Ex Parte Whitesides et al

Patent Trial and Appeal BoardMay 8, 2013

12018252 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS H. WHITESIDES, MICHAEL MCCREARY, and RICHARD J. JR. PAOLINI ____________________ Appeal 2010-012561 Application 12/018,252 Technology Center 2800 ____________________ Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012561 Application 12/018,252 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1– 23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection for claim 22. Illustrative Claim The disclosure relates to electrophoretic light modulators. Abstract. Claim 1 is illustrative and is reproduced below with the disputed limitation emphasized: 1. An electrophoretic medium comprising a suspending fluid and a plurality of electrically charged particles disposed in the suspending fluid and capable of moving therethrough on application of an electric field to the suspending fluid, the suspending fluid and electrically charged particles being present as a plurality of discrete droplets, the electrophoretic medium further comprising a continuous phase surrounding the droplets, wherein the difference between the refractive index of the suspending fluid and the continuous phase is not greater than about 0.03. Rejections The Examiner made the following rejections: Claims 1, 2, 6, 12, 13, 22, and 23 stand rejected under 35 U.S.C §102(b) as anticipated by U.S. Pat. No. 6,262,706 (“Albert”) (Ans. 4). Claims 3–5, 7–11, and 14–21 stand rejected under 35 U.S.C. §103(a) as unpatentable over Albert (Ans. 9). Appeal 2010-012561 Application 12/018,252 3 ANALYSIS We have reviewed Appellants’ arguments in their Appeal Brief and have reviewed the Examiner’s response to Appellants’ arguments.1 Claims 1-4, 6, 12, and 13 Appellants argue on pages 13–18 of the Appeal Brief that the Examiner’s rejection of claim 1 is in error.2 This argument presents us with the issue of: Whether the Examiner erred in finding that Albert discloses the limitation of claim 1 that recites “wherein the difference between the refractive index of the suspending fluid and the continuous phase is not greater than about 0.03.” We disagree that the Examiner has erred. Appellants acknowledge that Albert discloses an electrophoretic medium having all features recited in claim 1 except for the specified difference between the refractive index of the suspending fluid and the 1 Appellants present no arguments directed to patentability of claims 18–21, and have accordingly waived any potential argument with respect to such claims. 37 C.F.R. §41.37(o)(2)(2004). We sustain the Examiner’s rejections of those claims pro forma. 2 Appellants present arguments for claims 1, 2, and 6 collectively. Although claims 3 and 4 are addressed under a separate heading (Br. 21), Appellants merely reference the arguments presented for claim 1 without presenting any additional arguments to establish separate patentability. Similarly, claims 12 and 13 are addressed under a separate heading (Br. 18), with Appellants relying on reasoning that parallels that articulated for claim 1. We accordingly treat claim 1 as representative for claims 2–4, 6, 12, and 13. Except for our ultimate decision, those claims are not discussed further herein. Appeal 2010-012561 Application 12/018,252 4 continuous phase (Br. 14). In addressing the Examiner’s citation of col. 20, ll. 16–41 of Albert, particularly the disclosure at ll. 37–41 that “[t]he wall material may … be chosen to match the refractive index of the internal phase of the capsule (i.e., the suspending fluid) or a binder in which the capsules are to be dispersed,” Appellants argue that this defines a “relatively minor objective” in Albert (Br. 17). Appellants further contend that it would be “highly unlikely” for a skilled worker following the teaching of Albert to produce a structure having refractive indices that meet the claim limitation (Br. 17). This argument misapplies the test for anticipation, which is satisfied when a single prior-art reference describes each and every element as set forth in the claim. See, e.g., Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). In the Specification, Appellants describe polymer-dispersed electrophoretic media as subspecies of encapsulated electrophoretic media (Spec. ¶18). Since Albert discloses index matching of a suspending fluid to a capsule wall in an electrophoretic medium, we disagree that the Examiner has erred in finding the limitation disclosed. We accordingly sustain the Examiner’s rejection of claim 1. Claim 22 Appellants argue on pages 18–19 of the Appeal Brief that the Examiner’s rejection of claim 22 is in error. These arguments present us with the following issues: (1) Whether the Examiner erred in finding that Albert discloses “two light-transmissive panels spaced from one another”; and Appeal 2010-012561 Application 12/018,252 5 (2) Whether the Examiner erred in finding that Albert discloses that “at least one of the light-transmissive panels comprises an absorber for electromagnetic radiation of [a wavelength to which the electrophoretic medium is sensitive].” With respect to the first issue, we disagree that the Examiner has erred. We disagree with Appellants’ assertion that Albert has no suggestion that both substrates be transparent and provided with light-transmissive electrodes so that the whole display is light-transmissive (see Br. 18). The Examiner correctly observes that Albert discloses an embodiment at col. 12, ll. 29–38 in which “all of the pixels present in the display are largely transparent,” thereby requiring two transmissive substrates to contain the electrophoretic medium (Ans. 20). Therefore, Albert discloses two light- transmissive panels spaced from one another. With respect to the second issue, the Examiner finds that Albert teaches the carbon black particles are contained on the transparent substrate/panel. Ans. 20. The Examiner finds that this association