Saturn Licensing LLCDownload PDFPatent Trials and Appeals BoardAug 5, 20212020006334 (P.T.A.B. Aug. 5, 2021) Copy Citation 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. 15/652,590 07/18/2017 Takeo ARAI 505624US 7149 22850 7590 08/05/2021 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER CATTANACH, COLIN J ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 08/05/2021 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKEO ARAI and JUNJI MORIMOTO Appeal 2020-006334 Application 15/652,590 Technology Center 2800 Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 21–41. Claims App. Claims 2–20 are allowed. Id. Claim 1 is cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to the Specification, filed July 18, 2017 (“Spec.”); Final Office Action, mailed Dec. 27, 2019 (“Final Act.”); Appeal Brief, filed May 26, 2020 (“Appeal Br.”); Reply Brief, filed Sept. 8, 2020 (“Reply Br.”); and the Examiner’s Answer, mailed July 8, 2020 (“Ans.”). 2 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Saturn Licensing LLC. Appeal Br. 2. Appeal 2020-006334 Application 15/652,590 2 II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to a backlight apparatus equipped with a light source unit including light source (7) and lens (1) containing concave light incident surface (1a) with roughening processing portion (1d) to diffuse light emitted therefrom. Lens (1) further includes light guide portion (1b) to further diffuse emitted light passing therethough. Spec. 14: 20–32, id. at 16:4–13. Figure 4, reproduced below, is useful for understanding the claimed subject matter: As depicted in Figure 4 above, lens 1 includes concave light-incident surface (1a) light guide portion (1b), and light-emitting surface (1c). Id. LED blocks (3) includes LEDs (7). Id. Upon entering light-incident surface (1a), light emitted from each of the LED blocks (3) is diffused, then it passes through light guide portion (1b), and it is emitted from the light-emitting surface (1c) from which it is further diffused. Id. Appeal 2020-006334 Application 15/652,590 3 Independent claim 21 is illustrative of the claimed subject matter: 21. A display comprising: a light source; and lenses configured to diffuse light emitted from the light source, each lens comprising: a concave light-incident surface, wherein at least a portion of the light emitted from the light source enters the light-incident surface; a light guide portion through which the light that has entered the light-incident surface passes; a light-emitting surface configured to emit the light that passes through the light guide portion; a bottom surface; and a roughening processing portion disposed on a plane portion of the concave light incident surface, wherein a shape of the light guide portion performs a lens function on light passing through the light guide portion such that the passing light is additionally diffused after diffusion by the roughening processing portion. III. REFERENCES The Examiner relies upon the following references as evidence.3 Name Reference Date Bell US 1,465,585 May 29, 1923 Takekuma US 2003/0067264 A1 Apr. 10, 2003 Hashimoto US 2004/0065894 A1 Apr. 8, 2004 Omata US 2004/0201987 Al Oct. 14, 2004 Segawa US 2007/0070616 Al Mar. 29, 2007 Sakai US 2007/0147073 Al June 28, 2007 Park US 2007/0258247 Al Nov. 8, 2007 3 All reference citations are to the first named inventor only. Appeal 2020-006334 Application 15/652,590 4 IV. REJECTIONS The Examiner rejects claims 21, 22, 24, 25, and 33 under 35 U.S.C. § 102 as anticipated by Park. Final Act. 2. The Examiner rejects claim 23 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Park and Sakai. Final Act. 4. The Examiner rejects claim 23 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Park and Bell. Final Act. 5. The Examiner rejects claims 26–32 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Park and Hashimoto. Final Act. 6. The Examiner rejects claim 34 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Park and Segawa. Final Act. 9. The Examiner rejects claim 35 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Park, Sakai and Takekuma. Final Act. 10. The Examiner rejects claims 36 and 37 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Park, Sakai, Takekuma, and Omata. Final Act. 12. The Examiner rejects claims 38–41 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Park, Hashimoto, and Sakai. Final Act. 13. V. ANALYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 5–10.4 We are unpersuaded by Appellant’s 4 We have considered in this Decision only those arguments Appellant actually raised in the Brief. Arguments not made are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). Appeal 2020-006334 Application 15/652,590 5 contentions. Except as otherwise indicated herein below, we adopt as our own the findings and reasons set forth in the Final Action, and the Examiner’s Answer in response to Appellant’s Appeal Brief. Final Act. 2– 