LENOVO (SINGAPORE) PTE. LTD.

Patent Trials and Appeals Board

Jun 1, 2021

2019006176 (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.
15/333,316 10/25/2016 NOZOMI ISHIHARA JP920160032-US-NP 7988
124845 7590 06/01/2021
Russell Ng PLLC (LENOVO)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
EXAMINER
SHENG, XIN
ART UNIT PAPER NUMBER
2611
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):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOZOMI ISHIHARA, KYOHEI SUGIYAMA, and
YUICHI SHIGEMATSU
Appeal 2019-006176
Application 15/333,316
Technology Center 2600
Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–14. See Final Act. 1. Claim 15 is
canceled. Id. at 2. 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. Appellant identifies Lenovo Corporation as the real party
in interest. Appeal Br. 3.
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Application 15/333,316

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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to “a method
for preventing burn-in conditions on a display of an electronic device.” Spec.
1:14–15. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An electronic device comprising:
a display; and
a processor
acquires a position of a fixed image displayed on
said display;
determines an average color for pixels within a
plurality of cells located adjacent to said fixed image on
said display, wherein said average color is used as an
adjacent color;
generates an overlay window having a gradient
color that changes from said adjacent color to black;
determines whether or not a cursor is positioned at
said fixed image on said display; and
displays said overlay window by overlaying said
overlay window on said fixed image on said display when
said cursor is not positioned at said fixed image on said
display.
Appeal Br. 9 (Claims App.).
REJECTIONS
Claims 1, 5–8, and 12–14 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Prusia et al. (US 2008/0106649 A1,
published May 8, 2008) (“Prusia”), Oh et al. (US 2017/0039682 A1,
published Feb. 9, 2017) (“Oh”), George (“Use Layer Masks to Fade and
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Blend Images in Photoshop,” 2011), and Varadhan et al. (US 8,527,359 B1,
issued Sept. 3, 2013) (“Varadhan”).
Claims 2 and 9 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Prusia, Oh, George, Varadhan, and Uchiyama (US
2016/0188050 A1, published June 30, 2016).
Claims 3, 4, 10, and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Prusia, Oh, George, Varadhan, and
Aoki et al. (US 2010/0060789 A1, published Mar. 11, 2010) (“Aoki”).
ANALYSIS
We have reviewed the § 103 rejections of claims 1–14 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
We begin with claim construction, focusing on independent claim 1.2
Claim 1 is an apparatus claim that recites as structural components only “a

2 Appellant argues all the appealed claims together (see Appeal Br. 5–7), and
we select independent claim 1 as representative (see 37 C.F.R.
§ 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.”)).
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display; and a processor.” The remaining limitations use present tense
functional language, for example, “acquires a position” and “determines an
average color.”3 An apparatus claim, however, is defined by its structure and
covers “what a device is, not what a device does.” Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Here, the
functional language in claim 1 does not limit the processor to any particular
configuration, and therefore does not further define the structure of the
processor. Rather, claim 1 merely recites what the processor does.
Accordingly, we find claim 1 requires only a display and a processor, where
the processor need only be capable of performing the recited functions. See
In re Translogic, 504 F.3d 1249, 1258 (Fed. Cir. 2007) (construing “coupled
to receive” in a claim for a multiplexer circuit to mean “capable of
receiving,” because the claim language did “not specify any structural
connection for the input terminals”); In re Schreiber, 128 F.3d 1473 (Fed.
Cir. 1997) (finding a claim reciting a device for dispensing popcorn
anticipated by a reference disclosing a structure capable of dispensing
popcorn).
Appellant argues Prusia does not teach the limitation “acquires a
position of a fixed image displayed on said display,” as recited in claim 1.
Appeal Br. 5; Reply Br. 2–3. In particular, Appellant argues that in claim 1

3 Upon further prosecution, the Examiner may consider whether claim 1 is
an indefinite hybrid claim invoking two statutory classes, specifically,
whether it recites an apparatus as well as a method of using the apparatus.
See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005) (“Because claim 25 recites both a system and the method for
using that system, it does not apprise a person of ordinary skill in the art of
its scope, and it is invalid under section 112, paragraph 2.”).
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“the processor acquires the position of a fixed image that had already been
displayed on the display.” Id. In contrast, Appellant argues, Prusia’s analysis
of a video stream for potential burn-in candidates does not relate to an image
that has already been displayed. See id. Appellant also argues Oh fails to
teach the claim 1 limitation of “said fixed image on said display,” because
“Oh deals with raw image data that has not been displayed on a display.” Id.
at 6.
We are not persuaded that the Examiner erred in finding the proposed
combination teaches a processor capable of “acquir[ing] a position of a fixed
image displayed on said display.” Prusia describes performing video
analysis where “video processor 40 can analyze the video stream to identify
any aspects of the video stream that are likely to cause burn-in when video
images derived from the video stream are presented on a display.” Prusia
¶ 17. Prusia thus teaches the two structural elements of claim 1, namely, a
display and a processor.
Prusia further describes examples of burn-in candidates, including
“scoreboards and station identifiers [that] are positioned in a corner of a
video image as semitransparent overlays” and “[c]hannel guides and DVR
progress bars.” Id. ¶ 21. In order to identify these burn-in candidates,
Prusia’s video processor “can be configured to test for semitransparent
overlays” and “those static colors and lines in the particular area where the
guide and/or progress bar is expected.” Id. In order to limit burn-in, Prusia
describes the following:
The color of the pixels used to display a burn-in candidate can be
made to continuously shift, shift in discrete steps and remain for
set durations, or shift in discrete steps and remain until cued by
other changes in the video image (e.g., a scene change). The
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modified color values may be selected to mitigate burn-in effects.
For example, the pixels near the edges of a burn-in candidate can
be shifted . . . to minimize contrast throughout the burn-in
candidate.

