Funai Electric Co., Ltd.

Patent Trials and Appeals BoardJun 1, 2021

2020001305 (P.T.A.B. Jun. 1, 2021)

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. 14/091,936 11/27/2013 Akira YOKAWA 102238.66071US 1810 23911 7590 06/01/2021 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER ITSKOVICH, MIKHAIL ART UNIT PAPER NUMBER 2483 NOTIFICATION DATE DELIVERY MODE 06/01/2021 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): edocket@crowell.com mloren@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKIRA YOKAWA, AKIHIRO FUJIKAWA, YASUYUKI FUKUMOTO, and YUTO SUZUKI Appeal 2020-001305 Application 14/091,936 Technology Center 2400 Before JOHN A. JEFFERY, MICHAEL R. ZECHER, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1, 3, 5–13, 15, and 27–29.1 Appeal Br. 4. Claims 2, 4, 14, and 16–26 have been cancelled. See Final Act. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Funai Electric Co, Ltd., as the real party in interest. Appeal Br. 2. 2 All references to the Final Action refer to the Final Office Action mailed on December 6, 2018 (“Final Act.”). Appeal 2020-001305 Application 14/091,936 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to a display device capable of suppressing a reduction in the rigidity of a rear side holding member. Spec. 1:31–2:2. The display device includes display portion having a heat radiation member contacting the holding member and a substrate mounting member. Id. at 20:8–14, 23:13–22. Independent claim 1 is illustrative: 1. A display device comprising: a display portion; a holding member made of resin, holding the display portion from a rear side, and formed with an opening or a notch; a substrate mounting member made of metal, mounted on the holding member, and mounted with a circuit substrate, a first protruding portion provided along an outer periphery of the substrate mounting member; a second protruding portion provided along an edge of the opening or an edge of the notch of the holding member; and a cover member provided separately from the substrate mounting member and the holding member, arranged in a region including the opening or the notch of the holding member, and covering the substrate mounting member from the rear side in a state where a rear surface of the holding member is exposed, wherein the holding member and the cover member constitute a rear chassis, and the substrate mounting member and the holding member are assembled in a state where the first protruding portion and second protruding portion are in contact with each other, the display portion further includes a heat radiation member made of sheet metal, the heat radiation member is fastened to the holding member in a state where the substrate mounting member and the heat radiation member are in contact with each other and in a state where the substrate mounting member is held between the heat radiation member and the holding member. Appeal 2020-001305 Application 14/091,936 3 Appeal Br. 20 (Claims App.). REFERENCES Name Reference Date Kimura et al. (“Kimura”) US 5,531,950 July 2, 1996 Watase et al. (“Watase”) US 2006/0182948 A1 Aug. 17, 2006 Okuda US 2008/0043413 A1 Feb. 21, 2008 REJECTION Claims 1, 3, 5–13, 15, and 27–29 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Okuda, Kimura, and Watase.3 OPINION Appellant argues that the Examiner’s obviousness rejection of the claims are in error because the combination of references does not teach or suggest each element of the claims. We begin with claim 1. Claim 1 recites, inter alia, the display portion further includes a heat radiation member made of sheet metal, the heat radiation member is fastened to the holding member in a state where the substrate 3 The claims are examined under the pre-American Invent Act first to invent provisions, because the application was filed on November 27, 2013, contains a priority claim to a foreign application filed before March 16, 2013, and the Examiner did not find, nor did Applicant indicate, that the application contained, at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. Appeal 2020-001305 Application 14/091,936 4 mounting member and the heat radiation member are in contact with each other and in a state where the substrate mounting member is held between the heat radiation member and the holding member. Appeal Br. 20 (Claims App.). The Examiner finds Okuda to teach display portion (liquid crystal display panel (“LCD”) 3), holding member (resin frame 8), and substrate mounting member (metal plate 9), in which the substrate mounting member (metal plate 9) is arranged between a lower frame 2 and the holding member (resin frame 8). Final Act. 5. The Examiner does not find Okuda to teach a heat radiation member. Id. at 7. The Examiner finds the claimed heat radiation member to be taught by Watase’s heat releasing sheets (citing Watase ¶ 10), and also points to Watase’s description of “[a]ttaching heat releasing parts such as a heat sink or heat pipe or method of aperturing a metal sheet and attaching blower.” Final Act. 8 (citing Watase ¶ 13). With respect to the configuration