Ex Parte Johnson et al

Patent Trial and Appeal Board

Sep 24, 2012

10568644 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/568,644 02/16/2006 Mark Thomas Johnson 11543.0029-00000 4579
22852 7590 09/24/2012
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
CRAWLEY, KEITH L
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
09/24/2012 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 THOMAS JOHNSON, GUOFU ZHOU,
and NECULAI AILENEI
____________________

Appeal 2010-003268
Application 10/568,644
Technology Center 2600
____________________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9, 11, 13-18, and 20-22, all the claims presently pending in the
application.
1, 2
Claims 10, 12, and 19 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the § 102(e) rejection of claims 1-9 and 21, and reverse the
§ 102(e) rejection of claims 11, 13-18, and 20, and 22 and the § 103(a)
rejection of claim 22 pro forma. We also enter a new grounds of rejection
under 35 U.S.C. § 112, second paragraph, as to claims 11, 13-18, 20, and
22.
3

Appellants’ Disclosed Invention
Appellants disclose a display panel that is able to provide a smoother
transition from one image to another (Spec. 1:26-28) by applying a grey

1
In the Final Rejection mailed April 14, 2009, claims 1-11, 13-18, and 20-
22 were rejected over prior art. In an After-Final Amendment filed June 15,
2009, claim 10 was cancelled and its limitations were incorporated into
independent claim 1, from which it depended. Further, the same limitations
from claim 10 were also incorporated into independent claims 11 and 20.
This After-Final Amendment was entered in the Advisory Action mailed
June 25, 2009.
2
In the Examiner’s Answer, on page 17, the Examiner determined that
limitations in claims 1, 11, and 20 lacked antecedent basis (Ans. 17). An
After-Final Amendment was filed December 28, 2009, to correct antecedent
basis for claims 1, 11, and 20. This After-Final Amendment was entered in
a communication from the Examiner mailed January 11, 2010.
3
Since we reject claims 11, 13-18, and 20-22 as being indefinite under 35
U.S.C. § 112, second paragraph, we do not reach the applied art rejection for
these claims.
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scale potential difference in plural drive pulses as opposed to a single drive
pulse (Spec. 2:8-10).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphases added:
1. An electrophoretic display panel that is drivable between
extreme positions and states between said extreme positions, the
electrophoretic display panel comprising:

an electrophoretic medium comprising charged particles;

a plurality of picture elements having electrodes associated with
each picture element for receiving a potential difference; and

drive means, the drive means being arranged for controlling the
potential difference of each picture element to be a grey scale
potential difference for enabling the particles to be driven to a position
corresponding to image information from a preceding optical state, the
potential difference being a sequence of preset potential differences
having preset values and associated preset durations, the preset values
in the sequence alternating in sign, each preset potential difference
representing a preset energy sufficient to release particles present in
one of said extreme positions from their position but insufficient to
enable said particles to reach the other one of the extreme positions

wherein the drive means are further arranged for application of
the grey scale potential difference for at least a subset of all drive
waveforms for setting a picture element from a preceding optical state
to a grey scale in two or more pulses which change the optical state of
the system separated by a non-zero time interval and are arranged for
prior to application of the grey scale potential difference, driving a
reset potential difference of each picture element to drive the particles
to occupy an extreme position which is determined based on which
extreme position is closest to a position of the particles which
corresponds to the image information.

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The Examiner’s Rejections
The Examiner rejected claims 1-9, 11, 13-18, and 20 under 35 U.S.C.
§ 102(e) as being anticipated by Zehner (US 7,012,600 B2). Ans. 3-13
The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Zehner in view of Amundson (US 7,176,880 B2).
Ans. 13-14.
Appellants’ Contentions
Appellants contend (App. Br. 14-16; Reply Br. 3-6) that the Examiner
erred in rejecting claims 1-9, 11, 13-18, and 20 under § 102(e) as being
anticipated by Zehner for numerous reasons, including:
4

