Ex Parte Schrader

Patent Trial and Appeal BoardNov 22, 2013

10524985 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/524,985 10/12/2005 Martin Schrader 088245-0224 3263 23524 7590 11/22/2013 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER MAI, ANH T ART UNIT PAPER NUMBER 2889 MAIL DATE DELIVERY MODE 11/22/2013 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 MARTIN SCHRADER ____________ Appeal 2011-006998 Application 10/524,985 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 26-33 and 35-41. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. Appeal 2011-006937 Application 12/024,470 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to a display device and a method of operating a display device. In general, the claimed device includes (1) a transparent layer through which light is transmitted, (2) an array of lenses through which the light passes, and (3) a pinhole mask with an array of pinholes, each pinhole being associated with a pixel of the display device. An individual lens can focus the light into a pinhole to illuminate that pixel. When light passing through a lens is unfocused, the pixel associated with that lens is darkened. Independent claim 26 is representative of the claims on appeal.1 A copy of claim 26, taken from the Claims Appendix of the Appeal Brief, is set forth below, with the key terms shown in italics: 26. A display device comprising: a substrate layer comprising substantially transparent material; a pinhole mask comprising an array of pinholes, wherein each pinhole of the array of pinholes is associated with a pixel of the display device; and an array of electrically controllable lenses positioned between the substrate layer and the pinhole mask to control the divergence of light received through the substrate and the lenses towards the pinhole mask, wherein the light is focused into a pinhole by a lens of the array of electrically controllable lenses to illuminate the associated pixel and is transmitted unfocused by the lens to darken the associated pixel. 1 Claims 33 and 35-41 are directed to a method of operating a display device, but Appellant has not made separate arguments regarding the patentability of any claim (App. Br. 12). Therefore, the claims will stand or fall together. Appeal 2011-006937 Application 12/024,470 3 The Examiner rejects claims 26, 29, 30, 33, 35, 36, and 41 under 35 U.S.C. § 102(e) as being anticipated by Kawanami, U.S. Patent No. 6,603,444, issued August 5, 2003 (“Kawanami”). The Examiner rejects claims 27, 28, 37, and 38 under 35 U.S.C. § 103(a) as unpatentable over Kawanami in view of Schachar, U.S. Patent No. 5,731,909, issued March 24, 1998 (“Schachar”). The Examiner rejects claims 31 and 39 under 35 U.S.C. § 103(a) as unpatentable over Kawanami in view of Sako, et al., U.S. Patent Publication 2001/0004279, published June 21, 2001 (“Sako”). The Examiner rejects claims 32 and 40 under 35 U.S.C. § 103(a) as unpatentable over Kawanami in view of Do, et al., U.S. Patent No. 5,608,554, issued March 4, 1997 (“Do”). Because the claims stand or fall together, we focus on the anticipation rejection of claim 26. The Examiner finds that each of the elements of claim 26 is disclosed by Kawanami (Ans. 3-4). Appellant does not dispute this finding with respect to all but one of the elements of claim 26 (see, App. Br. 10-12). However, Appellant argues that Kawanami does not disclose the claimed “array of electrically controllable lenses…wherein the light…is transmitted unfocused by the lens to darken the associated pixel” (App. Br. 12, emphasis added). According to Appellant, in order for a display device to fall within the scope of the claims, when light passes unfocused through a lens, it “will pass the substrate and switchable lenses substantially undisturbed, i.e. without change in divergence and fall unto [sic] the pinhole mask” (App. Br. 16). Appellant points to Kawanami’s FIG. 1A as showing that some of the light Appeal 2011-006937 Application 12/024,470 4 passing through the lens is focused (i.e. the divergence of the light is changed), although the light is not focused on the pinholes (App. Br. 14-15). The degree of focus is shown in Kawanami’s FIGS. 1A and 1B as reproduced below: FIGS. 1A and 1B are schematic drawings showing Kawanami’s display element. As may be seen in Kawanami’s FIG. 1A, when the lenses are in the “off” position (i.e. when no voltage is applied to electrolytic solution 107), the light, although bent by the lenses (i.e. showing some amount of “divergence”), is not directed into the pinholes, but instead hits the mask and darkens the pixels (col. 3, ll. 45-57). Appeal 2011-006937 Application 12/024,470 5 The Examiner takes the position that “unfocused,” as used in claim 26, means that “the light passing through the lens is unfocused with respect to the pinholes and is allowed to hit the pinhole mask” (Ans. 8). Therefore, according to the Examiner, the claim limitation “wherein the light…is transmitted unfocused by the lens to darken the associated pixel” reads on the arrangement shown in Kawanami’s FIG. 1A because the light is substantially directed onto the mask, and the pixel is darkened (Ans. 10). Thus, the rejections turn on whether the claim limitation “unfocused” means unfocused with respect to the pinholes (as argued by the Examiner), or allowing light to pass though without change in divergence (as urged by Appellant). It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee” (Id.). In this case, as noted by the Examiner (Ans. 9-10), the Specification states that “when the lenses L are switched off (Fig 1b), the light will pass the substrate S together with the switchable lenses L substantially undisturbed, i.e. without significant change in divergence and fall unto [sic] the pinhole mask M” (Spec. 5, emphasis added). As pointed out by Appellant, a different section of the specification indicates that unfocused Appeal 2011-006937 Application 12/024,470 6 means “without change in divergence” (App. Br. 16). 2 However, claim terms should be given their “broadest reasonable construction consistent with the specification.” In re ICON Health, 496 F.3d at 1379. In this instance, because the specification contains a clear statement that when the lenses are switched off, the light may pass through them “without significant change in divergence” (Spec. 5, emphasis added), we determine that the definition of “unfocused” put forward by the Examiner,3 is the broadest reasonable construction of the term consistent with the specification. This is because the degree of divergence imparted by the “off” lenses to the light is not significant, in that the light is not focused on the pinholes to light the pixels in question. Based on the foregoing determination, we agree with the Examiner’s finding that Kawanami teaches the disputed limitation. A prior art reference anticipates a patent claim under 35 U.S.C. § 102 if it discloses every claim limitation. See, e.g., In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). Accordingly, we also agree with the Examiner’s finding that Kawanami anticipates claim 26, and affirm the Examiner’s rejection of that claim. Because Appellant states that the appealed claims stand or fall together, we likewise affirm the rejections of the remaining claims. 2 The difference between the two definitions is the presence of the word “significant” before the word “change” in the definition relied on by the Examiner (see, Spec. 5) 3 “Unfocused” means that “the light passing through the lens is unfocused with respect to the pinholes, and is allowed to hit the pinhole mask” (Ans. 8). Appeal 2011-006937 Application 12/024,470 7 CONCLUSION We AFFIRM the rejection of claims 26, 29, 30, 33, 35, 36, and 41 under 35 U.S.C. § 102(e) as being anticipated by Kawanami. We AFFIRM the rejection of claims 27, 28, 37, and 38 under 35 U.S.C. § 103(a) as unpatentable over Kawanami in view of Schachar. We AFFIRM the rejection of claims 31 and 39 under 35 U.S.C. § 103(a) as unpatentable over Kawanami in view of Sako. We AFFIRM the rejection of claims 32 and 40 under 35 U.S.C. § 103(a) as unpatentable over Kawanami in view of Do. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED sld