Ex Parte Kokkosoulis et al

Patent Trial and Appeal BoardMar 16, 2017

13625190 (P.T.A.B. Mar. 16, 2017)

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. 13/625,190 09/24/2012 George D. Kokkosoulis 68392US002 1045 32692 7590 03/20/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER KIYABU, KARIN A ART UNIT PAPER NUMBER 2695 NOTIFICATION DATE DELIVERY MODE 03/20/2017 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte 3M INNOVATIVE PROPERTIES COMPANY1 Appeal 2016-006949 Application 13/625,190 Technology Center 2600 Before JASON V. MORGAN, JEREMY J. CURCURI, and AARON W. MOORE, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—22. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine (US 2002/0080494 Al; June 27, 2002), Hinata (US 2004/0051827 Al; Mar. 18, 2004), and Tonar (US 2002/0154379 Al; Oct. 24,2002). Final Act. 10-14. Claims 1 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, and Yamamoto (JP 2003-134206 A; May 9, 2003). Final Act. 14—17. 1 George D. Kokkosoulis and Jane K. Wardhana are named as inventors. Appeal 2016-006949 Application 13/625,190 Claims 1—4, 7—14, 17, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, Kasahara (US 2012/0326997 Al; Dec. 27, 2012), and Tonar. Final Act. 17—22. Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, Kasahara, Tonar, and Latta (US 2010/0199228 Al; Aug. 5, 2010). Final Act. 22—23. Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, Kasahara, Tonar, and Lockhart (US 2013/0198600 Al; Aug. 1, 2013). Final Act. 23—24. Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, Kasahara, Tonar, and Guo (US 2011/0249086 Al; Oct. 13,2011). Final Act. 24—25. Claims 10 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, Kasahara, Tonar, and Buckley (US 6,106,121; Aug. 22, 2000). Final Act. 25-26. Claims 1 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, Quist (US 2002/0044065 Al; Apr. 18, 2002), and Tonar. Final Act. 27—30. Claims 3, 13,21, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Meine, Hinata, Quist, Tonar, and Rosenberg (US 2007/0040033 Al; Feb. 22, 2007). Final Act. 30-32. We affirm. 2 Appeal 2016-006949 Application 13/625,190 STATEMENT OF THE CASE Appellant’s invention relates to “[a] mirror display with controllable information display areas.” Abstract. Claim 1 is illustrative and reproduced below: 1. A mirror display with a controllable information display area, comprising: a mirror having a reflective viewer side and a non-viewer side opposite the viewer side, wherein the mirror comprises a glass sheet and a reflective polarizer on the non-viewer side of the glass sheet; an LCD device located on the non-viewer side of the mirror and having a display area capable of displaying information and having at least one information display area displaying information within the display area; and a processor electronically connected with the LCD device for controlling the information display area, wherein the information within the information display area is viewable through the mirror on the viewer side, wherein the processor controls a position of the information display area on the viewer side of the mirror, the position of the information display area is reconfigurable between a first position within the display area and a second position within the display area different from the first position, and areas of the display area not displaying the information display area are set to a black background. ANALYSIS The Obviousness Rejection of Claims 1 and 11 over Meine, Hinata, and Tonar The Examiner finds Meine, Hinata, and Tonar teach all limitations of claim 1. Final Act. 10—13; see also Ans. 26—29. The Examiner finds Meine teaches all limitations of claim 1 except for the recited (claim 1) “wherein the mirror comprises a glass sheet and a reflective polarizer on the non viewer side of the glass sheet” and the recited (claim 1) “areas of the display 3 Appeal 2016-006949 Application 13/625,190 area not displaying the information display area are set to a black background.” Final Act. 11—12. The Examiner finds Hinata teaches the recited (claim 1) “wherein the mirror comprises a glass sheet and a reflective polarizer on the non-viewer side of the glass sheet.” Final Act. 12. The Examiner concludes: it would have been obvious to one of ordinary skill in the art to modify the display disclosed by Meine to include the features disclosed by Hinata as discussed above because such a modification is based on the use of known techniques to improve similar devices in the same way. Final Act. 12. The Examiner finds Tonar teaches the recited (claim 1) “areas of the display area not displaying the information display area are set to a black background.” Final Act. 12. The Examiner concludes: it would have been obvious to one of ordinary skill in the art to modify the mirror display disclosed by Meine to include [] areas of a display area not displaying an information display area are set to a black background as disclosed by Tonar because such a modification is based on the use of known techniques to improve similar devices in the same way. Final Act. 12—13. Appellant presents the following principal arguments: i. [l]t would be undesirable in Meine, and contrary to its teachings, to set the areas not displaying information to a black background [in Meine’s preferred embodiment]. The display in Meine only displays information in the power on mode, while the power off mode is used to have the entire display function as a mirror. App. Br. 4. 