Ex Parte Gardiner et al

Patent Trial and Appeal Board

Jul 24, 2013

11928999 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK E. GARDINER, SANFORD COBB, JR.,
KENNETH A. EPSTEIN, and WADE D. KRETMAN
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Appeal 2011-000551
Application 11/928,999
Technology Center 2800
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Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
DANIEL N. FISHMAN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/928,999

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5:
Claims 1-4 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Winston (US 5,303,322; issued Apr. 12, 1994);1
Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over
Winston in view of Ishikawa (US 5,575,549; issued Nov. 19, 1996).
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Cf. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker,
977 F.2d 1443, 1445) (Fed. Cir. 1992)).
We reverse.

STATEMENT OF CASE
Independent claim 1 is illustrative of the claimed invention:
1. A lightguide, comprising:
a first surface and a second surface opposing the first
surface, a first pattern of optical structures formed in and at
least partially extending across the first surface, a second
pattern of optical structures formed in and at least partially
extending across the second surface, the first pattern of optical
structures primarily arranged to extract light from the
lightguide, the second pattern of optical structures primarily
arranged to mask non-uniformities in light exiting the
lightguide.

1 The introductory sentence of the anticipation rejection states that claims 1-5
are rejected under 35 U.S.C. § 102(b) (Ans. 3). However, the body of this
rejection only addresses claims 1-4, not claim 5 (Ans. 3-4). Accordingly, we
interpret only claims 1-4 as being rejected under 35 U.S.C. § 102(b).
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CONTENTIONS
Appellants assert, inter alia, that due to the meaning of the claim term
“extract,” the language of independent claim 1, “the first pattern of optical
structures primarily arranged to extract light from the lightguide,” requires
that the first and second patterns of optical structures must be formed in the
lightguide itself – not in optical layers or films that are coated on the
lightguide (App. Br. 4-5). That is, Appellants assert that the relied upon
Figure 12R of Winston does not disclose patterns of optical structures
formed in the surfaces of wedge layer (or lightguide) 12, itself (App. Br. 3-
4). Rather, Winston discloses patterns formed in the light directing layers
262 and 268 that are formed on the wedge 12 (id.).
The Examiner does not dispute that Winston discloses patterns of
optical structures are formed only on the light directing layers, as opposed to
on the wedge (Ans. 5). The Examiner takes the position, though, that claim
1 may nonetheless be reasonably interpreted as reading on Winston’s
embodiment of Figure 12R (id.). The Examiner reasons that Winston’s
wedge 12, in combination with the two light redirecting layers 262 and 268,
may be reasonably interpreted as reading on a lightguide, as claimed. This is
because “light is not ‘extracted’ from the light guide until it leaves the
surface of optical structure layer 262” (id.).

ANALYSIS
The Answer clearly explains the Examiner’s position. However, the
Answer sets forth no evidence to support the Examiner’s position – that one
of ordinary skill in the art at the time of the invention would have reasonably
interpreted the term “lightguide” to read, not only on a lightguide structure,
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such as a wedge or slab, but also to read on such a lightguiding structure in
combination with light redirecting layers that sandwich the lightguiding
structure.
Moreover, even if we were to assume for the sake of argument that
one of ordinary skill in the art generally did use the term “lightguide” to
refer to multi-component structures, as found by the Examiner, such a
finding would not be dispositive of the present appeal. Such a finding would
not answer the question of whether it would be reasonable to interpret the
present application’s claims that broadly.
The claims . . . are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)
(citations and internal quotation marks omitted).
Appellants’ Specification employs the term lightguide in the
following manner. The Figure 1 embodiment sets forth “an illumination
system,” or collection of components, 10 that includes wedge 16; light
redirecting elements 24, 26, and 28; and reflective polarizer 30 (Fig. 1; Spec.
6). As noted, the collection of components that forms system 10 is
collectively referred to as “an illumination system” (Spec. 6). In contrast,
the wedge, alone, is referred to as “the lightguide” (Spec. 6 (“The lightguide
16 may be a wedge, a modification thereof, or a slab”)).
Appellants’ discussion of Figures 15 and 16 uses the term
“lightguide” in a consistent manner (Spec. 14-15). Figures 15 and 16 solely
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depict a patterned wedge 134, alone. The wedge is referred to as a
lightguide (id.).
The Specification further states in relation to Figures 15 and 16, “as
described above, the patterns 122 and 128 may be formed first in optical
films that are later coupled to the wedge, for example, by bonding. In
another construction, surfaces 122 and 128 are formed in the wedge by
injection molding or casting” (Spec. 15). That is, the Specification
distinguishes a lightguide from additional layers that may be formed thereon.
Read as a whole, Appellants’ Specification makes reasonably clear
that the term “lightguide” is being used in a manner that limits this claim
term to a lightguiding structure, itself. The Specification does not
reasonably support a broader interpretation where “lightguide” reads on a
lightguiding structure in combination with light redirecting layers. The
Examiner has not (1) pointed to where the present record indicates that it
was known to pattern the surfaces of a lightguide, itself, or (2) asserted that
it would have been obvious to have modified Winston’s illumination
systems so as to pattern the surfaces of the lightguide itself.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s anticipation rejection of independent claim 1. Accordingly,
we will not sustain the Examiner’s rejection of that claim, or of claims 2-4,
which depend from claim 1.
With respect to the remaining rejection of dependent claim 5, the
Examiner does not rely on Ishikawa to cure the deficiency of the anticipation
rejection, explained above. For the reasons discussed above, then, we
likewise do not sustain the obviousness rejection of dependent claim 5.

Appeal 2011-000551
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DECISION
The Examiner’s decision rejecting claims1-5 is reversed.

REVERSED

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