E Ink Corporation

Patent Trials and Appeals Board

Sep 30, 2021

2020003600 (P.T.A.B. Sep. 30, 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.
15/443,215 02/27/2017 Karl R. Amundson H-425DIV4CON 8553
26245 7590 09/30/2021
E Ink Corporation
Intellectual Property Department
1000 Technology Park Drive
Billerica, MA 01821
EXAMINER
REED, STEPHEN T
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
09/30/2021 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):
aberryman@eink.com
bbean@eink.com
ip@eink.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL R. AMUNDSON, ALEXANDROS COSMOS ARANGO,
JOSEPH M. JACOBSON, THOMAS H. WHITESIDES,
MICHAEL D. MCCREARY, and RICHARD J. PAOLINI JR.

Appeal 2020-003600
Application 15/443,215
Technology Center 2600
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
CATHERINE SHIANG, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1, 3–15, and 17–28 are pending, stand rejected, are appealed
by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1
See Final Act. 1–2; Appeal Br. 5.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as E Ink Corporation.
Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Feb. 27, 2017
(claiming priority to multiple applications including US 60/319,315, filed
Appeal 2020-003600
Application 15/443,215
2
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, generally “relates
to methods for driving electrophoretic displays using dielectrophoretic
forces.” Spec. ¶ 8. More specifically, Appellant’s claims are directed to a
display and method of operating the display. The display includes a
substrate that defines a cavity and a viewing surface with a light-
transmissive fluid contained in the cavity. The fluid further contains
charged particles. Appellant’s claimed method applies an alternating
electric field to the substrate (the electrodes disposed on the substrate),
which causes the particles to move within the fluid. According to the
method, the alternating electric field moves the particles such that the
particles are “visible at only a minor proportion of the viewing surface and
render[] the display light-transmissive” (claim 1) (Appeal Br. 18 (Claims
App.)). Appellant’s claimed method also applies a direct current electric
field to the substrate, which causes the particles to move such that they
“occupy substantially the entire viewing surface, thereby rendering the
display substantially opaque” (claim 1) (Appeal Br. 18 (Claims App.)). See
Spec. ¶¶ 23–35; Abstract. Claim 1 (directed to method for operating a
display), reproduced below, is illustrative of the claimed subject matter:
1. A method for operating a display, the method
comprising:
providing a substrate having walls defining at least one
cavity, the cavity having a viewing surface; a light-transmissive
fluid contained within the cavity; and a plurality of at least one
type of particle within the fluid;

June 13, 2002); and Appeal Brief (“Appeal Br.”), filed Aug. 21, 2019. We
also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Jan.
24, 2019; and Answer (“Ans.”) mailed Dec. 6, 2019.
Appeal 2020-003600
Application 15/443,215
3
applying to the substrate an alternating electric field
effective to cause movement of the particles so that the particles
are visible at only a minor proportion of the viewing surface and
rendering the display light-transmissive; and
applying to the substrate a direct current electric field
effective to cause movement of the particles such that they
occupy substantially the entire viewing surface, thereby
rendering the display substantially opaque.
Appeal Br. 18 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gates et al. (“Gates”) US 6,504,524 B1 Jan. 7, 2003
Kishi US 2003/0231162 A1 Dec. 18, 2003
(filed June 10, 2003)3

REJECTIONS4
1. The Examiner rejects claims 1 and 3–14 under pre-AIA 35
U.S.C. § 102(e) as being anticipated by Kishi. See Final Act. 4–8.
2. The Examiner rejects claims 15 and 17–28 under 35 U.S.C.
§ 103(a) as being unpatentable over Kishi and Gates. See Final Act. 9–13.

