Citizen Watch Co., Ltd. et al.

Patent Trials and Appeals Board

May 3, 2021

2020000786 (P.T.A.B. May. 3, 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.
15/622,570 06/14/2017 TOSHINOBU KATSUMATA SEI-294US1 2936
23122 7590 05/03/2021
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
CARTER, WILLIAM JOSEPH
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOSHINOBU KATSUMATA and
JUNJI MIYASHITA
____________

Appeal 2020-000786
Application 15/622,570
Technology Center 2800
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 5, 6, and 10–26. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Our Decision refers to the Specification (“Spec.”) filed June 14, 2017, the
Final Office Action dated May 25, 2018 (“Final Act.”), Appellant’s Appeal
Brief (“Appeal Br.”) filed Oct. 23, 2018, the Examiner’s Answer (“Ans.”)
dated Jan. 28, 2019, and Appellant’s Reply Brief (“Reply Br.”) filed Mar.
27, 2019.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Citizen Watch Co., Ltd. and Citizen
Electronics Co., Ltd. as the real parties in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The subject matter on appeal relates to a planar light unit that
illuminates an indicator, such as a watch face, from a rear side. Spec. ¶ 2.
The Specification describes a prior art front light having a light guide that
emits light along the inner circumference of the light guide and a reflecting
surface is provided along an outer circumference of the light guide. Id. ¶ 4.
According to the Specification, an LCD panel that is often employed in the
face looks nicer when lit by a backlight (planar light unit), rather than by a
front light. Id. ¶ 5.
Appellant’s Figure 2 below is a perspective view of light guide plate
22. Id. ¶ 29.

Figure 2 above depicts incident surfaces 22a, 22b, and 22c, which each have
attached thereto an LED for introducing light, and emission surface 22e,
through which the introduced light is emitted. Id. ¶¶ 47–48. The
Specification describes bold line 22d’ as a part of the outer periphery of
emission surface 22e that serves as a diffusing surface. Id. ¶ 49. The
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Specification defines a diffusing surface as an irregularly reflecting surface.
Id. ¶ 53. The Specification describes the incident surfaces as including a
plurality of prisms having a horizontal cross-section of a scalene triangle
shape with the apex of an acute or obtuse angle. Id. ¶¶ 67–68.
Claims 1 and 19, reproduced below from the Claims Appendix to the
Appeal Brief, are illustrative (disputed limitations italicized).
1. A light guide plate for a backlight unit comprising:
an incident surface for receiving light emitted from a
light source;
an emission surface from which the light introduced
through the incident surface is emitted;
an opposing surface disposed so as to oppose the
emission surface; and
a side surface disposed along an outer periphery of the
emission surface and the opposing surface,
wherein the incident surface is formed on the side
surface,
the emission surface includes a planar central portion and
a non-rectangular outer shape, and
at least a part of the side surface except for the incident
surface is formed as a diffusing surface.

19. A backlight unit comprising:
a light source;
a planar light guide plate according to claim 1;
a reflecting sheet disposed adjacent the opposing surface
of the light guide plate;
a diffusing sheet disposed adjacent the emission surface
of the light guide plate, and
at least one prism sheet disposed adjacent the diffusing
sheet.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
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(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After considering
the positions of both the Examiner and Appellant, we are persuaded the
Examiner reversibly erred for the reasons set forth in Appellant’s briefs and
discussed below.
The Examiner rejects the claims under 35 U.S.C. § 103 as follows:
Claims Rejected 35 U.S.C. § References/Basis
1, 2, 5, 10, 11, 16, 17 103 Winkler,3 Pelka4
3, 6, 15, 18 103 Winkler, Pelka, Inui5
12–14 103 Winkler, Pelka, Poli6
19–23 103 Winkler, Pelka, Naijo7
24–26 103 Winkler, Pelka, Naijo, Poli

Appellant separately argues the patentability of independent claim 1
and dependent claim 19. Appeal Br. 5–13. We address the rejections of
claims 1 and 19 below.
Claim 1
The Examiner finds Winkler discloses claim 1’s light guide plate
except for the incident surface formed as a diffusing surface. Final Act. 3.
The Examiner finds Pelka teaches a light guide plate having a part of the