and attachment of the heat radiation member to the holding member and substrate mounting member, the Examiner states, Here, Okuda is cited to teach “a holding member made of resin” as “A resin frame 8” in Column 8, lines 30-31, and “a substrate mounting member made of metal, mounted on the holding member” as “the reinforcing sheet 9 of a metallic plate is arranged between the lower frame 2 and the resin frame 8” in Column 8, lines 52-54. Then Watase teaches the “the heat radiation member is fastened to the holding member” as “screws for attaching the sheet [heat radiation] to the casing” which corresponds to the holding member of the claims and the frame of Okuda, in Paragraph 332. Ans. 9. The Examiner also finds that fastening a heat radiation member to a holding member is conventional in the display art because displays produce Appeal 2020-001305 Application 14/091,936 5 heat that is conducted and radiated through practically all of its members. Ans. 6. The Examiner further finds that rearrangement of components that do not modify the operation of the device cannot patentably distinguish the claimed invention from the prior art. Id. Reasoning that “the arrangement necessarily follow[s] the function, [the] heat radiation member must be attached outside the circuits that produce heat (example of a substrate and its mounting member) but inside the display casing (example of a holding member).” Id. at 9–10. Appellant argues that Okuda, Kimura, and Watase, either alone or in combination, do not teach or suggest the above-mentioned limitations of claim 1. Appeal Br. 4–5. Appellant characterizes Watase as merely teaching a resin-coated metal sheet having a favorable heat releasing property and a favorable self-cooling property, and which is particularly useful as a casing for electronic equipment. Id. at 8. Appellant points out that a portion of Watase relied upon by the Examiner is a description of problems encountered in the prior art. Id. (citing Watase ¶ 13 (“attaching heat releasing parts such as a heat sink or heat pipe or method of aperturing a metal sheet and attaching blower . . . may also result in similar problems.”)). Appellant further argues that Watase does not teach or suggest a display portion including a heat radiation member, in which a substrate mounting member is held between the heat radiation member and a holding member. Id. at 9. We are persuaded by Appellant’s arguments. The specific configuration of claim 1 at issue requires: (1) a heat radiation member included in a display portion; (2) the heat radiation member fastened in Appeal 2020-001305 Application 14/091,936 6 contact with the holding member; and (3) the substrate mounting member held between the heat radiation member and the holding member. Appeal Br. 20 (Claims App.). The Examiner’s obviousness rejection admits of two possible interpretations, neither of which clearly account for each of the claimed members as arranged in the claim. Missing from either combination is any teaching of the heat radiation member being included in a display portion, and any teaching of the substrate mounting member being held between the heat radiation member and the holding member. Under the first interpretation, we understand the Examiner to find that combining Watase and Okuda results in Watase’s heat radiation member being attached to the casing of Okuda (i.e., Okuda’s lower frame 2) by a holding member (i.e., Watase’s screw). Ans. 9–10 (citing Okuda Fig 4). However, this interpretation finds the casing, not the substrate mounting member as claimed, to be held to the heat radiation member and the holding member. The casing cannot also be the substrate mounting member, because the Examiner clearly points to Okuda’s casing 2 as reading on the claimed “rear cover member,” distinct from Okuda’s “reinforcing sheet 9” that is read on substrate mounting member. Final Act. 5–6. Furthermore, this interpretation results in the claimed “holding member made of resin” being both Okuda’s resin frame 8 and Watase’s screw. Consequently, under the first interpretation, the Examiner has not shown sufficiently how Okuda and Watase would be combined to teach all of the claimed elements in their specific arrangement. Under the second interpretation, we understand the Examiner to find that combining Watase and Okuda results in a holding member (i.e., Appeal 2020-001305 Application 14/091,936 7 Okuda’s resin frame 8) having a heat radiation member fastened thereto (i.e., Watase’s metal sheet attached by a screw) and a substrate mounting member (i.e., Okuda’s reinforcing sheet 9) mounted on the holding member. Ans. 9. However, Okuda has not been shown to teach or suggest a display portion, mounting member, and substrate mounting member that is in the claimed configuration such that insertion of Watase’s heat radiation member would result in the heat radiation member being included in a display portion, and the substrate mounting member being held between the heat radiation member and the holding member. Okuda’s Figure 4 is reproduced below: Figure 4 