teaches that the panel comprises an absorber and meets the claim limitation. Ans 20. We disagree; the claim distinguishes between the light-transmissive panels and the electrophoretic medium. Albert teaches the carbon-black particles are part of the electrophoretic medium but we do not find that the light- transmissive panels are also part of the medium. We accordingly do not sustain the Examiner’s rejection. Claim 23 Appellants argue on pages 19–20 of the Appeal Brief that the Examiner’s rejection of claim 23 is in error. This argument presents us with Appeal 2010-012561 Application 12/018,252 6 the issue of whether the Examiner erred in finding that Albert discloses electrically charged, substantially transparent particles within an electrophoretic medium. We disagree that the Examiner has erred. Appellants have not presented sufficient evidence or argument to persuade us of error in the Examiner’s findings. Specifically, Appellants have not shown the Examiner erred in finding Albert discloses a second set of clear or transparent particles that have an electrical charge (see Ans. 7, citing Albert, col. 6, ll. 52–62; col. 7, ll. 37–40) We accordingly sustain the Examiner’s rejection of claim 23. Claim 5 Appellants argue on pages 20–21 of the Appeal Brief that the Examiner’s rejection of claim 5 is in error. This argument presents us with the issue of whether the Examiner erred in finding it obvious over Albert for the suspending fluid to comprise a mixture of a hydrocarbon and chloronaphthalene. We agree that the Examiner has erred. The Examiner identifies a lengthy disclosure in Albert for various compositions of the suspending fluid. This disclosure includes hydrocarbons and “naphthalene” (Albert, col. 16, ll. 43–44), but does not disclose chloronaphthalene. The Examiner notes certain similarities in chemical structures for some of the disclosed compositions to what is recited in the claim (Ans. 21). However, the Examiner has provided insufficient reasoning to support the conclusion that it would be obvious to one of skill in the art to substitute chloronaphthalene for naphthalene in a suspending- fluid mixture. We therefore do not sustain the Examiner’s rejection of claim 5. Appeal 2010-012561 Application 12/018,252 7 Claims 7–11 and 14–17 Appellants argue on page 21 of the Appeal Brief that the Examiner’s rejection of claims 7–11 and 14–17 is in error. This argument presents us with the issue of whether the Examiner erred in finding that Albert discloses “an electrophoretic medium … sandwiched between two transparent substrates” (Br. 21). We disagree that the Examiner has erred. Appellants’ argument refers to the argument that we address supra in connection with the first issue discussed in connection with claim 22. For the reasons we express there, we find that Albert discloses the claimed structure. We accordingly sustain the Examiner’s rejection of claims 7–11 and 14–17. REJECTION OF CLAIM 22 UNDER 37 C.F.R. § 41.50(b) We enter a new ground of rejection of claim 22 under 35 U.S.C. §103(a) as unpatentable over Albert in view of U.S. Pat. No. 6,950,220 (“Abramson”). Except for the limitation of “at least one of the light- transmissive panels compris[ing] an absorber for electromagnetic radiation of [a wavelength to which the electrophoretic medium is sensitive],” Albert discloses all limitations of claim 22 for the reasons given by the Examiner, which we adopt, along with the Examiner’s findings, as our own. In addition, Albert notes the sensitivity of the working lifetime of the electrophoretic medium to ultraviolet wavelengths (Albert, col. 22, ll. 12– 13), i.e., the same reason that Appellants identify for having at least one of the panels comprise an electromagnetic absorber (see Br. 10, citing Spec. Appeal 2010-012561 Application 12/018,252 8 ¶80). Abramson is directed to electro-optic displays (Abramson, col. 1, ll. 18–19), including those having a medium whose lifetime is sensitive to ultraviolet wavelengths (id., col. 13, ll. 46–60). Abramson further discloses including ultraviolet filters and applying them to glass substrates in electro-optic displays to address this sensitivity (id., col. 32, l. 13 – col. 33, l. 30). Accordingly, Abramson teaches light- transmissive panels that comprise an absorber for electromagnetic radiation of this wavelength. Thus, we find Abramson teaches “at least one of the light-transmissive panels comprises an absorber for electromagnetic radiation of this wavelength.” We further find an ordinarily skilled artisan would include such ultraviolet filters with the devices disclosed in Albert to address the recognized ultraviolet sensitivity of the electrophoretic medium. We thus conclude that Albert and Abramson render the invention as recited in claim 22 obvious. CONCLUSION On the record before us, we conclude the following: (1) The Examiner has not erred in rejecting claims 1, 2, 6, 12, 13, and 23 under 35 U.S.C. §102(b) as anticipated by Albert. (2) The Examiner has erred in rejecting claim 22 under 35 U.S.C. §102(b) as anticipated by Albert. (3) The Examiner has not erred in rejecting claims 3, 4, 7–11, and 14–21 under 35 U.S.C. §103(a) as unpatentable over Albert. (4) The Examiner has erred in rejecting claim 5 under 35 U.S.C. §103(a) as unpatentable over Albert. Appeal 2010-012561 Application 12/018,252 9 DECISION The Examiner’s decision rejecting claims 1–4, 6–21, and 23 is affirmed. The Examiner’s decision rejecting claims 5 and 22 is reversed. A new ground of rejection is entered pursuant to 37 C.F.R. §41.50(b), rejecting claim 22 under 35 U.S.C. §103(a) as unpatentable over Albert in view of Abramson. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection … shall not be considered final for judicial review.” This section also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of 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). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) msc