Japan Display Inc.

Patent Trials and Appeals Board

Oct 20, 2020

14992662 - (D) (P.T.A.B. Oct. 20, 2020)

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.
14/992,662 01/11/2016 Chihiro Tanaka 3724484.00039 8800
29175 7590 10/20/2020
K&L Gates LLP-Sony
P. O. BOX 1135
CHICAGO, IL 60690
EXAMINER
CROCKETT, RYAN M
ART UNIT PAPER NUMBER
2871
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIHIRO TANAKA, KOJI NOGUCHI,
NAOSUKE FURUTANI, and TOSHIHIKO TANAKA

____________

Appeal 2019-006258
Application 14/992,662
Technology Center 2800
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–3 and 5–17.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Japan Display Inc. as the real party in
interest. Appeal Brief filed May 17, 2019 (“Appeal Br.”) at 2.
2 Final Office Action entered July 26, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a display device. Appeal Br. 5–6. Claim 1
illustrates the subject matter on appeal and reads as follows:
1. A display device comprising:
a display panel comprising a first surface and a second
surface on an opposite side to the first surface, configured to
display an image on the second surface, a first insulating
substrate including the first surface, and a second insulating
substrate including the second surface;
a cover glass comprising a third surface and a fourth
surface on an opposite side to the third surface, the third surface
facing the second surface of the display panel;
an adhesive layer configured to fix the display panel and
the cover glass to each other;
a polarizer fixed to the fourth surf ace of the cover glass;
and
a detection electrode formed directly in contact with the
second surface of the second insulating substrate and directly in
contact with the adhesive layer, and configured to detect an
object approaching or contacting the polarizer,
wherein the cover glass is disposed between the second
insulating substrate and the polarizer, and
wherein the polarizer forms an outermost viewer-side
surface.