shows a device having a vertical arrangement of discrete parts, which, from top to bottom, are: upper frame [1], LCD display portion [31–35] connected to integrated circuit [4], light guide [6] and LEDs [7], Appeal 2020-001305 Application 14/091,936 8 resin frame [8], reflective sheet [10], metal mount [9], and cover member [2]. Okuda ¶¶ 51–66. The Examiner equates the LCD display portion to the claimed display portion, resin frame 8 to the claimed holding member and metal mount 9 to the claimed substrate mounting member. Final Act. 5. To meet the claim requirement that the heat radiation member be included in the display portion, the combination would need to result in the heat radiation member being in the display portion; i.e., above the resin frame 8. However, to meet the claim requirement that the substrate mounting member is held between the heat radiation member and the holding member, the combination would need to also result in the heat radiation member being below metal mount 9. Thus, based on the Examiner’s reliance on the Figure 4 arrangement of Okuda, the heat radiation member would need to be co- located in two separate places, and the Examiner does not address how the cited teachings lead to this arrangement. Nor does the Examiner provide any details as to how Okuda would be modified to meet the claimed arrangement without reading a single member of Okuda as two different claim elements, as discussed above, which would be improper under controlling case law. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”). When a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the claim’s terms. See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three separate means not anticipated by structure containing only two means using Appeal 2020-001305 Application 14/091,936 9 one element twice). Consequently, under the second interpretation, the Examiner has not shown sufficiently how Okuda and Watase would be combined to teach all of the claimed elements in their specific arrangement. The Examiner provides an additional explanation of how the components of Okuda and Watase might be combined to teach the claimed invention. The Examiner explains that the claimed arrangement would be taught because “[c]omponent arrangements or rearrangements which do not modify operation of the device cannot be relied upon to patentably distinguish the claimed invention from the prior art.” Ans. 6. However, the Examiner does not explain sufficiently how these parts in Okuda, with the addition of a heat radiation member from Watase, would be rearranged to result in the claimed arrangement, beyond the two interpretations discussed above. Nor has the Examiner explained sufficiently how any such rearrangement of the resin frame, LCD panel, and reinforcing sheet to meet the claimed arrangement of holding member, display portion, and substrate mounting member would be accomplished without modifying the operation of Okuda’s device. Further, Okuda provides numerous statements explaining the advantages of its particular configuration of vertically stacked components. See, e.g., Okuda ¶¶ 66 (providing resistance to noise and electromagnetic wave radiation), 69 (suppressing breakage of LCD panel 3), 70 (inhibiting deviation of the mounting angle of the LEDs), and 71 (inhibiting deformation of backlight panel 4). The Examiner has not addressed these stated advantages of Okuda’s Figure 4 arrangement, and explained how those advantages would be maintained through the Examiner’s rearrangement of LCD panel, resin frame 8, and reinforcing sheet 9 into new Appeal 2020-001305 Application 14/091,936 10 relationships to accommodate a heat radiation member included in the LCD panel portion and holding the reinforcing sheet 9 to the resin frame 8. Accordingly, we are persuaded by Appellant that the Examiner has not shown adequately how a mere rearrangement of parts, without modifying the operation of a device, would result in the applied combination of references to teach or suggest all elements of claim 1 in the claimed configuration. Consequently, we are persuaded by Appellant that the combination of Watase, Kimura, and Okuda has not been shown to teach or suggest the above-discussed limitations of claim 1. We are persuaded of error in the Examiner’s obviousness rejection of claim 1, and reverse the Examiner’s obviousness rejection of claim 1. Claims 3, 5–13, 15, and 27–29 depend either directly or ultimately from claim 1. For the same reasons as expressed above, we determine that the Examiner’s obviousness rejection of those claims is in error. Accordingly, we reverse the Examiner’s obviousness rejection of claims 3, 5–13, 15, and 27–29. CONCLUSION For the above-described reasons, we reverse the Examiner’s obviousness rejections of claims 1, 3, 5–13, 15, and 27–29 as being obvious over the applied references under 35 U.S.C. § 103(a), as detailed below. Appeal 2020-001305 Application 14/091,936 11 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5– 13, 15, 27–29 103(a) Okuda, Kimura, Watase 1, 3, 5– 13, 15, 27–29 REVERSED