Intel Corporation

Patent Trials and Appeals Board

Oct 8, 2021

2020005226 (P.T.A.B. Oct. 8, 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.
15/783,302 10/13/2017 Tim Hulford P38854US-C1 1005
75343 7590 10/08/2021
Hanley, Flight & Zimmerman, LLC (Intel)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
WATKO, JULIE ANNE
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
10/08/2021 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):
docketing@hfzlaw.com
jflight@hfzlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIM HULFORD
____________

Appeal 2020-005226
Application 15/783,302
Technology Center 2600
____________

Before KARL D. EASTHOM, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 31, 32, 36–38, 41–43, 47–49, and 52, i.e., all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2021). Appellant identifies the real party in interest
as Intel Corporation. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
The Specification states that the invention concerns a “convertible
tablet device” having two panels “that can be used in at least two different
modes, a ‘tablet mode,’ and a ‘notebook mode.’” Spec. ¶ 20; see also id.
¶ 1.2 In the tablet mode, “the display panel faces outwardly and may provide
touch screen functionality as found in conventional tablets.” Id. ¶ 20; see
also id. ¶ 1. In the notebook or laptop mode, “the two panels may be
arranged in an ‘open clamshell’ configuration that is typical of a portable
computer, such as a notebook, laptop, or other flat screen portable device.”
Id. ¶ 20; see also id. ¶ 1.
The Specification identifies “the complexity of the conversion
mechanisms for changing between notebook and tablet modes” as a
deficiency in existing devices. Spec. ¶ 2. For instance, “[c]urrently
available convertible notebook computers burden the user with complex
hinging mechanisms to convert from one mode to the other.” Id. Hence, the
invention endeavors to provide “improved techniques and apparatus to solve
these and other problems.” Id. ¶ 3.
Exemplary Claim
Independent claim 31 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed October 13, 2017 (based on an ancestor application filed
September 30, 2011); “Final Act.” for the Final Office Action, mailed
October 8, 2019; “Appeal Br.” for the Appeal Brief, filed April 8, 2020;
“Ans.” for the Examiner’s Answer, mailed May 5, 2020; and “Reply Br.”
for the Reply Brief, filed July 6, 2020.
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31. A computing device, comprising:
a first touch panel;
a second touch panel;
a display between the first and second touch panels,
the first touch panel to form a first touch-sensitive
surface on a first side of the display, and
the second touch panel to form a second touch-
sensitive surface on a second side of the display;
an electrochromic material between the second touch
panel and the display;
a lid, the lid to support the display;
a base coupled to the lid,
the base and the lid configurable in a laptop mode and
in a tablet mode;
a sensor to sense a position of the lid relative to the base;
and
a circuit to control a voltage applied to the
electrochromic material, the circuit to control the voltage to:
increase an opacity of the electrochromic material
to decrease a viewability of the display from the second
side of the display, and
increase a transparency of the electrochromic
material to enable the viewability of the display from the
second side of the display and the first side of the display
at a same time when the base and the lid are arranged in
the laptop mode.
Appeal Br. 20 (Claims App.).
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The Prior Art Supporting the Rejection on Appeal
As evidence of unpatentability under § 103(a),3 the Examiner relies on
the following prior art:
Name Reference Date
Sorensson et al. (“Sorensson”) US 2009/0231662 A1 Sept. 17, 2009
Cholewin et al. (“Cholewin”) US 2011/0012921 A1 Jan. 20, 2011
Motoharu JP 06-195151 July 15, 1994
Masakatsu JP 2005-316656 Nov. 10, 2005
The Rejection on Appeal
Claims 31, 32, 36–38, 41–43, 47–49, and 52 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sorensson, Cholewin, Motoharu,
and Masakatsu. Final Act. 2–11.
ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we concur with the
Examiner’s findings and conclusions concerning unpatentability under
§ 103(a). We adopt the Examiner’s findings and reasoning in the Final
Office Action and Answer. See Final Act. 2–11; Ans. 3–13. We add the
following to address and emphasize specific findings and arguments.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013.
Because Application 15/783,302 purports to have an effective filing date
before the AIA’s amendment to § 103, this decision refers to the pre-AIA
version of § 103.