. . . [A] burn-in candidate can be made to look at least
semitransparent, to decrease contrast with surrounding pixels, or
to otherwise blend in with the surrounding video image.

Id. ¶¶ 29–30. Here, Prusia’s description of identifying and addressing burn-
in candidates at least suggests the capability to “acquire[] a position of a
fixed image displayed on said display,” as recited in claim 1. Specifically,
one of ordinary skill in the art would have understood that Prusia’s processor
would need to know the position of burn-in candidates to shift pixel colors to
limit burn-in.
Appellant’s argument that Prusia’s video processor does not analyze
“an image that has already been displayed on a display, as claimed” (Appeal
Br. 5), is unavailing. As construed above, claim 1 only requires the
capability of acquiring the “position of a fixed image displayed on said
display.” Prusia’s video processor can acquire the position of a burn-in
candidate, i.e., a “fixed image,” as discussed above. Further, Appellant
provides no reason why Prusia’s video processor would not be capable of
acquiring the position of a burn-in candidate that has already been displayed,
as opposed to a burn-in candidate that exists as video stream data that has
not yet been displayed. In any case, one of ordinary skill in the art would
understand that the ongoing analysis by Prusia’s video processor (see id.
¶¶ 12–17) would result in acquisition of the position of a burn-in candidate
that has already been displayed. That is, burn-in candidates are persistent
aspects of images shown on a display (see, e.g., Prusia ¶ 2 (“Static images
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can cause an uneven aging of the individual pixels of a display, and this can
result in some images remaining permanently visible on the display. This
phenomenon can be referred to as burn-in.”)), and so, after the first video
frame of a burn-in candidate has been displayed, Prusia’s analysis would
necessarily relate to an image that has already been displayed.
As we find Prusia at least suggests the “acquires” limitation, in
particular, acquiring the position of a fixed image that has already been
displayed, we are not persuaded by Appellant’s argument that Oh fails to
teach “said fixed image on said display.” Appeal Br. 6. Specifically,
Appellant’s argument against Oh amounts to an improper attack on the
references individually, given the Examiner’s reliance on the combination of
references, including Prusia, for rejecting claim 1. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”).
Appellant next argues the following:
Oh’s method is related to raw image data and data reconstruction
via prediction, [and] it is different from “determines an average
color for pixels within a plurality of cells located adjacent to said
fixed image on said display, wherein said average color is used
as an adjacent color” that does not require any prediction because
all the image data had been fixed.

Appeal Br. 6. Appellant clarifies:
In other words, since it is a fixed image and none of “pixels
within a plurality of cells located adjacent to said fixed image on
said display” is missing, the claimed average pixel color
determination does not require Oh’s method for handling raw
image data captured using a Bayer color filter. Conversely, Oh’s
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method for handling raw image data captured using a Bayer color
filter is not applicable to the claimed fixed image on a display.
Id.; see also Reply Br. 3. This line of argument is not persuasive of
Examiner error.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, we look to
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. Here, Oh’s use of a Bayer filter pattern
for capturing raw image data (see Oh ¶ 19) need not be capable of
incorporation into Prusia’s video processor for burn-in candidate analysis.
Rather, where Prusia teaches mitigating a burn-in candidate by, among other
techniques, shifting pixel colors so that “the pixels near the edges of a burn-
in candidate can be shifted for decreased contrast relative to neighboring
pixels” (Prusia ¶ 29), Oh offers a way to select a pixel value relative to
neighboring pixels, namely, by averaging neighboring pixels (see Oh ¶ 129).
In other words, Oh shows a known technique applicable to Prusia’s pixel
color shifting. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”). We note that Appellant has not
shown Oh is non-analogous art, or specifically explained why the
Examiner’s rationale for combining Oh with Prusia is deficient.
Finally, Appellant argues that George is non-analogous art. In
particular, Appellant argues that George’s disclosure of the Photoshop®
software “is certainly not related to burn-in prevention that is considered as a
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non-analogous art to George.” Appeal Br. 7. Appellant further argues that
“[t]he Examiner has not provided any adequate justification for combining
the teachings of Prusia, Oh and George when they are clearly non-
analogous.” Id.
We are not persuaded that the Examiner erred in relying on George.
Prior art is analogous to the claimed invention when it “is from the same
field of endeavor, regardless of the problem addressed,” or, if “not within the
field of the inventor’s endeavor,” it “is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011). Here, Appellant has not specifically explained why
George fits into neither of these categories of prior art. Appellant has thus
not carried its burden on appeal to show Examiner error. See In re Kahn, 441
F.3d 977, 985–86 (Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350,
1355 (Fed. Cir. 1998)).
Accordingly, we sustain the Examiner’s § 103 rejection of
independent claim 1, as well as the Examiner’s § 103 rejection of
independent claim 8, and dependent claims 2–7 and 9–14, not argued
separately with particularity. See Appeal Br. 5–7.
DECISION
We affirm the Examiner’s decision rejecting claims 1–14.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–8, 12–14 103 Prusia, Oh, George,
Varadhan
1, 5–8, 12–14
2, 9 103 Prusia, Oh, George,
Varadhan, Uchiyama
2, 9
3, 4, 10, 11 103 Prusia, Oh, George,
Varadhan, Aoki
3, 4, 10, 11
Overall
Outcome
1–14

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED