Ex Parte Lee et al

Patent Trial and Appeal Board

Dec 17, 2012

12242402 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUNG SUK LEE, FRED C. THOMAS, and PAUL M. HUPMAN
____________________

Appeal 2010-008509
Application 12/242,402
Technology Center 2800
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Before ROBERT E. NAPPI, HUNG H. BUI, and LYNNE E. PETTIGREW,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-12. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 Party in Interest is Hewlett-Packard Development Company L.P. Appeal
Brief filed January 22, 2010 (“App. Br.”).
Appeal 2010-008509
Application 12/242,402

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I. STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ claims relate to a privacy filter used to provide lateral
privacy for a computer user so that an observer from either side of a
computer display cannot read what is being displayed. See generally Spec.
¶0002, ¶0009 and Abstract.
Claims on Appeal
Claim 1 is representative of the invention, as reproduced below with
disputed limitations emphasized:

1. A privacy filter, comprising:

a first light transmissive film comprising a first plurality
of rounded, optically opaque regions extending into a surface
thereof; and

a second light transmissive film disposed adjacent the
first light transmissive film and comprising a second plurality
of rounded, optically opaque regions extending into a surface
thereof,

wherein the first plurality of rounded, optically opaque
regions and the second plurality of rounded, optically opaque
regions are positioned to allow a viewer to view an image
through the privacy filter within a range of viewing angles and
to block viewing of the image through the privacy filter outside
the range of viewing angles.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Erwin U.S. 3,511,563 Nov. 14, 1967
Chiu U.S. 6,398,370 B1 Jun. 4, 2002
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Examiner’s Rejection
Claims 1-12 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Chiu and Erwin.

II. ISSUE
The dispositive issue on appeal is whether the Examiner has erred in
finding that Chiu and Erwin can be properly combined in order to arrive at
Appellants’ invention as recited in independent claims 1 and 8 and their
respective dependent claims 2-7 and 9-12. App. Br. 11-16.

III. DISCUSSION
We are unpersuaded by the Appellants’ arguments against the
Examiner’s rejection of claims 1-12. We adopt as our own (1) the findings
and conclusions forth by the Examiner in the Office action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 3-8) in response to Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner. We further highlight
and address specific findings and arguments only for emphasis as follows.

Claims 1-6 and 8-12
Initially, we note that Appellants’ arguments group claims 1-6 and 8-
12. Accordingly, we select independent claim 1 as representative of this
group.
With respect to independent claim 1, Appellants make several
arguments against the combination of Chiu and Erwin, including:
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(1) Chiu discloses a privacy filter having light-absorbing
regions that comprises parallel, light-absorbing grooves and not
“rounded,” and as a secondary reference, Erwin does not cure
the deficiencies of Chiu because Erwin only teaches concentric
rings in a glare-reducing shield and there is no reason to make
the combination of Chiu and Erwin (App. Br. 10-11);

(2) Even if Chiu and Erwin were combined, the proposed
combination would not yield Appellants’ invention because
Chiu’s external privacy filter would be removed in favor of
Erwin’s internal glare shield (Reply Br. 3);

(3) Examiner’s proposed combination of Chiu and Erwin
is based on impermissible hindsight because Erwin’s glare
shield does not protect privacy (App. Br. 12; Reply Br. 1-3);
and

(4) Erwin’s patent filed in 1976 somehow represents
evidence of a problem (i.e., a privacy filter with spiral shaped
opaque regions) that is a long-felt, yet unsolved need (App. Br.
12).

However, we find none of Appellants’ arguments persuasive. First,
“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result” to be
nonobvious. KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)).
[I]f 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. . . . [A] court must ask whether the improvement is more
than the predictable use of prior-art elements according to their
established functions.

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Id. at 417.
As correctly found by the Examiner, Chiu discloses all limitations of
Appellants’ claim 1, except for light absorbing regions (channels) arranged
in a particular shape, that is, a round shape or concentric rings. Ans. 3-4.
For example, Chiu discloses a light control device 110, shown in FIG. 1,
including a first transmissive film 100A and a second transmissive film
100B, each film having a plurality of light absorbing regions (channels
supported light absorbing materials) 102A or 102B.
FIG. 1 of Chiu is reproduced below.

FIG. 1 shows a cross-section of a light control device 110 including
first transmissive film 100A and second transmissive film 100B.

In addition, we note that Chiu also suggests that the light absorbing
regions (channels supported light absorbing materials) 102A or 102B “can
have any suitable shape, geometry, and dimensions,” and that the light
control device 110 can be adapted to “many different absorbing element
shapes, sizes, and spacings, depending on the desired effect.” See col. 1, ll.
26-28, and col. 2, lines 43-46 of Chiu.
As a secondary reference, Erwin is simply cited, as correctly noted by
the Examiner, for suggesting the shape or configuration of channels, that is,
the channels can be arranged in concentric rings. Ans. 4; also see col. 3, ll.
43-45 of Erwin. Erwin is not cited for the use of glare shields as asserted by
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Appellants. As such, we find that a skilled artisan could have substituted the
channels in a round shape or concentric rings of Erwin for that of Chiu, and
the result of the substitution would have been predictable. We also find that,
contrary to Appellants’ contentions, the proposed combination of Chiu and
Erwin would yield the invention of Appellants’ claim 1.2
Second, as correctly noted by the Examiner:
Any judgment on obviousness is . . . necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness
inquiry necessarily involves some hindsight.”).
Here, the Examiner’s reasons for making the combination are based
on the teachings of Chiu and Erwin themselves. These reasons do not
include knowledge gleaned only from the Appellants’ disclosure.
Accordingly, we are not persuaded that one skilled in the art would not have
been motivated to combine Chiu and Erwin in order to arrive at Appellants’
claim 1.

2 We note that independent claim 8 is broader than claim 1 and is
devoid of the disputed limitation regarding “rounded” optically opaque
regions. As such, Appellants’ arguments are not commensurate with the
scope of independent claim 8. We note that Chiu discloses a light
transmissive film, as shown in FIG. 1 and discussed supra, including a
plurality of optically opaque regions in which each of the first plurality of
optically opaque regions has a curved portion, as recited in Appellants’
claim 8. See col. 9, ll. 46-48, Table III, and claim 10 of Chiu.

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Third, contrary to Appellants’ argument, Erwin’s patent is not
evidence of a long-felt, but unresolved need. A showing of long-felt, but
unresolved need requires that the applicant submit actual evidence of long-
felt need, as opposed to argument. In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
2006). This is because “absent a showing of long-felt need or the failure of
others, the mere passage of time without the claimed invention is not
evidence of nonobviousness.” Id. (emphasis added) (quoting Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)).
Appellants have not presented any evidence that others in the field tried and
failed to solve the need or were working on the problem for a long period of
time in order to support a conclusion of non-obviousness.
For the reasons set forth above, we find that Chiu and Erwin disclose
or suggest all limitations of Appellants’ invention, as recited in claim 1.
Further, we find that the Examiner’s reason to combine the teachings of
these references is supported by articulated reasoning with sufficient rational
underpinning to justify the obviousness conclusion. Therefore, we sustain
the obviousness rejection of representative claim 1 and the claims grouped
with claim 1, and claims 2-6, and 8-12 which were not separately argued.

Claim 7
With respect to claim 7, Appellants argue that neither Chiu nor Erwin,
whether taken in combination or individually, discloses or suggests opaque
regions with a spiral shape. According to Appellants, a spiral opaque region
is substantially different from multiple concentric regions as suggested by
Erwin. App. Br. 12. However, we find this argument unavailing since the
Examiner finds the change in shape of the opaque regions to be well
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recognized by one skilled in the art. Ans. 5. In addition, we note that Erwin
provides further evidence to support the Examiner’s finding. For example,
Erwin suggests that, in addition to the “opaque louvers arranged in
concentric rings,” such configuration “may alternatively be in the form of
concentric circles or a continuous spiral.” See col. 4, ll. 30-31 of Erwin.
Accordingly, we sustain the Examiner’s rejection of claim 7.

V. CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-12 under 35 U.S.C. §103(a) as being unpatentable over
Chiu and Erwin.

VI. ORDER
As such, we affirm the Examiner’s final rejection of claims 1-12
under 35 U.S.C. § 103(a).
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) (2011).

AFFIRMED

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