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The § 103(a) Rejection of Claim 31
THE SIMULTANEOUS-VIEWABILITY LIMITATION
As noted above, the § 103(a) rejection of claim 31 rests on Sorensson,
Cholewin, Motoharu, and Masakatsu. See Final Act. 2–6. Appellant argues
that the Examiner erred in rejecting claim 31 because the references fail to
teach or suggest the following simultaneous-viewability limitation in
claim 31: “a circuit to control a voltage applied to the electrochromic
material” to “increase a transparency of the electrochromic material to
enable the viewability of the display from the second side of the display and
the first side of the display at a same time when the base and the lid are
arranged in the laptop mode.” See Appeal Br. 7–19; Reply Br. 1–14. The
Examiner cites the combined disclosures in Sorensson, Motoharu, and
Masakatsu as teaching or suggesting claim 31’s simultaneous-viewability
limitation. See Final Act. 3–6, 11; Ans. 3–5, 8–9, 13.
Specifically, Appellant asserts that Motoharu does not teach or
suggest claim 31’s simultaneous-viewability limitation because “Motoharu
describes a display that can be viewed from the front or the back of a laptop
lid, but only one side at a time.” Appeal Br. 8 (emphasis omitted); see also
Reply Br. 6–7. Appellant also asserts that Motoharu’s Figure 4 shows
switches 3 and 4 “connected to the screen driver (55a) (corresponding to the
screen liquid crystal (12a)) via an OR circuit (59)” and “connected to the
other screen driver (55b) (corresponding to the opposing screen liquid
crystal (12b)) via the OR circuit (59) and a NOT circuit (60).” Appeal
Br. 10 (emphasis omitted); see also Reply Br. 6–7. Appellant then contends
that “[d]ue to the NOT circuit (60) of Motoharu,” the “screen liquid crystal
structures (12a, 12b) are driven one at a time in a mutually exclusive
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manner” so that “only one side of the Motoharu display is viewable at a
time.” Appeal Br. 10–11 (emphasis omitted); see also Reply Br. 6–7.
Appellant’s arguments do not persuade us of Examiner error because
Appellant attacks the references individually. See Ans. 3, 8–10, 12. Where,
as here, a rejection rests on the combined disclosures in the references, an
appellant cannot establish nonobviousness by attacking the references
individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
Ans. 3, 8–10, 12.
The Examiner correctly finds that Sorensson discloses (1) a portable
device with a two-sided display unit including outer electrochromic
layer 310 and inner electrochromic layer 320 and (2) control circuitry to
selectively manipulate each electrochromic layer “into respective reflective
or transparent states” to increase or decrease the “viewability from one side
or another” of the two-sided display unit. Final Act. 2–3 (citing Sorensson
¶¶ 19, 22, 32, 46, 58, Figs. 1A–1B, 2, 3A–3B); Ans. 9–10 (citing Sorensson
¶ 58); see also Sorensson ¶¶ 19, 22, 32, 45–51, 58, Figs. 1A–1B, 2, 3A–3B.
Sorensson explains that “outer electrochromic layer 310 and inner
electrochromic layer 320 may include structures and materials configured
to alternatively transition between reflective and transparent states upon
application of a suitable voltage (or current).” Sorensson ¶ 47. Sorensson
also explains that a “combination of hardware circuitry and software” may
control the transitioning between reflective and transparent states. Id. ¶¶ 45,
48, 50.
The Examiner correctly finds that Motoharu discloses a display device
with a two-sided display unit “capable of switching transmission, shading,
or light emission on both sides of the display unit.” Final Act. 5 (quoting
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Motoharu claim 3); see also Motoharu claim 3, ¶¶ 9–11, 15, 17, Fig. 3.
Motoharu explains that “the display device can be viewed from both front
and rear surfaces using the transmissive display element.” Motoharu ¶ 10.
Motoharu also explains that “it is possible to view the display”:
(1) “from the side of the opposite party facing the operator
when the display device is in an open state”; and
(2) “even in a closed state.”
Id.
Further, the Examiner correctly finds that Masakatsu discloses using
Motoharu’s two-sided display unit such that “the display data is viewed from
both the front and rear sides of the display in the state in which the lid is
open.” Final Act. 5, 11 (quoting Masakatsu ¶ 7); Ans. 4–5 (quoting
Masakatsu ¶ 7); see also Masakatsu ¶¶ 6–7. The Examiner properly reasons
that an ordinarily skilled artisan would have understood that “such dual-
sided viewing of the display of Motoharu could only occur when
transparency adjustable materials 12a and 12b of Motoharu are both
switched to ‘transmission’, i.e., transparent, allowing front and rear viewers
to simultaneously observe display 11.” Final Act. 5.