Appeal Br. 20 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered June 24, 2019 (“Ans.”):
I. Claims 1–3, 5–7, and 11–17 under 35 U.S.C. § 103 as
unpatentable over Noguchi (US 2010/0182273 Al, published July 22, 2010)
in view of Ishii (US 2015/0177876 A1, published June 25, 2015) and Hwang
(US 2016/0062505 A1, published March 3, 2016);
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II. Claims 8 and 9 under 35 U.S.C. § 103 as unpatentable over
Noguchi in view of Ishii, Hwang, and Oh (2011/0228189 A1, published
September 22, 2011); and
III. Claim 10 under 35 U.S.C. § 103 as unpatentable over Noguchi
in view of Ishii, Hwang, Lai (US 2014/0323723 A1, published November
12, 2015), and Tyler (US 4,413,252, issued Nov. 1, 1983).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–3 and 5–17 under 35 U.S.C. § 103, for the reasons set forth in the
Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence that Appellant provides for each issue that
Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the
Examiner had failed to make a prima facie case, “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”)).
Appellant presents arguments for reversal of the rejection of
independent claim 1, and argues that the rejections of independent claim 14
and the dependent claims should be reversed for the same reasons as the
rejection of claim 1. Appeal Br. 8–18. We accordingly limit our discussion
to claim 1, and the remaining claims on appeal stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv).
Noguchi discloses a liquid crystal display device comprising liquid
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crystal layer 6 disposed between thin film transistor substrate 21 and glass
substrate 41 (display panel), touch detection electrode 44 (detection
electrode) disposed directly adjacent to glass substrate 41, and polarizing
plate 45 (polarizer) disposed directly adjacent to touch detection electrode
44. Noguchi ¶¶ 1, 58–62; Fig. 9. Noguchi discloses that polarizing plate 45
(polarizer) forms an outermost viewer-side surface of the liquid crystal
display device. Noguchi Fig. 9.
The Examiner finds that Noguchi does not disclose that Noguchi’s
liquid crystal display device includes a cover glass adhered to the display
panel, and the Examiner relies on Ishii for suggesting inclusion of such a
cover glass in Noguchi’s liquid crystal display device. Final Act. 5–7; Ans.
5–6. The Examiner relies on Hwang for suggesting positioning the cover
glass suggested by Ishii in Noguchi’s device between polarizing plate 45
(polarizer) and the display panel. Final Act. 6–7; Ans. 6–7.
Ishii discloses display device 10 comprising image display mechanism
(liquid crystal display device) 12 including liquid crystal display panel 15
comprising polarizer 18 and liquid crystal cell 17. Ishii ¶¶ 51, 52. Fig. 2.
Ishii discloses that display device 10 also comprises touch panel 20 disposed
on the outward, viewer side of display panel 15 above polarizer 18 of
display mechanism 12. Ishii ¶¶ 51, 57, 58; Fig. 2. Ishii discloses that touch
panel 20 comprises electrodes 40, adhesive layer 25 disposed directly
adjacent to electrodes 40, and cover layer 28 disposed directly adjacent to
adhesive layer 25. Ishii ¶¶ 57, 58, 66, 67; Fig. 2. Ishii discloses that cover
layer 28 functions as a dielectric body and may be comprised of a glass or
resin film. Ishii ¶ 59. Ishii further discloses that “cover layer 28 forms the
outermost viewer-side surface of the display device 10 and functions, in the
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display device 10, as a cover to protect the touch panel device 20 and the
image display mechanism 12 from the outside.” Ishii ¶ 59; Fig. 2.
Hwang discloses touch panel 100 comprising dielectric member 130.
Hwang ¶ 50; Fig. 2. Hwang discloses that touch panel 100 is “disposed (or
attached to) on a display panel of an image displaying device.” Hwang ¶ 50;
Figs. 2 and 3. Hwang discloses that “if the display panel is a liquid crystal
display panel (or organic light emitting display panel) including an upper
polarizing film, the touch panel 100 may be disposed on the upper polarizing
film, or may be disposed between an upper substrate [of the display panel]
and the upper polarizing film.” Hwang ¶ 50.
The Examiner finds that Hwang thus discloses “that when integrating
a touch panel [including a dielectric member] with a display device, the
touch panel may be arranged one of two ways: on the upper polarizing film
of the display; or between the upper substrate of the display and the upper
polarizer.” Ans. 6 (citing Hwang ¶ 50). The Examiner determines that
Hwang, therefore, “teaches two equivalent, suitable alternative
configurations or arrangements of the touch panel with respect to the upper
polarizer of the display device.” Ans. 6.
In view of these disclosures in Ishii and Hwang, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to protect the display panel (glass substrate 41, liquid crystal layer 6, thin
film transistor substrate 21) of Noguchi’s liquid crystal display device as
disclosed in Ishii by disposing a touch panel glass cover layer (dielectric
member) as disclosed in Ishii between Noguchi’s polarizing plate 45
(polarizer) and substrate 41 of Noguchi’s display panel, in view of Hwang’s
disclosure that such an arrangement is a suitable configuration for
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integrating a touch panel including a dielectric member into a liquid crystal
display device. Final Act. 4–7.
Appellant argues that Ishii “emphasizes that the cover glass should be
the outermost layer” of Ishii’s display device 10 by disclosing that cover
layer 28 is a light transmissive layer comprised of a glass or resin film that
functions as a dielectric body and an input surface of touch panel device 20,
forms the outermost viewer-side surface of display device 10, and protects
touch panel device 20 and the image display mechanism 12 from the outside.
Appeal Br. 13 (emphasis omitted).
Appellant’s arguments are improperly based on Ishii alone, however,
and do not take into consideration Noguchi’s disclosure that polarizer 45
functions as a touch input surface for Noguchi’s liquid crystal display
device. Nor do Appellant’s arguments take into consideration Hwang’s
disclosure of touch panel 100 including dielectric member 130 that may be
positioned between an upper polarizing film and an upper substrate of a
display panel. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
Positioning Ishii’s touch panel glass cover layer 28 between
Noguchi’s polarizing plate 45 (polarizer) and upper substrate 41 of
Noguchi’s display panel would impart the intended effect of cover layer 28
as a light transmissive layer that functions as a dielectric body and protects
Noguchi’s display panel, while retaining Noguchi’s polarizer as a touch
input surface. In other words, As the Examiner explains, “cover glass 28 of
Ishii is not required to be the outermost layer for its functions described in
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Ishii to be performed, and the arrangement of the cover glass 28 of Ishii
below a polarizing layer capable of acting as a touch input surface would not