3 US 7,839,726 B2; iss. Nov. 23, 2010.
4 US 6,473,554 B1; iss. Oct. 29, 2002.
5 US 2002/0131261 A1; pub. Sept. 29, 2002.
6 US 5,984,485; iss. Nov. 16, 1999.
7 US 7,942,546 B2; iss. May 17, 2011.
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side surface except for the incident surface is formed as a diffusing surface.
Id. (citing Pelka 7:6–19, item 62). The Examiner determines it would have
been obvious to a skilled artisan to use Pelka’s diffusing surface in
Winkler’s side surface in order to provide more even/uniform light output.
Id. at 4.
Appellant challenges the Examiner’s combination of Winkler and
Pelka on the grounds that “[t]he light guides disclosed by Winkler and Pelka
are designed to perform entirely different light emission profiles,” thus a
skilled artisan would have had no reason to combine their teachings as
suggested by the Examiner. Appeal Br. 8, 11. Appellant asserts that
Winkler’s optical guide internally reflects emitted light until it hits the
reflective surface of an optical extractor to form a decorative image such as a
fireworks display. Id. at 8–9. Pelka, on the other hand, Appellant contends,
is directed to illuminating a display that may use diffusive reflective material
applied to the side and bottom surfaces of a waveguide to provide a uniform
emission of light from the waveguide. Id. at 9–10 (citing Pelka 1:42–44,
7:6–51). Appellant argues that adding a diffusing surface to Winkler’s
optical guide would render it unsuitable for its sole intended purpose of
forming “a very precise figurative image.” Id. at 12 (quoting Winkler 5:8).
We find Appellant’s arguments persuasive of reversible error. As
Appellant points out, the Examiner’s response (Ans. 11–12) that diffusing
the light within Winkler’s optical guide would not render the optical guide
unsuitable for its intended purpose because Winkler explicitly teaches
diffusing or spreading the light within the optical guide as an alternative,
misinterprets Winkler’s disclosure. Reply Br. 2. The Examiner directs us to
Winkler’s statement “alternatively, each of the three networks can be spread
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over a large part of the total optical guide surface, possibly interlaced with
each other.” Ans. 11 (quoting Winkler 6:34–37). The networks that Winkler
refers to, however, are networks of optical extractors. Winkler 6:30–31
(“each of the three optical extractor networks can be arranged in an area of
optical guide 1”); Reply Br. 2. The record supports Appellant’s assertion that
Winkler’s optical extractors form discrete points, i.e., pixels, where light is
reflected out of the waveguide. Reply Br. 2; Winkler 5:63–67. Thus, the
modification of Winkler as the Examiner proposes would render Winkler
unsuitable for its intended purpose.
Because the record does not support the Examiner’s finding that
Winkler discloses an embodiment wherein light is diffused within Winkler’s
optical guide and the Examiner acknowledges the rejection does not add
Pelka’s reflective material 62 to Winkler’s optical extractors 19 (Ans. 13),
we are persuaded the Examiner reversibly erred in rejecting claim 1. “An
invention is not obvious just ‘because all of the elements that comprise the
invention were known in the prior art;’ rather a finding of obviousness at the
time of invention requires a ‘plausible rational [sic] as to why the prior art
references would have worked together.’” Broadcom Corp. v. Emulex Corp.,
732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn
Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)).
In view of the above and for the reasons provided in the Appeal Brief
and the Reply Brief, we reverse the Examiner’s rejection of claim 1.
Because the secondary references do not cure the deficiency in the
combination of Winkler and Pelka for the reasons discussed above, we
likewise reverse the rejections of dependent claims 2, 3, 5, 6, and 10–18.
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Claim 19
Because the Examiner’s rejection of claim 19 relies on the same
combination of Winkler and Pelka and Naijo does not remedy the deficiency
discussed above, we likewise reverse the rejection of claim 19. We also
reverse the rejections of claims 20–23 and 20–26, which depend from claim
19, because the applied secondary references do not cure the deficiency in
the combination of Winkler and Pelka.

CONCLUSION
For these reasons and those the Appellant provides, we reverse the
Examiner’s rejections of claims 1–3, 5, 6, and 10–26 under 35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1, 2, 5, 10,
11, 16, 17 103 Winkler, Pelka
1, 2, 5, 10,
11, 16, 17
3, 6, 15, 18 103 Winkler, Pelka, Inui 3, 6, 15, 18
12–14 103 Winkler, Pelka, Poli 12–14
19–23 103 Winkler, Pelka, Naijo 19–23
24–26 103 Winkler, Pelka, Naijo, Poli 24–26
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Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
Overall
Outcome
1–3, 5, 6,
10–26

REVERSED