Marc Trachtenberg et al.

Patent Trials and Appeals Board

Mar 8, 2022

2021001529 (P.T.A.B. Mar. 8, 2022)

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. 14/968,555 12/14/2015 Marc Trachtenberg 18786.00003J 8399 67883 7590 03/08/2022 Pryor Cashman LLP Patent Department 7 Times Square NEW YORK, NY 10036-6569 EXAMINER MCDOWELL, JR, MAURICE L ART UNIT PAPER NUMBER 2612 MAIL DATE DELIVERY MODE 03/08/2022 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 MARC TRACHTENBERG, RYAN KIRCH, and JOHN SHAW ____________ Appeal 2021-001529 Application 14/968,5551 Technology Center 2600 _______________ Before CAROLYN D. THOMAS, JAMES B. ARPIN, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-6, 9-12, 21-24, and 27-32, all of the pending claims. Appeal Br. 8-15. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.2 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for independent claims 1 and 21. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies Videri Inc. as the real party in interest. Appeal Br. 3. 2 We refer to Appellant’s Appeal Brief filed September 21, 2020 (“Appeal Br.”); Reply Brief filed December 22, 2020 (“Reply Br.”); Examiner’s Answer mailed October 28, 2020 (“Ans.”); Final Office Action mailed November 20, 2019(“Final Act.”); and Specification filed December 14, 2015 (“Spec.”). Appeal 2021-001529 Application 14/968,555 2 STATEMENT OF THE CASE Appellant’s invention relates to “a display device comprising a display screen [shown in Figure 3] for electronically displaying an image, said display screen having a textured surface on which a user can write [on the textured surface using chalk] without altering the image.” Spec. 2:7-9. Figure 3 depicting the display device with writing thereon is reproduced below: Figure 3 depicts a display screen for displaying a digital image (e.g., a cup of coffee) with chalk writing (e.g., Today Only $1.00) on its textured surface overlaying the digital image of the cup of coffee. Spec. 6:20-22. 5 Appeal 2021-001529 Application 14/968,555 3 The textured surface of the display screen is formed by first “applying a chemical or mechanical treatment [e.g., a film] directly on said display screen” and then “applying a protective coating on said display screen.” Spec. 3:5-9. This way “the textured surface enables a user to write directly on the screen and to mix digital art with traditional media.” Spec. 5:6-8. Claims 1 and 21 are independent. Representative claim 1 is reproduced below: 1. A display device comprising a display screen for electronically displaying a color image, said display screen having a coating layer formed permanently and directly thereon, said coating layer having a textured surface configured such that a user can write on and mark said textured surface without altering the image when displayed, wherein said textured surface is transparent and stippled. Appeal Br. 18 (Claims App.). REJECTIONS AND REFERENCES (1) Claims 1, 3-6, 9-12, 21-24, 27, 29, and 31 are rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Stevens et al. (US 2003/0137496 A1; published July 24, 2003; “Stevens”) and Coup et al. (WO 2011/140247 A1; published Nov. 11, 2011; “Coup”).3 Final Act. 5-7. (2) Claims 12, 28, 30, and 32 are rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Stevens, Coup, and Pineiro et al. (US 2015/0158325 A1; published June 11, 2015). Final Act. 7-8. 3 The Examiner refers to this reference as “Swim,” but the last name of the first named inventor is “Coup.” Appeal 2021-001529 Application 14/968,555 4 ANALYSIS In support of the obviousness rejection, the Examiner finds Stevens teaches or suggests most limitations of Appellant’s claims 1 and 21, including “a display screen [shown in Figure 5] for electronically displaying [a] color image . . . said display screen having a layer formed permanently and directly thereon, said layer having a textured surface configured such that a user can write on and mark said textured surface without altering the image when displayed.” Final Act. 4-5 (citing Stevens ¶¶ 28, 39-41, Figs. 2, 5, 7). Stevens’ Figure 5 depicting a display device with a drawn graph and writing overlaying a grid and an x-y axis is reproduced below: Figure 5 shows display device 116 providing a whiteboard that enables a user to write on writing surface 202 [shown in Figure 2] over an electronic ..-- 100 1 1 6 y le::: 11 ll I I .I ~ I"\ " J I V i"i Ir ~ ':-... J / \ [::,, r'\r 1-..