destroy the function taught in Ishii.” Ans. 7.
Appellant argues that although Hwang discloses that touch panel 100
“may be disposed on the upper polarizing film, or may be disposed between
an upper substrate and the upper polarizing film,” Hwang does not disclose
that these alternative embodiments of touch panel 100 include a cover glass,
and, therefore, “this structural element is not taken into consideration when
the statements about changing the order of layers are considered.” Appeal
Br. 14–15. Appellant argues that “nothing in Hwang teaches that, in the
alternative embodiment where the touch panel is disposed between the upper
substrate and the polarizing film, the touch panel includes a cover glass.”
Appeal Br. 15.
As discussed above, however, Hwang discloses that touch panel 100
comprises dielectric member 130 (¶ 50), and Ishii discloses that touch panel
20 comprises cover layer 28 that functions as a dielectric body and may be
comprised of a glass or resin film. Ishii ¶ 59. In view of these disclosures,
one of ordinary skill in the art reasonably would have understood that a glass
film as disclosed in Ishii could serve as dielectric member 130 in Hwang’s
touch panel 100. Although Hwang does not explicitly disclose that
dielectric member 130 of touch panel 100 is comprised of glass, contrary to
Appellant’s arguments, dielectric member 130 is a structural element that is
taken into consideration in Hwang’s disclosure of alternative arrangements
of touch panel 100 relative to a polarizing film and an upper substrate of a
display panel, because dielectric member 130 is part of touch panel 100.
Appellant argues that “even if you were to combine the alternative
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touch panel position of Hwang’s alternative embodiment into the combined
device of Ishii and Noguchi, one of skill in the art would still read from Ishii
the need to have the cover glass be the outermost protective layer,
particularly since nothing in Hwang teaches having a cover glass in the
alternatively positioned touch panel 100 between the substrate and the
polarizing film.” Appeal Br. 15 (emphasis omitted). Appellant argues that
“nothing in Hwang teaches that a polarizer fixed to a cover glass forms an
outermost viewer-side surface.” Id. Appellant argues that “from Noguchi, it
is not possible to conceive of a structure where a polarizer is provided at an
outermost portion in a structure containing a cover glass, even with Hwang’s
alternative positioning of the touch panel 100, without using impermissible
hindsight reconstruction of the claims.” Appeal Br. 16.
As discussed above, however, Noguchi discloses that polarizing plate
45 (polarizer) forms an outermost viewer-side surface of Noguchi’s liquid
crystal display device. As also discussed above, Hwang discloses
positioning touch panel 100 including dielectric member 130 between a
polarizer and a substrate of a display panel, and Ishii discloses that cover
layer 28 of Ishii’s touch panel 20 may be comprised of glass and functions
as a dielectric body and protective layer.
In view of these disclosures in Noguchi, Ishii, and Hwang, one of
ordinary skill in the art seeking to protect the display panel (glass substrate
41, liquid crystal layer 6, thin film transistor substrate 21) of Noguchi’s
liquid crystal display device would have included a touch panel cover glass
as disclosed in Ishii in Noguchi’s device, and would have positioned the
cover glass between Noguchi’s outermost polarizing plate 45 (polarizer) and
glass substrate 41 of Noguchi’s display panel, in view of Hwang’s disclosure
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that such an arrangement is a suitable configuration for integrating a touch
panel including a dielectric member into a liquid crystal display device. As
also discussed above, positioning Ishii’s touch panel glass cover glass
between Noguchi’s polarizing plate 45 (polarizer) and upper substrate 41 of
Noguchi’s display panel would impart the intended effect of the cover glass
as a light transmissive layer that functions as a dielectric body and protects
Noguchi’s display panel, while retaining Noguchi’s polarizer as a touch
input surface. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”).
Therefore, contrary to Appellant’s arguments, the Examiner’s
proposed modification of Noguchi’s display panel is not based on hindsight
reconstruction, but, rather, is based on the disclosures of Noguchi, Ishii, and
Hwang, and what those disclosures reasonably would have suggested to one
of ordinary skill in the art at the time of Appellant’s invention.
Appellant argues that “the specifically claimed configuration of the
polarizer, the cover glass, and the display panel in this application
advantageously improves safety for the observer (e.g., in a vehicle) in a way
that is not contemplated in the cited prior art.” Appeal Br. 11. Appellant
argues that “the asserted prior art fails to teach the advantageous feature of
the presently claimed display device, ‘which can suppress degradation of
display quality while avoiding scattering of cover glass.’” Appeal Br. 11
(emphasis omitted) (citing Spec. ¶ 90).
Although Noguchi, Ishii, and Hwang may not explicitly disclose the
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asserted advantages of positioning Ishii’s touch panel glass cover glass
between Noguchi’s polarizing plate 45 (polarizer) and upper substrate 41 of
Noguchi’s display panel as suggested by Hwang, the asserted advantages
nonetheless would have naturally flowed from following the suggestions
stemming from the combined disclosures of Noguchi, Ishii, and Hwang to
modify Noguchi’s device in this manner. The fact that Appellant recognized
the asserted advantages does not impart patentability to the display device of
claim 1. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (explaining that it
has long been settled that in the context of obviousness, the “mere recitation
of a newly discovered function or property, inherently possessed by things in
the prior art, does not distinguish a claim drawn to those things from the
prior art.”).
Furthermore, as the Examiner explains (Ans. 8–9), claim 1 recites a
display device and does “not recite any additional elements relating to the
beneficial results identified by Appellant[].” Appellant’s arguments,
therefore, do not identify reversible error in the Examiner’s rejection of
claim 1 because they are based on asserted advantages and beneficial results
that are not recited in the claim. In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (“[A]ppellant’s arguments fail from the outset because . . . they are
not based on limitations appearing in the claims.”).
We, accordingly, sustain the Examiner’s rejections of claims 1–3 and
5–17 under 35 U.S.C. § 103.

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CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–7, 11–
17
103 Noguchi, Ishii,
Hwang
1–3, 5–7,
11–17

8, 9 103 Noguchi, Ishii,
Hwang, Oh
8, 9
10 103 Noguchi, Ishii,
Hwang, Lai,
Tyler
10
Overall
Outcome
1–3, 5–17

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).

AFFIRMED