Ex Parte Jacobson et al

Patent Trial and Appeal Board

Apr 27, 2016

12609149 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/609,149 10/30/2009
26245 7590 04/29/2016
E INK CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
1000 Technology Park Drive
Billerica, MA 01821-4165
FIRST NAMED INVENTOR
Joseph M. Jacobson
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.
INK-046C2 7825
EXAMINER
ZHENG, CHARLES H
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
IP@eink.com
dcole@eink.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. JACOBSON, IAN D. MORRISON,
RUSSELL J. WILCOX, and PAUL S. DRZAIC
Appeal2014-008958
Application 12/609,149
Technology Center 2600
Before KAMRAN JIV ANI, MONICA S. ULLAGADDI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 3-5 and 8-11, which are all the claims
pending in the present patent application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify E Ink Corporation as the real party in interest. App. Br.
3.
Appeal2014-008958
Application 12/609,149
STATEMENT OF THE CASE
The present application relates to manufacturing full-color
microencapsulated electrophoretic displays. Spec. i-f 2.
Claim 3 is illustrative:
3. A color electrophoretic display comprising:
a display element having a viewing surface
and a rear surface on opposed sides of the display
element, said display element comprising a plurality
of a first species of electrophoretic particles having
a first color and a plurality of a second species of
electrophoretic particles having a second color
different from the first color;
a colored surface disposed adjacent said rear
surface of said display element, said colored surface
having a third color different from said first and
second colors,
said display element having a first state in
which said plurality of said first species of particles
lie adjacent said viewing surface and said first color
is displayed, a second state in which said second
species of particles lie adjacent said viewing surface
and said second color is displayed, and a third state
in which said colored surface is visible through said
viewing surface and said third color is displayed.
The Rejection
Claims 3-5 and 8-11 are rejected under 35 U.S.C. § 103(a) over
Gordon (US 5,872,552; iss. Feb. 16, 1999) and Evans (US 3,612,758; iss.
Oct. 12, 1971).
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Appeal2014-008958
Application 12/609,149
ANALYSIS
The Examiner rejects independent claim 3 over the combined
teachings of Gordon and Evans, finding in relevant part, "It would have been
obvious to one of ordinary skill in the art at the time of the invention to add
the second colored particle as well as the second state as taught by Evans to
the display cells of Gordon in order to achieve better color reproduction."
Final Act. 6. The Examiner elaborates that an ordinarily-skilled artisan
would replace "Gordon's pigment fluid with single color particles with
Evan's dual color particles." Ans. 10. The Examiner further finds:
Id. at 10-11.
introducing a second color pigment will necessitate
a second electrode similar to 8, so as to collects all
of the particles to its respective comers, so that the
color of the rear surface can show through. And the
top electrode A as disclosed by Evans' fig. 2a is kept
in the combination and is used to display either
color of the dual color pigments.
Appellants argue the Examiner's combination is improper because,
"Gordon and Evans are two state displays, and there is nothing in either
reference to suggest that a three state display is possible." App. Br. 13.
Appellants further contend a third electrode is necessary for the Examiner's
combination and "there is no basis in either Evans or Gordon for a third
electrode of any kind." Reply Br. 2. Finally, Appellants contend the third
electrode must be "independently controllable" and such an arrangement
"requires an additional conductive trace to each and every pixel, more
expensive electronics, and different driving schemes." Id. at 3.
We find Appellants' arguments unpersuasive for at least the following
reasons.
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Appeal2014-008958
Application 12/609,149
First, contrary to Appellants' argument, Evans discloses at least a
three-state display. Evans describes Figures 2a-2c as depicting blue
negative particles, yellow positive particles, and colorless dielectric solution.
Evans, 4:66-69; see also Final Act. 6 ("Evans, Figs. 2b and 2c positive and
negatively charged particles are blue and yellow respectively"). Evans
further teaches alternating charges to terminals A and B such that the cell
appears blue or yellow depending on which set of particles is dispersed in
the solution, and that the cell appears green when both sets of particles are
dispersed. Evans, 4:66-73. We, therefore, disagree with Appellants that
"there is nothing in either reference to suggest that a three state display is
possible" (App. Br. 13) because Evans teaches at least three color states,
namely blue, yellow, and green.
Second, we do not agree with Appellants that "there is no basis in
either Evans or Gordon for a third electrode of any kind" (Reply Br. 2)
because Gordon teaches an arrangement of a display cell with three
electrodes. Gordon's Figure 5----cited and discussed by Appellants (App. Br.
17}-teaches a cell including a "pedestal-shaped collecting electrode 40, a
light-transmissive counter electrode 42 disposed over a rear panel having a
reflecting surface, and a third light-transmissive front electrode 44."
Gordon, 4:43--48 (emphasis added).
Third, we are not persuaded by Appellants' argument regarding the
third electrode required under the Examiner's combination. Appellants
contend:
Referring again to Figure 2 of Gordon, if an
undisclosed third electrode 8' were added to the
lower left comer of the display cell, the only way a
substantially transparent state could be achieved,
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Appeal2014-008958
Application 12/609,149
with two oppositely charged pigment particles
present, is for the electrodes 8 and 8' to be set at
opposite polarities so that both species of particles
are collected at the sides.
Reply Br. 3 (emphasis added). The requisite opposite polarities are precisely
taught by Evans, as discussed above. Evans, 4:66-73. Moreover,
Appellants argue that the third electrode required under the combination
would incur additional expense. Reply Br. 3. This argument does not
identify sufficient persuasive evidence in the record before us that the
Examiner's combination would have been "uniquely challenging or difficult
for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Accordingly, we sustain the Examiner's 35 U.S.C § 103(a) rejection
of independent claim 3. Appellants advance no further argument on
dependent claims 4, 5, and 8-11. Accordingly, we sustain the Examiner's
35 U.S.C § 103(a) rejection of dependent claims 4, 5, and 8-11 for the
reasons discussed above.
DECISION
We affirm the Examiner's decision rejecting claims 3-5 and 8-11.
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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