16; Ans. 3–17. However, we highlight and address specific arguments and findings for emphasis as follows. a. Anticipation Rejection Appellant argues that the Examiner errs in finding Park discloses “a shape of the light guide portion performs a lens function on light passing through the light guide portion such that the passing light is additionally diffused after diffusion by the roughening processing portion.” Appeal Br. 5–6. Appellant specifically contends the Examiner errs because Park’s prism pattern embossed on the upper surface (156) of the optical cap (150) would perform a prism function, not a lens function, on light emitted from the upper surface (156). Appeal Br. 6. The Examiner finds Park’s outer surface 156 performs a lens function that additionally diffuses the light first diffused by roughening processing portion 158. Final Act. 3. We are not persuaded by Appellant’s argument because we agree with the Examiner’s finding that Park’s prism pattern 156 is capable of performing a lens function. Park Fig. 3; Ans. 3–7. Furthermore, we do not find a limiting definition in the Specification for the claim term “lens function” that would preclude the Examiner’s broad but reasonable interpretation of the disclosed prism to encompass such a function. See Spec. generally. We agree with the Examiner’s findings because Park’s light emitted from LED 110 first passes through lens 115, and then is diffused after Appeal 2020-006334 Application 15/652,590 6 passing through Park’s roughening processing portion 158, and then is additionally diffused after it passes through Park’s outer surface 156. Park, Fig. 3. Our reviewing court guides that an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Accord Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”). “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Appellant also argues “nothing in Park describes that the shape of the area between the upper and lower surfaces performs any optical function on the light passing through this area.” Appeal Br. 6. We are not persuaded by this argument and we agree with the Examiner’s finding because Park’s optical cap 15 discloses the light passing through the light guide portion. Final Act. 3; Ans. 5. The “lens function” is provided by the lens features of Park as described in Figure 3 and paragraphs 53–58. Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded of Examiner error. Therefore, we sustain the Examiner’s anticipation rejection of claim 21 and not separately argued grouped claims 22, 24, 25, and 33. b. Obviousness Rejections Regarding the rejection of claim 23, Appellant contends Park does not teach the limitation “the bottom surface contacts a side surface of a substrate Appeal 2020-006334 Application 15/652,590 7 of the light source” and argues the Examiner’s interpretation of the recited “side surface of a substrate” ignores the word “side.” Appeal Br. 7. We are not persuaded by Appellant’s arguments because Appellant is arguing the references separately when the rejection for obviousness based upon what the reference combination would have suggested to a person of ordinary skill in the art. “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). The Examiner relies upon the combined teachings of Park and Sakai for at least suggesting the limitations of claim 23. Final Act. 4–5. As correctly noted by the Examiner, Park’s bottom surface 105 contacts side surfaces 154 and 152, thereby teaching the disputed limitations. Park, Fig. 3. Because we are not persuaded of reversible Examiner error, we sustain the Examiner’s obviousness rejection of dependent claim 23. Although Appellant separately argues independent claim 35, these arguments are substantially the same arguments as those made for claim 21. Appeal Br. 9. Therefore, for the same reasons explained above for claim 21, we are not persuaded by Appellant’s arguments on claim 35. We are likewise not persuaded of reversible Examiner error in the rejection of claim 35. Consequently, we sustain the Examiner’s obviousness rejection of independent claim 35. Regarding the separate 103 rejections of claims 26–32, 34, and 36–41, because Appellant does not present substantive patentability arguments, and the additional 103 references do not remedy the deficiencies in the 102 rejection based on Park discussed in the previous section, these claims fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-006334 Application 15/652,590 8 VI. CONCLUSION We affirm the Examiner’s rejections of claims 21–41. VII. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 22, 24, 25, 33 102 Park 21, 22, 24, 25, 33 23 103 Park, Sakai 23 26–32 103 Park, Hashimoto 26–32 34 103 Park, Segawa 34 35 103 Park, Sakai, Takekuma 35 36, 37 103 Park, Sakai, Takekuma, Omata 36, 37 38–41 103 Park, Hashimoto, Sakai 38–41 Overall Outcome 21–41 VIII. 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 Copy with citationCopy as parenthetical citation