\--C- Ix: -1-1 11\ I/ ' 1\ , ' / -X .,,_ -- ~ I r. ,,__ 1-..., r,. I 1' = I .._ , ... , ~ - Appeal 2021-001529 Application 14/968,555 5 image without altering the electronic image when displayed. Stevens ¶¶ 13, 16. According to Stevens, “writing surface 202 may comprise a plastic cover [e.g., coating, transparent layer] on which a user may place and erase markings using a writing instrument, such as a dry erase marker, and an eraser.” Stevens ¶ 39. The Examiner acknowledges Stevens’s plastic cover (e.g., coating layer) on writing surface 202 does not have a “textured surface wherein said textured surface is stippled.” However, the Examiner finds Coup teaches this missing feature to support the conclusion of obviousness, further finding, “it would have been obvious . . . to combine the [] coating layer having a textured surface wherein said textured surface is stippled as shown in Coup with Stevens . . . for making an electronic image on a display screen appear as a static or moving work of art (e.g., an oil painting).” Final Act. 5 (emphasis added; citing Coup ¶¶ 2, 31). Appellant presents several principal arguments against the application of the teachings of Stevens and Coup to claim 1. First, Appellant contends Stevens’s “display device 116 [] cannot display a color image” because Stevens’s “display device [] mimics the appearance of ordinary ink on paper, i.e., via pixels” and “can only display black-and-white images, and not color images.” Appeal Br. 9. According to Appellant, “nowhere in Stevens is there any mention of a color other than ‘black’ or ‘white’ in connection with the electronic display device 116.” Reply Br. 8. “Stevens is very clear that the electronic display device 116 is able to display black-and-white colors using a positively or negatively charged electric field” but “does not specify how a skilled artisan could Appeal 2021-001529 Application 14/968,555 6 create the ‘scales of color images’ by configuring and orienting the charged particles.” Id. at 9 (citing Stevens ¶¶ 28, 30). Appellant’s contention is not persuasive of Examiner error. As correctly recognized by the Examiner, Stevens’s “display device can display various scales of color images.” Ans. 3 (citing Stevens ¶ 28). Specifically, Stevens discloses that: Electronic paper display device 116 may comprise a large number of image elements contained within a thin sheet . . . Regardless of the number of image elements employed, each image element may comprise one or more charged particles. A portion of each charged particle may be one color and another portion may be another color. For instance, in a black-and-white display, the charged particles may have a black portion and a white portion. In order to display a particular image, an electrical charge may be applied to the charged particles such that the desired color is displayed. One of ordinary skill in the art will appreciate that the charged particles may be configured and oriented in a variety of ways to display black-and-white images, grey scale images, and various scales of color images. Stevens ¶ 28 (emphasis added). Second, Appellant contends (1) Stevens’s display screen does not have a “textured surface [that] is stippled” and (2) [Coup’s] adi-crackle glaze used to provide a crackle treatment is not the same as Appellant’s claimed “textured surface [that] is stippled” because “applying crackle treatment to an image is clearly not stipping.” Appeal Br. 12-13. According to Appellant, “crackle treatment, as known by skilled artisans, produce[s] intersecting lines similar to a network of fissures or fracture pieces of a ceramic vase held together by glue,” whereas stippling “is defined as by the Merriam-Webster dictionary as ‘to engrave by means of dots and flicks.” Id. Appeal 2021-001529 Application 14/968,555 7 We are not persuaded by Appellant’s contention. The term “stipple” also is defined by Merriam-Webster dictionary as “to apply (something, such as paint) by repeated small touches.” Appeal Br. 12-13. As recognized by the Examiner, Coup’s layered material includes a coating (e.g., layer 110) treated with an acrylic glaze applied in a first layer, via a crystal glaze, and a second layer, via adi-crackle glaze, by way of a brush (e.g., a paint brush). Ans. 3-4 (citing Coup ¶ 31, Fig. 1). As such, we agree with the Examiner that the combination of Stevens and Coup teaches or suggests Appellant’s recited “coating layer having a textured surface configured such that a user can write on and mark said textured surface without altering the image when displayed, wherein said textured surface is transparent and stippled.” Third, Appellant contends “[a] skilled artisan would not be motivated to combine [Coup] with Stevens” for several reasons, including: (1) “there is no incentive to combine a whiteboard inherently used for writing with a device for displaying artistic images” (Appeal Br. 13); (2) Coup’s “ad-crackle glaze is not designed or configured to hold markings from a writing instrument such as a dry-erase marker” (id.); (3) “no skilled artisan would use a whiteboard to create a work of art with an oil-painting effect” (id. at 14); (4) “the crackle treatment layer is not sufficient by itself to cause a ‘brushed-on/aged’ look” because “a crystal glaze is required” but “crystal glazes are known to contain colors” and, as such, “modifying Stevens with [Coup] to obtain a ‘brushed-on/aged’ look would require a colored non-transparent glaze-which is clearly not a transparent coating as recited in claims 1, 9 and 21” (id. at 14); Appeal 2021-001529 Application 14/968,555 8 (5) “first applying adi-crackle glaze to the writing surface 202 and then writing upon the modified writing surface 202 with a dry- erase marker would not create the oil-painting effect on the writing surface 202” (id. at 14); and (6) Stevens’ “whiteboard apparatus 100 [] only displays black-and- white images” and “cannot be considered to appear as a painting” and, as such, “it is even more unlikely that applying adi-crackle glaze to the whiteboard apparatus 100, as is suggested by the Examiner, would produce an image that appears as an oil painting” (id. at 15). Appellant’s contentions are persuasive of Examiner error. While Stevens and Coup teach or suggest Appellant’s recited “coating layer having a textured surface configured such that a user can write on and mark said textured surface without altering the image when displayed, wherein said textured surface is transparent and stippled,” (id. at 15) we agree with Appellant that a skilled artisan would not be motivated to deposit Coup’s “ad-crackle glaze” onto “writing surface 202” of Stevens’ display screen for the purpose of making an electronic image on a display screen appear as a static or moving work of art (e.g., an oil painting), in the manner suggested by the Examiner. Final Act. at 5 (citing Coup ¶¶ 2, 31). For example, Appellant’s claims 1 and 21 provide a coating layer on a display screen having a textured surface so as to enable a user to write and mark directly on the textured surface of the display screen, via chalk, without altering an electronic image displayed on the display screen, as shown in Appellant’s Figure 3. Spec. 5:6-8. In contrast, Coup teaches the use of a layered material on a display screen to filter light emission and add texturing in order to make an electronic image on the display screen to appear as a work of art (e.g., an oil painting). Abstract. According to Coup, the layered material may include a Appeal 2021-001529 Application 14/968,555 9 polycarbonate resin thermoplastic layer (e.g., a clear resin) that “may include a crackle treatment” using “adi-crackle glaze” applied with a brush (e.g., a paint brush) to give an electronic image a “brushed-on/aged” look. Coup ¶ 31. Thus, Coup is concerned with the look or appearance of the underlying image, e.g., a flying dragon, through the crackled surface, not the ability to accept or retain chalk writing on the surface. See, e.g., Coup, Fig. 1. Therefore, the Examiner fails to show that Coup’s crackle-treated surface could accept or retain chalk or what reason a person of ordinary skill in the art would have had to combine Coup’s teachings of such a treatment with Stevens’s teachings to achieve a writable surface, thereby partially obscuring the underlying image. See MPEP § 2143.01(III)-(V). The Examiner shows insufficient reason for a skilled artisan to incorporate Coup’s “adi-crackle glaze” into Stevens’s display screen in order to give an electronic image displayed on the display screen a “brushed- on/aged” look because Appellant’s claims 1 and 21 are not concerned about creating an electronic image displayed on the display screen a “brushed- on/aged” look. Instead, Appellant’s claims 1 and 21 provide a coating layer on a display screen having a textured surface so as to enable a user to write and mark directly on the textured surface, via chalk, without altering an electronic image displayed on the display screen. For these reasons, we do not sustain the Examiner’s obviousness rejection of Appellant’s independent claims 1 and 21 and of dependent claims 3-6, 9-12, 22-24, 27, 29, and 31, which are not argued separately. For the same reasons, we also do not sustain the Examiner’s obviousness rejection of claims 12, 28, 30, and 32 as obvious over Stevens, Coup, and Pineiro, which was not argued separately. Appeal 2021-001529 Application 14/968,555 10 NEW GROUND OF REJECTION Obviousness Rejection of Claims 1 and 21 under 37 C.F.R. § 41.50(b) A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “[H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject independent claim 1 and 21 under 35 U.S.C. § 103 as obvious over the combined teachings of Stevens and Pineiro. As previously discussed, Stevens teaches or suggests most limitations of Appellant’s claims 1 and 21, including “a display screen [shown in Figure 5] for electronically displaying a color image, said display screen having a [] layer formed permanently and directly thereon, said [] layer having a textured