Ex Parte Samadani et al

Patent Trial and Appeal BoardApr 21, 2016

12914579 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/914,579 10/28/2010 22879 7590 04/25/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Ramin Samadani 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. 82264811 6072 EXAMINER FLORES, ROBERTO W ART UNIT PAPER NUMBER 2621 NOTIFICATION DATE DELIVERY MODE 04/25/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAMIN SAMADANI and IAN N ROBINSON Appeal2014-006217 Application 12/914,579 Technology Center 2600 Before ST. JOHN COURTENAY, III, MELISSA A. HAAPALA, and MONICA S. ULLAGADDI, Administrative Patent Judges. RAAP ALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appeal2014-006217 Application 12/914,579 TI'-JVENTION Appellants' invention is directed to a lighting control system that controls the lighting sources in a display system. Spec. i-f 13. Claim 1 is exemplary of the subject matter on appeal: 1. A display system comprised of: a display, the display including a display screen for operating in at least a transparent mode; a lighting characteristic assessment component for determining the lighting characteristics of the content on the display screen and the lighting characteristics behind the display screen; and an adaptive lighting control component for controlling an at least one lighting source and the lighting characteristics of the content on the display screen, wherein the at least one lighting source and the user are located on opposite sides of the display screen and modifying at least one of the lighting characteristics of the content on the display screen or the lighting characteristics of the at least one lighting source, wherein said modifying is performed in response to a comparison of the lighting characteristics of the content on the display screen and the lighting characteristics behind the display screen. REJECTIONS ON APPEAL Claims 10-16 stand rejected under 35 U.S.C. Â§ 101 as being nonstatutory subject matter. Claims 1--4, 6-8, 10, 13, 14, 17, 19, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Ichikawa (US 5,266,930; issued Nov. 30, 1993) and Kumon (US 2008/0211832 Al; published Sept. 4, 2008). 2 Appeal2014-006217 Application 12/914,579 Claims 5, 15, and 16 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Ichikawa, Kumon, and Ryu (US 2007/0164988 Al; published July 19, 2007). Claim 9 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Ichikawa, Kumon, and Estevez (US 2010/0045569 Al; published Feb. 25, 2010). Claims 11, 12, and 18 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination Ichikawa, Kumon, and Tomite (US 2008/0024523 Al; published Jan. 31, 2008). ISSUES Appellants' contentions present us with the following issues: A) Did the Examiner err in finding the combination of Ichikawa and Kumon teaches or suggests "the at least one lighting source and the user are located on opposite sides of the display screen" ("user" limitation), as recited in independent claim 1? B) Did the Examiner improperly combine the teachings of Ichikawa, Kumon, and Estevez? C) Did the Examiner improperly combine the teachings of Ichikawa, Kumon, and Tomite? ANALYSIS We have reviewed the Examiner's rejections in consideration of Appellants' contentions and the evidence of record. We disagree with Appellants' conclusions that the Examiner's rejections of the claims are in error. 3 Appeal2014-006217 Application 12/914,579 35 U.S.C. Â§ 101 Rejection Appellants do not submit any arguments contesting the 35 U.S.C. Â§ 101 rejection of claims 10-16. Accordingly, we sustain this rejection. See Hyattv. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection to the Board, ... the Board may treat any argument with respect to that ground of rejection as waived."). 1 Issue A: Claims 1-8, 10, 13-17, 19, and 20 Appellants contend the combination of Ichikawa and Kumon does not teach or suggest the "user" limitation recited in claim 1.2 App. Br. 4--8; Reply Br. 1-2. In particular, Appellants argue Ichikawa does not teach or suggest the lighting source and the user are located on opposite sides of the display screen because the light emitting portion taught by Ichikawa is on the same side of the shield as the person wearing the helmet. App. Br. 5---6; Reply Br. 1-2. Appellants further argue Ichikawa requires the light emitting portion 63 and the user to be on the same side of shield 6 and thus if Kumon 1 In the event of further prosecution of this application, we agree with the Examiner (Final Act. 4) that Appellants may amend the claims to recite "non-transitory" to overcome the rejection. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential); David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). 2 We observe the disputed "user" limitation does not appear to impart any structural differences to the display system and therefore may not be entitled to patentable weight. See Catalina Marketing Int'!., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (patentatibilty of apparatus claims depends on the claimed structure, not on the use of that structure). Because a "user" (i.e., a person) is not an apparatus, the "user" recited in claim 1, is not part of the "display system" apparatus of claim 1, under a broad but reasonable interpretation. 