3 The Kishi reference (US 2003/0231162 A1) was filed on June 10, 2003,
and claims benefit of Japanese Application JP 2002-174346, filed June 14,
2002. Appellant does not dispute Kishi is prior art.
4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103. Because the present
application has an effective filing date prior to the AIA’s effective date
(March 16, 2013), this decision refers to 35 U.S.C. § 102(e) and 35 U.S.C.
§ 103(a).
Appeal 2020-003600
Application 15/443,215
4
ANALYSIS
Appellant argues independent claim 1 and dependent claims 3–14
together as a group with respect to the § 102(e) rejection. See Appeal Br.
13–16. Appellant does not provide substantive separate arguments with
respect to the rejection of claims 15 and 17–28. See Appeal Br. 16–17. We
select independent claim 1 as representative of Appellant’s arguments with
respect to claims 1, 3–15, and 17–28. 37 C.F.R. § 41.37(c)(1)(iv).
Anticipation Rejection of Claims 1 and 3–14
The Examiner rejects independent claim 1 (as well as dependent
claims 3–14) as anticipated by Kishi. See Final Act. 4–8; Ans. 4–10.
Specifically, the Examiner finds that Kishi discloses every feature of claim
1, including the disputed limitation of applying an alternating electric field—
“applying to the substrate an alternating electric field” (claim 1) (Appeal Br.
18 (Claims App.))— and that the alternating electric field causes movement
of the particles such that the display is light-transmissive—“effective to
cause movement of the particles so that the particles are visible at only a
minor proportion of the viewing surface and rendering the display light-
transmissive” (claim 1) (Appeal Br. 18 (Claims App.)). See Final Act. 4–6.
More specifically, the Examiner finds that Kishi discloses applying an
alternating electric field and that the alternating electric field causes the
display to be light-transmissive. See Final Act. 5–6 (citing Kishi ¶¶ 61, 70;
Figs. 6A–7F); Ans. 4–10 (citing Kishi ¶¶ 61, 67–77; Figs. 6A–7F).
Appellant “concedes that Kishi describes” each feature of the claimed
“method for operating a display” (Appeal Br. 13) except for the alternating
electric field causing the display to become light-transmissive and the
particles to be visible in only a minor portion of the display. See Appeal Br.
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Application 15/443,215
5
13–16. Appellant contends that the “application of an alternating electric
field in Kishi does not result in the particles being visible at only a minor
proportion of the viewing surface and so rendering the display light-
transmissive, as required by present claim 1” (Appeal Br. 14). See Appeal
Br. 13–16.
Appellant does not persuade us of error in the Examiner’s anticipation
rejection of claim 1. Initially, we agree with the Examiner that Appellant
has conceded that Kishi applies an alternating electric field that causes
movement of charged particles in a light-transmissive fluid. See Ans. 4 (see
also Appeal Br. 14). Kishi describes applying “[s]ame phase continuous
rectangular waves of 100 Hz and ±20 V” “to the first collection electrode 31
and second collection electrode 32.” Kishi ¶ 70. We also agree with the
Examiner that Appellant has further conceded that Kishi’s alternating
electric field would result in movement of the particles such that areas of the
display, at least briefly, would “be devoid of particles,” which “would
necessarily” render the display “light-transmissive as light would be emitted
through the transparent fluid.” Ans. 4 (quoting Appeal Br. 15).
According to the Examiner, Kishi also describes, with respect to
Figure 7A (as well as Figs. 6A, 6F, and 7F), the particles being visible in
only a minor portion of the viewing surface. See Final Act. 5–6; Ans. 6–7.
We agree with the Examiner that the particles in Kishi’s Figure 7A form
layers on the collection electrodes (elements 31 and 32) and, thus, are not
visible in the display area between the display electrodes (elements 21 and
22). See Kishi ¶ 77.
Finally, the Examiner explains that “the display will return to an
intermediate state and reset state and, in doing [so], the particles are moved
by the applied alternating electric field and the display becomes light-
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Application 15/443,215
6
transmissive at several locations because the electrophoretic fluid is
transparent.” Ans. 7. Appellant does not respond to the Examiner’s
clarified findings and expanded explanation in the Examiner’s Answer.
Kishi describes applying an alternating electric field (± 20 V
rectangular waves) to move the particles and reset the display. See Kishi
¶ 70 and Fig. 6A. Kishi also describes resetting the display as shown in
Kishi’s Figure 7A—“the display is brought to the initial reset state to form
an initial state.” Kishi ¶ 77. This comports with the Examiner’s finding that
Kishi discloses resetting the display (moving the particles) and results in the
display becoming light-transmissive with particles being visible at only a
minor proportion of the viewing surface. Although Kishi does not clearly
describe (in ¶ 77) using an alternating electric field to achieve the result
shown in Figure 7A, Figure 7A does illustrate applying opposite voltages
(+20 volts and -20 volts) (i.e., alternate voltages) to the collection electrodes
(elements 31 and 32) such that no particles are present in the display area.
Additionally, although a Reply Brief is not required, Appellant did not
file a Reply Brief and failed to address the Examiner’s clarified findings and
additional discussion of Kishi with respect to the disputed limitations of
claim 1, or otherwise rebut the findings and responsive arguments made by
the Examiner in the Answer. See Ans. 4–10. Accordingly, based on a
preponderance of the evidence, Appellant’s contentions do not persuade us
that the Examiner erred in finding Kishi discloses applying an alternating
electric field that causes movement of particles resulting in “the particles
being visible at only a minor proportion of the viewing surface and
rendering the display light-transmissive” (claim 1).
Therefore, for all the reasons discussed above, Appellant’s
contentions do not persuade us that the Examiner erred in rejecting claim 1
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Application 15/443,215
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as being anticipated by Kishi. Thus, we sustain the Examiner’s anticipation
rejection of independent claim 1 and dependent claims 3–14, not separately
argued with particularity (supra). See 37 C.F.R. § 41.37(c)(1)(iv).
Obviousness Rejection of Claims 15 and 17–28
The Examiner rejects independent claim 15 and dependent claims 17–
28 as obvious over Kishi and Gates. See Final Act. 9–13. Appellant does
not address the obviousness rejection in detail or the individual claims with
specificity. See Appeal Br. 16. Thus, we are not persuaded of error in the
Examiner’s obviousness rejection of claims 15 and 17–28 for the same
reasons set forth with respect to claim 1 (supra). Therefore, we sustain the
Examiner’s obviousness rejections of claims 15 and 17–28.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 1
and 3–14 under 35 U.S.C. § 102(e) as being anticipated by Kishi. Appellant
has also not shown that the Examiner erred in rejecting claims 15 and 17–28
under 35 U.S.C. § 103(a) as obvious in view of Kishi and Gates. We,
therefore, affirm the Examiner’s rejections of claims 1, 3–15, and 17–28.
Appeal 2020-003600
Application 15/443,215
8
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–14 102(e) Kishi 1, 3–14
15, 17–28 103(a) Kishi, Gates 15, 17–28
Overall
Outcome
1, 3–15, 17–
28

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