Regarding Appellant’s arguments about Motoharu’s Figure 4 showing
OR circuit 59 connected to screen driver 55a for material 12a and NOT
circuit 60 connected to screen driver 55b for material 12b, the Examiner
correctly finds that it was “within the level of ordinary skill in the art” to
modify the example hardware configuration in Motoharu’s Figure 4
according to Masakatsu’s disclosure to achieve claim 31’s simultaneous-
viewability limitation. Ans. 3–4, 7 (citing Masakatsu ¶¶ 6–7); see also
Masakatsu ¶¶ 6–7. As evidence that such a modification was “within the
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level of ordinary skill in the art,” the Examiner cites U.S. Patent No.
5,896,575 to Higginbotham et al. (“Higginbotham”). Ans. 4 n.1, 5 n.2,
9 n.3, 11 n.6 (citing Higginbotham 3:26–30, 3:37–40, Fig. 4).
Higginbotham discloses a portable device with a two-sided display
unit providing “the advantage of viewing a single image, such as a message,
from either side of the display.” Higginbotham 3:26–30; see also id. at
3:37–40, 4:63–66, Fig. 4. Appellant does not dispute that Higginbotham’s
two-sided display unit provides “the advantage of viewing a single image,
such as a message, from either side of the display.” See Reply Br. 10. Nor
does Appellant identify any evidence undermining the Examiner’s finding
that it was “within the level of ordinary skill in the art” to modify the
example hardware configuration in Motoharu’s Figure 4 according to
Masakatsu’s disclosure to achieve claim 31’s simultaneous-viewability
limitation. See, e.g., Appeal Br. 16–19; Reply Br. 10, 12–13.
Rather, Appellant asserts that maintaining the rejection “based on
Higginbotham would raise new grounds of rejection.” Reply Br. 10. But a
“request to seek review of the primary examiner’s failure to designate a
rejection as a new ground of rejection in an examiner’s answer must be by
way of a petition to the Director.” 37 C.F.R. § 41.40(a). “Failure of
appellant to timely file such a petition will constitute a waiver of any
arguments that a rejection must be designated as a new ground of rejection.”
Id. Appellant has failed to seek review “by way of a petition to the
Director,” and thus has forfeited its arguments about “new grounds of
rejection” based on Higginbotham. See 37 C.F.R. § 41.40(a).
For the reasons discussed above, the combined disclosures in
Sorensson, Motoharu, and Masakatsu teach or suggest claim 31’s
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simultaneous-viewability limitation. See Final Act. 3–6, 11; Ans. 3–5, 8–9,
13; Sorensson ¶¶ 19, 22, 32, 45–51, 58, Figs. 1A–1B, 2, 3A–3B; Motoharu
claim 3, ¶¶ 9–11, 15, 17, Fig. 3; Masakatsu ¶¶ 6–7.
MOTIVATION TO COMBINE
Appellant argues that the Examiner erred in rejecting claim 31
because “[a] person having ordinary skill in the art would not combine
Masakatsu with Motoharu to arrive at claim 31.” Appeal Br. 11; see also
Reply Br. 2. Specifically, Appellant asserts that Masakatsu’s two separate
displays “obviate the need for the electrochromic material of claim 31 and
also obviate the need for the screen liquid crystal structures (12a, 12b) of
Motoharu.” Appeal Br. 11–12; see also id. at 15; Reply Br. 3. Appellant
characterizes Motoharu’s structures 12a and 12b as “not necessary” and
“useless” in Masakatsu due to Masakatsu’s two separate displays. Appeal
Br. 13, 15.
Appellant’s arguments do not persuade us of Examiner error because
the Examiner does not propose replacing Masakatsu’s two separate displays
with Motoharu’s structures 12a and 12b. See Final Act. 5–6; Ans. 5.
Instead, as discussed above, the Examiner correctly finds that Masakatsu
discloses using Motoharu’s two-sided display device such that “the display
data is viewed from both the front and rear sides of the display in the state in
which the lid is open.” Final Act. 5, 11 (quoting Masakatsu ¶ 7); Ans. 4–5
(quoting Masakatsu ¶ 7); see also Masakatsu ¶¶ 6–7.