4 Appeal 2016-006949 Application 13/625,190 “Setting areas not displaying information to a black background in [Meine’s] alternative embodiment would result in areas where the reflective operation is not overlaid on the display operation, and information could not be displayed in those areas, contrary to the purpose of this alternative embodiment.” App. Br. 4. ii. “Hinata thus operates analogously to Meine in two modes, display and mirror, and there is no articulated reasoning to combine them when, in doing so, the smart mirror in Meine would still operate the same way in the same two modes.” App. Br. 5. iii. “[I]n Tonar the display device is in front of the mirror and necessarily on the viewer side of it. Applicants thus expressly claim a construction opposite to the device in Tonar and functioning different from the device in Tonar.” App. Br. 5. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We do not see any error in the contested findings and reasons of the Examiner. Nor do we see any error in the Examiner’s conclusion of obviousness. Contrary to Appellant’s argument (i), Meine (119) discloses: Alternatively, the reflective operation can be overlaid with the display operation. The information being displayed by the device appears to the user to originate on the surface of the smart mirror. The reflected image of the user that is provided to 5 Appeal 2016-006949 Application 13/625,190 the user appears to originate at a certain distance behind the mirror (the certain distance being equal to the distance between the source object (e.g. the user) and the mirror surface). Meine thus does not require the display operation to consume the entire smart mirror. We agree with the Examiner that modifying Meine’s smart mirror to include an area not displaying information would have been a predictable use of prior art elements according to their established functions—an obvious improvement. As the U.S. Supreme Court has explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, 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. Sakraida [v. Ag Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Contrary to Appellant’s argument (ii), the Examiner articulates a reason to modify Meine to include features disclosed by Hinata. See Final Act. 12. We agree that modifying Meine’s smart mirror to include Hinata’s glass sheet and polarizer would have been a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. 6 Appeal 2016-006949 Application 13/625,190 Finally, contrary to Appellant’s argument (iii), we agree with and adopt as our own the Examiners explanation: “Tonar was not cited for disclosing a reflective polarizer and sheet of glass as the mirror but for its disclosure of ‘and areas of a display area not displaying an information display area are set to a black background’.” Ans. 27. The Examiner articulates a reason to modify Meine to include features disclosed by Tonar. See Final Act. 12—13. We agree that modifying Meine’s smart mirror to include Tonar’s black background would have been a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. We, therefore, sustain the Examiner’s rejection of claim 1, as well as the rejection of 11, which is not separately argue with particularity. The Obviousness Rejection of Claims 1^4,7-14,17, and 19 over Meine, Hinata, Kasahara, and Tonar The Examiner finds Meine, Hinata, Kasahara, and Tonar teach all limitations of claims 1—4, 7—14, 17, and 19. Final Act. 17—22. Appellant presents the same principal arguments as presented with respect to claim 1. See App. Br. 7—8. For the same reasons discussed above when addressing claim 1, we, therefore, sustain the Examiner’s rejection of claims 1—4, 7—14, 17, and 19. The Obviousness Rejection of Claims 5 and 15 over Meine, Hinata, Kasahara, Tonar, and Latta The Examiner finds Meine, Hinata, Kasahara, Tonar, and Latta teach all limitations of claims 5 and 15. Final Act. 22—23. 7 Appeal 2016-006949 Application 13/625,190 Appellant presents the same principal arguments as presented with respect to claim 1. See App. Br. 8. For the same reasons discussed above when addressing claim 1, we, therefore, sustain the Examiner’s rejection of claims 5 and 15. The Obviousness Rejection of Claims 6 and 16 over Meine, Hinata, Kasahara, Tonar, and Lockhart The Examiner finds Meine, Hinata, Kasahara, Tonar, and Lockhart teach all limitations of claims 6 and 16. Final Act. 23—24. Appellant presents the same principal arguments as presented with respect to claim 1. See App. Br. 8. For the same reasons discussed above when addressing claim 1, we, therefore, sustain the Examiner’s rejection of claims 6 and 16. The Obviousness Rejection of Claims 8 and 18 over Meine, Hinata, Kasahara, Tonar, and Guo The Examiner finds Meine, Hinata, Kasahara, Tonar, and Guo teach all limitations of claims 8 and 18. Final Act. 24—25. Appellant presents the same principal arguments as presented with respect to claim 1. See App. Br. 8. For the same reasons discussed above when addressing claim 1, we, therefore, sustain the Examiner’s rejection of claims 8 and 18. The Obviousness Rejection of Claims 10 and 20 over Meine, Hinata, Kasahara, Tonar, and Buckley The Examiner finds Meine, Hinata, Kasahara, Tonar, and Buckley teach all limitations of claims 10 and 20. Final Act. 25—26. 8 Appeal 2016-006949 Application 13/625,190 Appellant presents the same principal arguments as presented with respect to claim 1. See App. Br. 9. For the same reasons discussed above when addressing claim 1, we, therefore, sustain the Examiner’s rejection of claims 10 and 20. The Remaining Rejections Because we have affirmed the Examiner’s rejection of all the claims, we decline to reach the merits of the remaining rejections over the prior art. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching rejections based on obviousness when claims already rejected as anticipated). DECISION The Examiner’s decision rejecting claims 1—22 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)(1). AFFIRMED 9