(1) Zehner fails to disclose “each preset potential difference
representing a preset energy sufficient to release particles present in one of
said extreme positions from their position but insufficient to enable said
particles to reach the other one of the extreme positions” (App. Br. 14-16;
Reply Br. 3-5, (emphasis added));
(2) Zehner, if modified, would be inoperable for its intended purpose
(Reply Br. 5-6); and
(3) Zehner teaches away from the disputed claim limitation (Reply Br.
6).
Claim Grouping - 37 C.F.R. § 41.37(c)(1)(vii)
Appellants present arguments on the merits with regard to limitations
now in independent claim 1 (see App. Br. 5-9). Appellants argue that
dependent claims 2-9 are patentable because of their dependency from claim

4
Appellants do not present any arguments specifically directed to the
§ 103(a) rejection of claims 21 and 22 over the combination of Zehner and
Amundson.
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1 and because of “the separately patentable elements contained in each of
said claims” (see App. Br. 17-18).
5
Also, Appellants argue claim 21 is
patentable because of its dependency from claim 1 (App. Br. 18).
6

Therefore, we select claim 1 as representative of the group of claims 1-9,
and 21. 37 C.F.R. § 41.37(c)(1)(vii).
For remaining claims 11, 13-18, 20, and 22, we enter a new ground of
rejection as being indefinite under § 112, second paragraph, infra. Given the
indefiniteness of claims 11, 13-18, 20, and 22 on appeal, we will not reach
the merits of the Examiner’s §§ 102(e) and 103(a) rejections with regard to
these claims. Therefore, the prior art rejections must fall, pro forma,
because they are necessarily based on speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). Our decision in this regard is based solely on the indefiniteness of
the claimed subject matter and does not reflect on the adequacy of the prior
art evidence applied in support of the rejection of claims 11, 13-18, 20, and
22.

Issues on Appeal
Based on Appellants’ arguments, the following issues are presented
on appeal:
Did the Examiner err in rejecting claims 1-9 and 21 because Zehner:
(1) fails to disclose “a preset energy sufficient to release particles

5
A statement which merely points out what a claim recites will not be
considered an argument for separate patentability. 37 C.F.R.
§ 41.37(c)(1)(vii).
6
Id.
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present in one of said extreme positions from their position but insufficient
to enable said particles to reach the other one of the extreme positions”
(App. Br. 14-16; Reply Br. 3-5) as required by claim 1;
(2) if modified, would be inoperable for its intended purpose (Reply
Br. 5-6); and
(3) teaches away from the disputed claim limitation (Reply Br. 3, 6)?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 13-18) and the Reply Brief (Reply
Br. 2-6) that the Examiner has erred.
We disagree with Appellants’ conclusions with respect to claims 1-9
and 21. We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief, (Ans. 3-8 and 13-17). We highlight and address
certain teachings and suggestions of the reference as follows.
We agree the Examiner (Ans. 14-16) that Zehner discloses a preset energy
sufficient to release particles present in one of said extreme positions from
their position but insufficient to enable said particles to reach an other one of
the extreme positions, as recited in claim 1. Zehner discloses that the
prepulses do not have to be equal in impulse to full black-white pulse (Ans.
15). In other words, Zehner discloses that the impulse energy of the
prepulse to bring the final grey state is contemplated to be insufficient to

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enable the particles to reach another one of the extreme positions (see
Zehner col. 28, ll. 44-47).
Appellants’ arguments (App. Br. 14-16; Reply Br. 3-5) regarding
issue (1) are unconvincing because we agree with Examiner that the
prepulses include energies insufficient to enable the particles to reach
another one of the extreme positions (Ans. 4, 15; see also Zehner col. 28, ll.
44-47). Zehner’s prepulses include the intervening pulses (see Zehner col.
28, ll. 18-20), and the intervening pulses have insufficient energy to enable
the particles to reach the black or white state (i.e., the other one of the
extreme positions; see Zehner col. 28, ll. 39-47).
Appellants’ contentions (Reply Br. 3-6) regarding issues (2) and (3)
are unconvincing because they are not relevant to overcoming the
Examiner’s anticipation rejection. These matters are not relevant to the
§ 102(e) rejection of claim 1 because: (1) “‘teaching away’ is irrelevant to
anticipation,” Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356
(Fed. Cir. 2008) (citation omitted), and (2) inoperativeness for intended
purpose is a factor that may demonstrate teaching away which is relevant to
a § 103(a) rejection—not at § 102 rejection. In re Gordon, 733 F.2d 900
(Fed. Cir. 1984).
Therefore, we will sustain the anticipation rejection of claims 1-9 and
21.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-9 and 21 as being
anticipated under 35 U.S.C. § 102(e) by Zehner.
(2) We do not reach the merits of whether the Examiner erred in
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rejecting: (i) claims 11, 13-18, and 20 under § 102(e), and (ii) claim 22
under § 103(a) because these claims are indefinite under 35 U.S.C. § 112,
second paragraph.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection
under:
(1) 35 U.S.C. § 112, second paragraph, for claims 11, 13-18, 20, and
22; and
(2) 35 U.S.C. § 112, first paragraph, for claims 20 and 22.