ALLEGED HINDSIGHT
Appellant argues that the Examiner erred in rejecting claim 31
because the “feature of increasing a transparency of an electrochromic
material to enable viewability of a display from both sides at a same time is
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not gleaned from either Motoharu or Masakatsu” but “gleaned only from the
Appellant’s disclosure.” Appeal Br. 16; see also id. at 17; Reply Br. 10, 12–
13. Appellant also argues that because the “applied prior art does not teach
or suggest” claim 31’s simultaneous-viewability limitation, that limitation
must have been “gleaned only from the Appellant’s disclosure.” Appeal
Br. 17; see also Reply Br. 10, 12–13.
Appellant’s arguments do not persuade us of Examiner error because
the combined disclosures in Sorensson, Motoharu, and Masakatsu teach or
suggest claim 31’s simultaneous-viewability limitation. See Final Act. 3–6,
11; Ans. 3–5, 8–9, 13; Sorensson ¶¶ 19, 22, 32, 45–51, 58, Figs. 1A–1B, 2,
3A–3B; Motoharu claim 3, ¶¶ 9–11, 15, 17, Fig. 3; Masakatsu ¶¶ 6–7.
Appellant’s arguments rest on the incorrect premise that the “applied prior
art does not teach or suggest” claim 31’s simultaneous-viewability
limitation. See Appeal Br. 16–17.
Additionally, an explicit analysis “whether there was an apparent
reason to combine” the references reduces “the risk of . . . patent examiners
falling prey to hindsight bias.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418, 421 (2007). Here, the Examiner provides an explicit analysis of
reasons to combine the references. See Final Act. 4–6 (citing Cholewin
¶ 43; Motoharu ¶ 7; Masakatsu ¶¶ 27, 51); Ans. 5, 9, 13.
As an example, the Examiner correctly finds that an ordinarily skilled
artisan would have been motivated to combine Cholewin’s teachings about
two-sided capabilities with Sorensson’s teachings to “enable known
graphical user interface interactions and provide support for additional
graphical user interface interactions.” Final Act. 4 (citing Cholewin ¶ 43);
see also Cholewin ¶ 43. As another example, the Examiner correctly finds
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that an ordinarily skilled artisan would have been motivated to combine the
teachings of Motoharu and Masakatsu about two-sided capabilities with
Sorensson’s teachings to “simultaneously view both sides of the display”
while “giv[ing] a presentation.” Final Act. 5–6 (citing Motoharu claim 3;
Masakatsu ¶¶ 7, 27, 51); see also Ans. 5, 9–10, 13; Motoharu claim 3, ¶ 10;
Masakatsu ¶¶ 7, 27, 51. The Examiner explains that “[i]n a presentation
context, ‘both the front and rear sides’ means that both the front and rear
sides are viewed at the same time” such that “[o]ne side would be viewed by
a presenter, and another side would be viewed by an audience.” Ans. 5; see
also id. at 13.
Hence, the Examiner provides “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner’s explicit
analysis of reasons to combine the references demonstrates that the
Examiner did not fall prey to hindsight bias. See Final Act. 4–6; Ans. 5,
9, 13; Cholewin ¶ 43; Motoharu claim 3, ¶ 10; Masakatsu ¶¶ 7, 27, 51.
REASONABLE EXPECTATION OF SUCCESS
Appellant argues that the Examiner erred in rejecting claim 31
because:
(1) the Examiner’s determination that “viewability from both
sides of a display at the same time was predictable before
the effective filing date” rests solely on Masakatsu’s two
separate displays; and
(2) claim 31’s simultaneous-viewability limitation “was not
predictable in view of Masakatsu.”
Appeal Br. 17–18 (quoting Final Act. 5).
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We disagree with Appellant’s argument that the Examiner’s
determination that “viewability from both sides of a display at the same time
was predictable before the effective filing date” rests solely on Masakatsu’s
two separate displays. See Final Act. 5. The Examiner also cites Motoharu,
and Motoharu discloses a display device with a two-sided display unit
“capable of switching transmission, shading, or light emission on both sides
of the display unit.” Id. (quoting Motoharu claim 3); see also Motoharu
claim 3, ¶¶ 9–11, 15, 17, Fig. 3.
