Ex Parte Mi et alDownload PDFPatent Trial and Appeal BoardApr 16, 201312074979 (P.T.A.B. Apr. 16, 2013) 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. 12/074,979 03/07/2008 Xiang-Dong Mi K93751 9778 7590 04/17/2013 Edwin Oh Rohm and Haas Electronic Materials LLC 455 Forest Street Marlborouth, MA 01752 EXAMINER LEE, JONG SUK ART UNIT PAPER NUMBER 2885 MAIL DATE DELIVERY MODE 04/17/2013 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 XIANG-DONG MI and QI HONG ____________ Appeal 2010-012502 Application 12/074,979 Technology Center 2800 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012502 Application 12/074,979 2 STATEMENT OF THE CASE The Patent Examiner finally rejected claims 1-8. Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. INVENTION This invention “relates to a backlight unit including a light guiding plate and a turning film article for enhancing luminance and []particularly relates to a light guiding plate that emits light of different principle angles for different wavelengths and provides polarized light output and reduces color separation by employing a light source comprising individual sources of differing colors.” (Spec. 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A backlight unit containing a light source, a light guiding plate, and a turning film having a light entry and a light exit surface comprising first prismatic structures on the exit surface, wherein (a) the first prismatic structures on the turning film are characterized by a far base angle (β1) and a near base angle (β2); (b) the light source comprising an array of individual sources of differing colors, including, red, green and blue lights, (c) the light guiding plate being located to provide light from each individual light source having a different principle angle to the turning film for each color; and the light guiding plate being arranged in a manner relative to the light source and the turning film and its first prismatic structures and base angles so as to reduce the amount of color separation at the exit surface of the turning film compared to the same device using a single light source. Appeal 2010-012502 Application 12/074,979 3 REJECTIONS Claims 1-5, 7, and 8 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Kim (U.S. Pat. App. 2007/0064444). Claim 6 stands rejected under 35 U.S.C § 103(a) as being unpatentable over the combined teachings and suggestions of Kim and Arai (US Pat. 6,027,220). Contentions Appellants contend that “the backlight unit of claim 1 requires, in part, ‘a light source, a light guiding plate, and a turning film having a light entry and a light exit surface comprising first prismatic structures on the exit surface … the light guiding plate being located to provide light … to the turning film for each color.” (App. Br. 3). As to the specifics of the claimed “turning film,” Appellants point to the discussion of a turning film in the background and Figure 2A in the Specification. (App. Br. 3-4). The Examiner disagrees: In section I the appellant argues “In short, prism [sheet] 32 [of Kim] is not a turning film.” The appellant points to the specification pages 7-10 to outline the structural details of the instant turning film. The examiner fails to find any of these structural details to which the appellant refers within the claim language, apart from the prismatic structures on the exit surface. The appellant also points to the background as teaching numerous turning films. The examiner fails to correlate the teachings of these references as a means to suggest that the reference to Kim was insufficient to read on the claims. Therefore the examiner maintains that the prism sheet [32] of Kim with the prismatic structures on the exit surface of the film is sufficient to meet all the structural requirements of the claimed turning film. The appellant also tries to distinguish the turning film from the prism sheet of Kim because turning films allegedly Appeal 2010-012502 Application 12/074,979 4 redirect light “directly emitting from the light guiding plate”. Further the applicant states that, “In a turning film backlight system, there is no diffuser between the light guiding plate and the turning film.” However, the examiner asserts that that the features upon which appellant relies (i.e., direct incident of light/lack of a diffusion sheet) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Claim 1, in section 3, states the light guiding plate is located to provide light … to the turning film. The claim does not require the light guiding plate provide light directly to the turning film. (Ans. 8-9) (parallel citation omitted). ANALYSIS Independent Claim 1 Issue: Under §102, did the Examiner err in finding that Kim expressly or inherently discloses a “turning film” within the meaning of claim 1? During patent examination, a claim is given its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, such an interpretation must not import limitations from the Specification into the claims. “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. … [C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). This reasoning is applicable here. Therefore, we decline Appellants’ invitation to read limitations from the Specification into the claims. (App. Appeal 2010-012502 Application 12/074,979 5 Br. 3-4). We agree with the Examiner (Ans. 8-9) that Appellants are relying on a detailed description of Figure 2A in the Specification to distinguish their invention over Figures 2 and 3 of Kim. (App. Br. 4). We find the discussion in Appellants’ Specification (Spec. 7:5-9) merely provides a broad general description of a “turning film” and is not a limiting definition per se. (See Spec. 7: 5-9).1, Moreover, to the extent Appellants urge patentability based on the description of the claimed “turning film” in the Specification, we observe Appellants expressly state that turning films are “known in the art and discussed in the background.” (Spec. 7:5).2 See MPEP §2129: “A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102.” See also Riverwood Int’l Corp. v. R.A. Jones 1 Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.” (citation omitted)). 2 See Spec. 7:5-9—“As known in the art and discussed in the background, a turning film, broadly termed light-redirecting articles or light-redirecting films, is an optical film that redirects the more or less collimated light output emitted from a light guiding plate from a large off angle toward normal or viewing direction.” (Emphasis added). Appeal 2010-012502 Application 12/074,979 6 & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro- Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988). Therefore, on this record, we are not persuaded of Examiner error regarding the anticipation rejection of claim 1, and claims 2-5, 7, and 8 which are dependent thereon (not separately argued). See 37 C.F.R. § 41.37(c)(1)(iv). Regarding dependent claim 6, Appellants contend that Arai does not overcome the deficiencies with Kim. (App. Br. 4). However, we find no deficiencies with Kim for the same reasons discussed above regarding claim 1. Therefore, we also sustain the Examiner’s obviousness rejection of claim 6 over the combined teachings and suggestions of Kim and Arai. DECISION We affirm the Examiner’s rejection under § 102 of claims 1-5, 7, and 8. We affirm the Examiner’s rejection under § 103 of claim 6. 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). ORDER AFFIRMED peb Copy with citationCopy as parenthetical citation