35 U.S.C. § 112, second paragraph
Claims 11, 13-18, 20, and 22 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The present claims at issue are those of a patent application, as
opposed to a patent, and as such Appellants are in the best position to
resolve the ambiguity rather than rely upon future litigation to resolve the
ambiguity. Halliburton Energy Serv., Inc. v. M-I LLC, 514 F.3d 1244, 1255
(Fed. Cir. 2008). In this light, we turn next to an analysis of the metes and
bounds of independent claims 11 and 20 on appeal.
Indefiniteness of independent claim 11
Claim 11 is reproduced below, with emphases added:
11. A method for driving an electrophoretic display device that is
drivable between extreme positions and states between said extreme
positions, the electrophoretic display panel comprising:
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an electrophoretic medium comprising charged particles;

a plurality of picture elements, the method comprising acts of:

applying grey scale potential differences for setting a picture
element to an optical state from a preceding optical state for at least a
subset of all drive waveforms in two or more pulses separated by a
non-zero time interval, the grey scale potential difference being a
sequence of preset potential differences having preset values and
associated preset durations, the preset values in the sequence
alternating in sign, each grey scale preset potential difference
representing a preset energy sufficient to release particles present in
one of said extreme positions from their position but insufficient to
enable said particles to reach the other one of the extreme positions;
and

prior to application of the grey scale potential difference,
applying a reset potential difference of each picture element to drive
the particles to occupy an extreme position which is determined based
on which extreme position is closest to a position of the particles
which corresponds to the optical state.

Claim 11 is indefinite under § 112, second paragraph, because it is
unclear whether the claim is to a display panel, a method of using a display
panel, or both.
7
When a single claim sets forth an apparatus and a method of
using the apparatus, it is indefinite. IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1378, 1384 (Fed. Cir. 2005). The reason for holding such a
claim indefinite is because “a manufacturer or seller of the claimed
apparatus would not know from the claim whether it might also be liable for

7
We note that the term “the electrophoretic display panel” recited in the
preamble of claim 11 lacks antecedent basis.

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contributory infringement because a buyer or user of the apparatus later
performs the claimed method of using the apparatus.” Id.
Presently, the preamble appears to set forth a method when it recites,
“A method for driving an electrophoretic display device.” However, the
transitional phrase from the preamble seems to set forth an apparatus when it
recites “the electrophoretic display panel comprising....” Since the claim
covers both an apparatus and a method, the claim is indefinite.
Dependent claims 13-18, which ultimately depend from claim 11, are
also rejected for incorporating this indefiniteness.
Indefiniteness of independent claim 20
Claim 20 is reproduced below, with emphases added:
20. Drive means for driving an electrophoretic display panel, that is
drivable between extreme positions and states between said extreme
positions, said display panel, comprising:

an electrophoretic medium comprising charged particles;

a plurality of picture elements having electrodes associated with
each picture element for receiving a potential difference;

drive means arranged for controlling the potential difference of
each picture element to be a grey scale potential difference for
enabling the particles to occupy the position corresponding to the
image information, the grey scale potential difference being a
sequence of preset potential differences having preset values and
associated preset durations, the preset values in the sequence
alternating in sign, each grey scale preset potential difference
representing a preset energy sufficient to release particles present in
one of said extreme positions from their position but insufficient to
enable said particles to reach the another one of the extreme positions,
said drive means being further arranged for application of the grey
scale potential difference for at least a subset of all drive waveforms
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for setting a picture element from a preceding optical state to a grey
scale in two or more pulses which change the optical state of the
system separated by a non-zero time interval and are arranged for
prior to application of the grey scale potential difference, driving a
reset potential difference of each picture element to drive the particles
to occupy an extreme position which is determined based on which
extreme position is closest to a position of the particles which
corresponds to the grey scale.