Additionally, for an obviousness determination, “the expectation of
success need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007); see also Ans. 12 (explaining that
“obviousness does not require absolute predictability”). The Examiner
properly reasons that “the record is devoid of evidence rebutting the
Examiner’s finding that there is a reasonable expectation of success in
taking” Masakatsu’s disclosure that “the transparency-adjustable display of
Motoharu may be viewed from both sides in a presentation context, and
applying such a suggestion to other transparency-adjustable displays.”
Ans. 13. As an example of another transparency-adjustable display, the
Examiner identifies Sorensson’s two-sided display unit “with its
transparency-adjusting electrochromic layers.” Id.
ALLEGED TEACHING AWAY
Appellant asserts that Masakatsu “teaches away from modifying
Motoharu in the manner alleged by the Examiner” because Masakatsu
describes “the left and right directions of the display data viewed from both
sides of” Motoharu’s two-sided display unit as “unsuitable for use in the
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presentation.” Reply Br. 4–5 (emphasis omitted) (quoting Masakatsu ¶ 7);
see also id. at 3–4 (“Masakatsu identifies the prior art as unsuitable.”).
We disagree that Masakatsu “teaches away from modifying Motoharu
in the manner alleged by the Examiner.” See Reply Br. 4. A reference does
not teach away “if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Masakatsu does not “criticize, discredit, or otherwise discourage”
investigation into a two-sided display unit with both sides viewable at the
same time. See Masakatsu ¶¶ 6–7. As the Examiner properly reasons,
“Masakatsu discusses an obvious way of using Motoharu’s prior art device,
with a small improvement within the level of ordinary skill in the art, then
promptly proceeds to disclose an even better device invented by Masakatsu.”
Ans. 3 (citing Masakatsu ¶¶ 6–7); see also Masakatsu ¶¶ 6–12, 20–28, 50–
52, Fig. 5. “[J]ust because better alternatives exist in the prior art does not
mean that an inferior combination is inapt for obviousness purposes.” In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).
Appellant contends that “Masakatsu describes that the prior art should
not be modified so that ‘the display data is viewed from both the front and
rear sides of the display in the state in which the lid is open’ because it ‘is
unsuitable for use in the presentation.’” Reply Br. 6 (quoting Masakatsu
¶ 7).
Appellant mischaracterizes Masakatsu’s disclosure. See Masakatsu
¶¶ 6–7. Masakatsu discusses a deficiency in a particular two-sided display
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unit with both sides viewable at the same time, i.e., that display data may
appear “upside down” on one of the two sides, and thus “unsuitable for use
in the presentation.” Id. ¶ 7. Masakatsu then discloses an improved two-
sided display unit with both sides viewable at the same time having a “high
degree of freedom” for the “display direction of each display in each state
of opening and closing.” Id. ¶¶ 8–12, 20–28, 50–52, Fig. 5. For instance,
“when ‘0101’ or ‘0111’ is set as the display switching setting information,
display data of the same direction is simultaneously displayed on the
display 25 and 26 on both the front and rear sides when the lid 2 is opened.”
Id. ¶ 51, Fig. 10; see also Final Act. 5–6 (quoting Masakatsu ¶ 51). Contrary
to Appellant’s contention, nothing in Masakatsu teaches that the prior art
should not be modified to include a two-sided display unit with both sides
viewable at the same time. See, e.g., Masakatsu ¶¶ 6–12, 20–28, 50–52.
ALLEGED CHANGE IN PRINCIPLE OF OPERATION
Appellant argues that the Examiner erred in rejecting claim 31
because “[m]odifying Motoharu in view of Masakatsu would impermissibly
change the principle of operation of Motoharu.” Appeal Br. 13; see also
id. at 15; Reply Br. 6–8. Specifically, Appellant asserts that Motoharu’s
Figure 4 depicts “a NOT circuit (60) that causes one screen driver (55b) to
receive an opposite input from that received by the other screen driver (55a)
so that the screen drivers (55a, 55b) drive corresponding ones of the screen
liquid crystal structures (12a, 12b) in a mutually exclusive manner” such that
“only one side of the liquid crystal display panel (11) is viewable at a time.”
Appeal Br. 14 (emphasis omitted); see also Reply Br. 6–7. Appellant also
asserts that Motoharu’s principle of operation “relies on the NOT circuit
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(60)” such that “only one side of the liquid crystal display panel (11) is
viewable at a time.” Appeal Br. 14–15 (emphasis omitted).
