal2018-003890
Application 14/225,806
References and Re} ections2
Claims 1, 2, 4---6, 10, 11, and 13-15 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Peeters (US 2009/0277056 Al, Nov. 12, 2009)
and Yang (US 4,749,260, June 7, 1988). Final Act. 2-12.
Claims 3, 7-9, 12, and 16-18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Peeters, Yang, and Oishi (US 2004/0184390 Al, Sept. 23,
2004). Final Act. 12-17.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2016). We adopt the Examiner's
findings and conclusions as our own, to the extent they are consistent with
our analysis herein.
Claim 1
The Examiner finds Peeters discloses a fluid-based subtractive color
change system having three layers, a background, and a control unit. Final
Act. 2--4 ( citing inter alia, Peters Fig. 7 A). The Examiner finds Yang
discloses an electronically-controlled, three-layer color change system. Id.
at 4--7 (citing inter alia, Figs. 2-3). The Examiner states that it would have
2 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above mentioned Appeal Brief filed June 5,
2017 ("App. Br."), as well as the following documents for their respective
details: the Final Action mailed October 5, 2016 ("Final Act."), the
Examiner's Answer mailed December 28, 2017 ("Ans."), and Appellant's
Reply Brief filed February 28, 2018 ("Reply Br.").
3
Appeal2018-003890
Application 14/225,806
been obvious to the ordinarily skilled artisan to modify the system of Peeters
with Yang's use of electrochromic panels for displaying colors because
doing so "would have improved Peeters by enabling it to achieve color
compositions in a fast and efficient manner [by] taking advantage of
electrochromic panels that would require less maintenance." Id. at 7.
We see no error in the Examiner's findings and we concur with the
Examiner's conclusion that claim 1 would have been obvious over the
combination of Peeters and Yang.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner can satisfy this burden by showing "'some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."' KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). "The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." Leapfrog Enters., Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR,
550 U.S. at 416).
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of [those]
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413,425 (CCPA 1981). See also 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
4
Appeal2018-003890
Application 14/225,806
review"); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining
the teachings of references does not involve an ability to combine their
specific structures."). Rather, "if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR, 550 U.S. at
417.
Appellant presents numerous arguments, which do not dispute that all
claimed elements are disclosed in the Examiner's proposed combination and
which do not persuasively establish that the Examiner's articulated reason
for combining the teachings lacks rational underpinning. App. Br. 6-18.
Rather, Appellant's arguments amount to an attack against bodily
incorporation of the systems disclosed by the references, which the
Examiner did not propose. Id.; see, e.g., id. at 9 ("Without Peeters' fluid
display panels to receive a pumped colorant fluid, no functional purpose
remains for Peeters' colorant fluids, pumps, fluid reservoirs, fluid conduits,
pump controller, and electrical pathways from the controller to the pumps"
and "a controller configured for controlling electrochromic panels would
have to be electrically connected directly to the panels and would have no
capability to operate Peeters' pumps.").
In short, Peeters discloses a large format display. Peeters Abstract;
see Final Act. 2--4 ( finding Peeters teaches various claim elements). Yang
discloses "a polyaniline film" having "electrochromic properties and [that]
will display at least three distinct reproducible color changes." Yang
Abstract; see Final Act. 4--7 (finding Yang teaches various claim elements).
The Examiner reasons that the proposed combination would have been
5
Appeal2018-003890
Application 14/225,806
obvious because it "would have improved Peeters by enabling it to achieve
color compositions in a fast and efficient manner which tak[ es] advantage of
electrochromic panels that would require less maintenance." Final Act. 7.
We agree because when combined Peeters continues to function as a large
format display, while the incorporated teachings from Yang continue to
provide electrochromic properties to produce distinct reproducible color
changes. Put another way, the combination is nothing more than a
predictable use of prior art elements according to their established functions.
See KSR, at 550 U.S. at 417. Accordingly, we find the arguments
unpersuasive of error for the reasons stated by the Examiner (Ans. 2-20),
which Appellant does not persuasively rebut (Reply Br. 2-10). We sustain
the Examiner's rejection of claim 1.
Claim 10
Independent claim 10 is similar to claim 1 and recites "predicting an
intensity and a value of each panel," "providing" "electrical stimulation[ s ]"
to the panels, and "adjusting" the "electrical stimulation[ s]." The Examiner
finds Yang discloses these additional limitations. Ans. 21-23. Inter alia,
the Examiner cites Yang's disclosure as follows:
The other technique used to control the tint of the color is a multi
layered polymer light filter. With combinations of voltages
applied to the layers both distinct colors and tints of a color may
be transmitted through the panel. For example in a four layer
system a dark green color is achieved by ap[p ]lying a +0.3 V to
all four layers. A 50% increase in transmittancy and a lighter
green is achieved by switching two of the layers to -0.2 V
(transparent).
Yang col. 6, 11. 29-37; Ans. 23.
Appellant's arguments in the Reply Brief (Reply Br. 10-11) do not
persuasively rebut the Examiner's findings above but rather repeat similar
6
Appeal2018-003890
Application 14/225,806
arguments advanced with respect to the rejection of claim 1, which we find
unpersuasive for the reasons stated above.
Accordingly, we sustain the Examiner's rejection of claim 10.
Claims 2-9, and 11-18
Appellant argues the remaining claims based on arguments presented
with respect to claim 1 or claim 10. See App. Br. Accordingly, these
arguments are unpersuasive for the reasons stated above.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-18.
No time period for taking any 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(±).
AFFIRMED
7