Claim 20 presents several issues under § 112, second paragraph, of
which we have selected those of immediate concern for purposes of
procedural efficiency. Those issues are as follows:
(1) the two instances of “drive means” lack proper antecedent basis,
which creates ambiguity and frustrates clarity;
(2) in the preamble, the function of “driving an electrophoretic display
panel” is not clearly linked or associated with a corresponding
structure;
(3) in the body, it is unclear whether or not § 112, sixth paragraph, has
been invoked for the “drive means;”
(4) if § 112, sixth paragraph were invoked for “drive means” from the
body, function of “controlling the potential difference of each
picture element” is not clearly linked or associated with a
corresponding structure; and
(5) it is unclear whether the claim is to a “drive means” or a display
panel, based on the limitations of the preamble.
For issue (1), the preamble sets forth “drive means for driving an
electrophoretic display panel” and the body of the claim recites “drive means
arranged for controlling the potential difference of each picture element.”
From present claim 20, it is unclear whether these two drive means
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correspond to the same means or to different means. In other words, it is
unclear whether or not the “drive means arranged for controlling the
potential difference of each picture element” refers back to the “[d]rive
means for driving an electrophoretic display panel” because the second drive
means is not preceded by a definite article (such as “the” or “said”). A
review of the prosecution history or the originally filed disclosure only
frustrates our endeavor to resolve this ambiguity.
For example, original claim 20, filed February 16, 2006, sets forth
“[d]rive means (100)” in the preamble and “said drive means (100)” in the
body. Noting, that the second drive means is preceded by “said.” Based on
original claim 20, it appears that both the drive means from the preamble
and the drive means from the body are one in the same, notably element 100
from Figure 1.
8
However, Appellants amended original claim 20 to remove
“said” from “drive means” in the After-Final Amendment filed June 15,
2009. Present claim 20’s “drive means arranged for controlling the potential
difference of each picture element” has improper antecedent basis because it
presents a second instance of “drive means.” Further, the originally filed
disclosure lacks specificity as to what actually constitutes the “drive means.”
The “drive means” is shown as a generic dotted box (see Fig. 1, element
100). The “drive means” is not described in any detail in the Specification.
Instead, “drive means” is merely used in sentences that state exactly what
the claims state and nothing further (see e.g., Spec. 7:9; Spec. 9:11; Spec.
10: 8, 21, 29). But, more importantly, present claim 20 appears to recite two