surface configured such that a user can write on and mark said textured surface without altering the image when displayed.” Final Act. 4-5 (citing Stevens ¶¶ 28, 39-41, Figs. 2, 5, 7). Appeal 2021-001529 Application 14/968,555 11 As a secondary reference, Pineiro teaches that the display screen (substrate) of a display device can be subject to special-effects treatments for receiving markings (e.g., markers, chalk, paint, and the like). Pineiro ¶ 12. For example, Pineiro discloses that: The special-effects treatments may be available in any number of forms and configured to coat the surface of the substrate. Embodiments of such treatments may be available in forms including, but not limited to: a solution configured to coat the surface of the substrate; a powder configured to coat the surface of the substrate; a gel formulation configured to coat the surface of the substrate; a sheet containing at least a quantity of a special- effects treatment configured to cover the surface of the substrate; an adhesive-backed sheet containing at least a quantity of a special-effects treatment configured to cover the surface of the substrate; and an aerosol application configured to coat the surface of the substrate. In some aspects, a special-effects treatment, such as a high-intensity treatment, may be applied to a number of different types of substrates having a variety of different shapes and/or textures [on its surface]. Pineiro ¶ 14 (emphasis added). According to Pineiro, the special-effects surface may include a washable chalkboard treatment for receiving chalk markings from chalk. Pineiro ¶ 16. Washable chalkboard treatments may be available in forms, such as the appearance of the washable chalkboard surface will vary and may include, for example: (1) a clear [transparent] washable chalkboard surface, (2) a semi-opaque washable chalkboard surface, and (3) an opaque washable chalk board surface. Pineiro ¶ 18. Pineiro, however, is not limited to these embodiments and stippling is a known technique for texturing a surface. See id. ¶¶ 22, 28; see also Pineiro ¶ 4 (“For example, in one embodiment, a surface that was unable to receive chalk markings (e.g., a glossy and/or smooth non-chalkboard surface) may be able to accept chalk Appeal 2021-001529 Application 14/968,555 12 markings (and retain and/or exhibit the chalk markings applied to its surface) after being treated with the washable chalkboard treatment.” (emphasis added)); Stevens ¶ 2 (“For example, the smooth writing surface of the whiteboard allows easy use of the erasable felt tip markers whereas the chalkboard surface provides a somewhat rough textured surface to hold chalk which is used for writing on such surfaces.” (emphasis added)). Based on the combined teachings of Stevens and Pineiro, we find that a skilled artisan would have had reason to treat Stevens’s display screen with a coating layer having a textured surface configured, such that (1) a user can write on and mark said textured surface without altering the image when displayed, and (2) the textured surface of the display screen is transparent and stippled, as recited in Appellant’s claims 1 and 21. See, e.g., Stevens ¶¶ 2-7; Pineiro ¶¶ 12-13. This Board is a reviewing body rather than a place of initial examination. We have made the rejection regarding independent claims 1 and 21 under 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining dependent claims 2-6, 9-12, 22-24, and 27-32 for patentability over Stevens and Pineiro. We leave the patentability determination with respect to these dependent claims to the Examiner once the rejection of Appellant’s independent claims 1 and 21 under 35 U.S.C. § 103 is addressed. See MPEP § 1213.02. CONCLUSION On this record, Appellant persuades us the Examiner errs in rejecting (1) claims 1, 3-6, 9-12, 21-24, 27, 29, and 31 as obvious over the combined teachings of Stevens and Coup; and (2) claims 12, 28, 30, and 32 as obvious Appeal 2021-001529 Application 14/968,555 13 over the combined teachings of Stevens, Coup, and Pineiro. As such, we reverse the Examiner’s rejections of these claims. However, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for independent claims 1 and 21 as obvious over the combined teachings of Stevens and Pineiro. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Grounds 1, 3-6, 9- 12, 21-24, 27, 29, 31 103 Stevens, Coup 1, 3-6, 9- 12, 21- 24, 27, 29, 31 12, 28, 30, 32 103 Stevens, Coup, Pineiro 12, 28, 30, 32 1, 21 103 Stevens, Pineiro 1, 21 Overall Outcome 1, 3-6, 9- 12, 21- 24, 27-32 1, 21 Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 Appeal 2021-001529 Application 14/968,555 14 by the examiner, in which event the prosecution 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. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED 37 C.F.R. § 41.50(b)