4 Appeal2014-006217 Application 12/914,579 teaches "opposite sides," then Ichikawa and Kumon teach away from each other. App. Br. 7-8. We are not persuaded by these arguments. The Examiner finds that Ichikawa teaches the recited display screen (transparent shield 6) and the at least one lighting source (light emitting portion 63). Ans. 2-3 (citing Ichikawa Fig. 23); see also Final Act. 4--5. The Examiner further finds that Kumon teaches the lighting source and the user are located on opposite sides of the display screen. Final Act. 6 (citing Figs. 1 and 6). We are not persuaded by Appellants' arguments that Ichikawa does not teach the lighting source and user are on opposite sides because the rejection is based on a combination of Ichikawa and Kumon and Appellants do not dispute the Examiner's findings that Kumon teaches this limitation. 3 See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references."). We also disagree with Appellants' contention that Ichikawa and Kumon teach away from each other. A reference teaches away when a person of ordinary skill would be discouraged from following the path set out in the reference. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference that does not criticize, discredit, or otherwise discourage investigation into the path taken by the applicant does not teach away from the claimed solution. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004 ). Appellants do not provide sufficient persuasive argument or evidence to establish that Ichikawa requires the light emitting portion 63 to be on the same side of shield 6 as the user. Nor do Appellants provide 3The Examiner makes additional findings that Ichikawa also teaches the user and the lighting source are on opposite sides. Ans. 3--4. 5 Appeal2014-006217 Application 12/914,579 persuasive argument or evidence to establish that Kumon criticizes, discredits, or otherwise discourages placing the light emitting portion 63 to be on the other side of shield 6 opposite from the user. For the reasons stated above, Appellants fail to persuade us of error in the rejection of claim 1. Accordingly, we sustain the 35 U.S.C. Â§ 103(a) rejection of: (1) claim 1; (2) independent claims 10 and 17, for which Appellants present the same arguments made for claim 1 (App. Br. 8-13); and (3) their dependent claims 2--4, 6-8, 13, 14, 19, and 20, for which Appellants do not present separate arguments for patentability (App. Br. 8, 9, 13). With respect to claims 5, 15, and 16, Appellants present the same arguments as those made for claim 1 and merely additional contend that Ryu does not make up for the purported deficiencies that Appellants argue are present in the rejection of independent claims 1 and 10. App. Br. 13-15. As Appellants do not otherwise separately argue these claims with particularity, we sustain the 35 U.S.C. Â§ 103(a) rejection of claims 5, 15, and 16 for the reasons discussed supra. Issue B: Claim 9 Appellants contend the rejection of dependent claim 9 is improper for the same reasons as its independent claim 1 and Estevez does not remedy the purported deficiencies of claim 1. App. Br. 16. For the reasons discussed supra in Issue A, we are not persuaded by this argument. Appellants further argue Estevez requires its electronic device to be hand held and Ichikawa requires a helmet, and therefore, the rejection of claim 9 is improper because the references teach away from each other. Id. However, Appellants fail to provide persuasive argument or evidence that 6 Appeal2014-006217 Application 12/914,579 either reference criticizes, discredits, or otherwise discourages the claimed solution. See Fulton, 391 F.3d at 1201. Furthermore, to the extent Appellants' argument is directed against bodily incorporation of the features of the reference, all of the features of the structure in Estevez (e.g., the handheld mobile device) need not be bodily incorporated into the teachings of the primary reference (helmet). See Keller, 642 F.2d at 425. Appellants fail to persuade us that the Examiner improperly combined Ichikawa, Kumon, and Estevez. Accordingly, we sustain the 35 U.S.C. Â§ 103(a) rejection of claim 9. Issue C: Claims 11, 12, and 18 With respect to claims 11, 12, and 18, Appellants repeat the same arguments made with respect to their independent claims and additionally argue Tomite teaches away from displaying velocity on the shield of a helmet. App. Br. 17-19. We are not persuaded of error. Appellants do not provide persuasive argument or evidence that Tomite criticizes, discredits, or otherwise discourages displaying velocity on the shield. See Fulton, 391 F.3d at 1201. Therefore, we sustain the 35 U.S.C. Â§ 103(a) rejection of these claims. DECISION We affirm the Examiner's decision rejecting claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 7