8
The Appeal Brief agrees that the two recitations to “drive means” refer to
the same element (see App. Br. 9-10, both drive means are labeled as
supported by Figure 1, element 100).
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drive means. We are unable to determine unambiguously what the first
drive means is, we most certainly are unable to determine unambiguously
what the second drive means is, or whether there even is a second drive
means.
For issue (2), assuming arguendo, that the above ambiguity from
issue (1) was not a factor, the “drive means” in the preamble invokes § 112,
sixth paragraph. However, the recited function is not clearly linked or
associated to a particular structure in the written description, and therefore,
this claim is indefinite under § 112, second paragraph.
When a claim utilizes the phrase “means for,” there is a presumption
that § 112, sixth paragraph, has been invoked. York Prods., Inc. v. Central
Tractor, 99 F.3d 1568, 1574 (Fed.Cir.1996). Means-plus-function language
that is presumably the easiest to identify would merely be recited as a
“means for,” followed by a function. However, adjectives preceding
“means” do not necessarily preclude § 112, sixth paragraph, from being
invoked. See e.g., In re Aoyama, 656 F.3d 1293 (Fed. Cir. 2011). The key
to a preceding adjective is to determine whether one of ordinary skill in the
art would understand the adjective to be, or not to be, a structure.
Construing a claim employing means-plus-function language involves
two steps: (1) construing the claim to define the particular function; and (2)
identifying, from the specification, the corresponding structure for that
function. Id. at 1296-97. If one of ordinary skill in the art would not
understand the written description to disclose a clearly linked or associated
structure corresponding to the function, then it is indefinite under § 112,
second paragraph. Telcordia Technologies, Inc. v. Cisco Systems, Inc., 612
F.3d 1365, 1376 (Fed. Cir. 2010). In the preamble, claim 20 recites a
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“[d]rive means for driving an electrophoretic display panel.” In other words,
claim 20’s preamble recites “drive” followed by “means for” followed by
function. The term “drive” preceding “means for” is not a structural
modifier and does not have a generally understood structural meaning in the
display panel art. Instead, “drive” is a type of function performed.
Therefore, the “drive means for” language of claim 20 presumptively
invokes § 112, sixth paragraph.
The particular function recited in this limitation from the preamble of
claim 20 is “driving an electrophoretic display panel.” While a “drive
means” could include structures such as circuitry, it could also include non-
structures such as the voltage that drives the lines in the display panel’s array
of elements, or even software that is executed to present images to the
display panel itself.
For the typical structures, one of ordinary skill in the art would have
understood a display panel, such as the one disclosed, to include circuitry
such as a matrix of display elements, a row decoder, a column decoder,
and/or voltage generators to apply to the row and column lines. However,
the preamble sets forth a drive means to drive the display panel.
Would a video card, that sends signals through a cable to the display
panel, be the drive means? Or would the processor, that is running a
program to output data through the video card, be the drive means? Or
would the program be the drive means, for which the program is not
structure? Or would the computer readable medium that stores the
executable program? Or would some computer program code means be the
drive means? Or would some “computer product” be the drive means?
These questions need not be resolved because they merely demonstrate that
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the written description does not clearly link or associate any particular
structure with the function of driving the display panel.
The written description discloses circuitry structures such as a row
driver (e.g., Spec. 7:32), a column driver (e.g., Spec. 7:32), row electrodes
(e.g., Spec. 8:4), column electrodes (e.g., Spec. 8:4), and a processor (Spec.
8: 5). But, one of ordinary skill in the art would recognize the row drive,
column drive, row electrodes, column electrodes as being a part of the
display panel, not a separate structure driving the display panel. The
processor might be a structure that could drive a display panel. However,
these structures, including the processor, are not clearly linked, in the written
description, to driving an electrophoretic display panel.
Further, the written description also discloses many non-structural
elements such as voltages (e.g., Spec. 7:2), reset durations (e.g., Spec. 8, 29),
image history (e.g., Spec. 12: 7), dwell time (e.g., Spec. 12: 7), temperature
(e.g., Spec. 12: 7), humidity (e.g., Spec. 12: 7), lateral inhomogeneity (e.g.,
Spec. 12: 7-8), reset pulses (e.g., Spec. 12:7), a computer program (e.g.,
Spec. 15:17), a computer program code means (e.g., Spec. 15:17-18), a
computer readable medium (e.g., Spec. 15:20), a computer (e.g., Spec.
15:21), and any program product (e.g., Spec. 15:21). The written description
neither clearly links nor associates structure to the particular function of
driving an electrophoretic display panel.
In view of the foregoing, we find this claim indefinite because, from
the means-plus-function language, the particular function is not clearly
linked or associated to any specific structure in the written description.
For issue (3), it is unclear whether or not § 112, sixth paragraph, was
intended to be invoked for the “drive means” in the body.
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The body of the claim recites a “drive means arranged for” followed
by function. Similar to the discussion of the limitation in the preamble, the
“drive” would not be recognized as a structure by a one of ordinary skill in
the art, but instead would be recognized as a function. However, unlike the
preamble, the word “arranged” is inserted between “means” and “for” which
makes this limitation unclear as to whether or not it invokes § 112, sixth
paragraph.
For this reason alone, claim 20 is indefinite under § 112, second
paragraph.
For issue (4), assuming § 112, sixth paragraph, was intended to be
invoked for the “drive means” from the body of the claim, the written
description does not clearly link or associate structure corresponding to the
function.
Here, in the body of claim 20, the function is “controlling the potential
difference of each picture element.”
The “drive means” is shown as a generic dotted box (see Fig. 1,
element 100). The “drive means” is not described in any further detail in the
Specification. Instead, “drive means” is merely used in sentences that state
exactly what this limitation states and nothing further (see e.g., Spec. 7:9;
Spec. 9:11; Spec. 10: 8, 21, 29).
While there are structures disclosed in the written description, none of
them are clearly linked or associated with the function of "controlling the
potential difference of each picture element” (claim 20).
The claim 20 is indefinite by its use of the term “drive means” in the
body of the claim because it is unclear what structure corresponds to the
function it is recited to perform.
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For issue (5), the preamble seems to set forth a “drive means.”
However, the end of the preamble recites, “said display panel, comprising:”
followed by, apparently, limitations in the body drawn to the display panel
and not the drive means?
Dependent claim 22, which depends from claim 20, is rejected for
incorporating the above described indefiniteness.
A review of the merits of the art rejections would require us to engage
in speculation and conjecture to determine the scope of the claimed
invention. This we decline to do. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.); see also In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious-the claim becomes indefinite.”).

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35 U.S.C. § 112, first paragraph
Claims 20 and 22 are rejected under 35 U.S.C. § 112, first paragraph,
as lacking an enabling disclosure of the specification that is commensurate
in scope with the claims.
The recitation to “drive means” in the preamble of claim 20 sets forth
a single means claim which causes undue breadth. Because claim 20 sets
forth a single means, the drive means, claim 20 is rejected under § 112, first
paragraph, for lacking an enabling disclosure, i.e. a specification that is
commensurate in scope with claim 20, pursuant to the holding in In re Hyatt,
708 F.2d 712, 714 (Fed. Cir. 1983). Consequently, claim 20 covers every
conceivable means for achieving the desired result (i.e., every function
recited in claim 20 of driving an electrophoretic display panel, being
arranged for: (i) controlling the potential difference of each picture element
and (ii) application of the grey scale potential difference, and driving a reset
potential difference of each picture element). The Specification, however,
discloses only those means known to Appellants (e.g., drive means 100
shown in Fig. 1 and described at Spec. 7:9-13, 9:11-14, 10:21-25 and 29-32,
and 12:19-22) and does not enable everything within the scope of the single
means claim. See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). Claim 20
is a single element claim (“drive means”) that uses means-plus-function
language to define that lone element as performing every function of the
claim. As such, claim 20 is rejected under 35 U.S.C. § 112, first paragraph,
as lacking an enabling disclosure (i.e., being unduly broad).
Claim 22 is rejected for the same reasons as claim 20 from which it
depends.

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DECISION
(1) The Examiner’s rejections of: (i) claims 1-9 under 35 U.S.C.
§ 102(e) as being anticipated by Zehner, and (ii) claim 21 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Zehner and Amundson
are affirmed.
(2) The Examiner’s rejection of: (i) claims 11, 13-18, and 20 under
35 U.S.C. § 102(e) as being anticipated by Zehner, and (ii) claim 22 under
35 U.S.C. § 103(a) as being obvious over the combination of Zehner and
Amundson are reversed pro forma.
9

(3) We have also entered new grounds of rejections under 37 C.F.R.
§ 41.50(b) for claims 11, 13-18, 20, and 22 as follows:
(a) claims 11, 13-18, 20, and 22 are rejected under 35 U.S.C. § 112,
second paragraph for numerous reasons discussed supra; and
(b) claims 20 and 22 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement because
the “drive means” recited in claim 20 is a single means having undue
breadth.

This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

9
Our reversal of the prior art rejections of claims 11, 13-18, 20, and 22 does
not mean that the Examiner’s findings and conclusions with respect to
Zehner and/or Amundson used in rejecting the claims lacks merit.
Appeal 2010-003268
Application 10/568,644

20

the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD