Japan Display Inc.Download PDFPatent Trials and Appeals BoardOct 20, 20202019006258 (P.T.A.B. Oct. 20, 2020) 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. 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. Appeal 2019-006258 Application 14/992,662 2 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); Appeal 2019-006258 Application 14/992,662 3 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 Appeal 2019-006258 Application 14/992,662 4 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 Appeal 2019-006258 Application 14/992,662 5 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 Appeal 2019-006258 Application 14/992,662 6 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 Appeal 2019-006258 Application 14/992,662 7 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 Appeal 2019-006258 Application 14/992,662 8 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 Appeal 2019-006258 Application 14/992,662 9 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 Appeal 2019-006258 Application 14/992,662 10 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. Appeal 2019-006258 Application 14/992,662 11 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 Copy with citationCopy as parenthetical citation