We disagree that Motoharu’s principle of operation “relies on the
NOT circuit (60).” See Appeal Br. 14–15. Motoharu describes Figure 4 as
depicting “a hardware configuration” for “a display device according to an
embodiment of the present invention.” Motoharu ¶ 16. Motoharu does not
describe Figure 4 as depicting the invention itself. Id.
Motoharu discloses a display device with a two-sided display unit
“capable of switching transmission, shading, or light emission on both sides
of the display unit.” Motoharu claim 3, ¶¶ 9–11, 15, 17, Fig. 3; see also
Final Act. 5 (quoting Motoharu claim 3). Achieving a two-sided display
unit “capable of switching transmission, shading, or light emission on both
sides of the display unit” does not require the example hardware
configuration in Motoharu’s Figure 4. See id. ¶¶ 9–11, 15–17, Fig. 4.
Figure 4’s circuitry with OR circuit 59 connected to screen driver 55a for
material 12a and NOT circuit 60 connected to screen driver 55b for material
12b represents just one embodiment of circuitry for operating Motoharu’s
two-sided display unit. See id. ¶ 16, Fig. 4.
Appellant contends that “modifying Motoharu in view of Masakatsu
to allow viewability from both sides of the display at the same time would
require a substantial reconstruction and redesign of Motoharu.” Appeal
Br. 15. That contention constitutes attorney argument. Attorney argument
“cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
Further, that contention conflicts with the Examiner’s finding that it
was “within the level of ordinary skill in the art” to modify the example
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hardware configuration in Motoharu’s Figure 4 according to Masakatsu’s
disclosure to achieve claim 31’s simultaneous-viewability limitation. Ans.
3–4, 5 n.2, 7, 9 n.3 (citing Masakatsu ¶¶ 6–7; Higginbotham Fig. 4 and “its
description in the text”); see also Masakatsu ¶¶ 6–7; Higginbotham 3:26–30,
3:37–40, 4:63–66, Fig. 4. The Examiner describes the modification as
“a small improvement,” not “a substantial reconstruction and redesign” as
Appellant contends. Ans. 3; see also Appeal Br. 15.
Appellant asserts that In re Ratti supports its position because the
“court held that the alleged modification of” the primary reference by a
secondary reference “would impermissibly change” the primary reference’s
“principle of operation by requiring a substantial reconstruction and redesign
of its elements.” Appeal Br. 13–14 (emphasis omitted) (citing In re Ratti,
270 F.2d 810, 813 (CCPA 1959)).
We disagree that Ratti supports Appellant’s position. See Appeal Br.
13–14. The circumstances there do not parallel the circumstances here.
Here, the Examiner cites Sorensson as the primary reference. Final Act.
2–6; see also Ans. 13. Appellant does not assert that “the alleged
modification of” the primary reference (Sorensson) by a secondary reference
(Motoharu or Masakatsu) “would impermissibly change” the primary
reference’s “principle of operation by requiring a substantial reconstruction
and redesign of its elements.” See, e.g., Appeal Br. 13–16; Reply Br. 6–8.
SUMMARY FOR CLAIM 31
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 31 as unpatentable
over Sorensson, Cholewin, Motoharu, and Masakatsu. Hence, we sustain
the § 103(a) rejection of claim 31.
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The § 103(a) Rejection of Independent Claims 37, 42, and 48
and Dependent Claims 32, 36, 38, 41, 43, 47, 49, and 52
Appellant does not argue patentability separately for the other pending
claims, i.e., independent claims 37, 42, and 48 and dependent claims 32, 36,
38, 41, 43, 47, 49, and 52. See Appeal Br. 7–19; Reply Br. 1–14. According
to Appellant, “[c]laims 37, 42, and 48 and their dependent claims stand or
fall with” claim 31. Appeal Br. 19. Hence, we sustain the § 103(a) rejection
of the other pending claims for the same reasons as claim 31. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 31, 32, 36–38,
41–43, 47–49, and 52.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
31, 32, 36–
38, 41–43,
47–49, 52
103(a)
Sorensson,
Cholewin,
Motoharu,
Masakatsu
31, 32, 36–
38, 41–43,
47–49, 52

TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED