Ex Parte 6549970 et al

Patent Trial and Appeal Board

Jul 9, 2014

95000457 (P.T.A.B. Jul. 9, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,457 05/07/2009 6549970 379922-457RX (105402) 1192
37509 7590 07/09/2014
DECHERT LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/09/2014 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
____________

INNOLUX CORPORATION
Requester and Respondent

v.

Patent of MONDIS TECHNOLOGY, LTD.
Patent Owner and Appellant
____________

Appeal 2013-007280
Reexamination Control 95/000,457
Patent 6,549,970 B2
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
A. SUMMARY
Mondis Technology, Ltd. (“Mondis” or “Patent Owner”) appealed
under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject
claims 18-21, 23-25, 27, and 28 and newly added claim 37.
1
The appeal is
submitted on the briefs.
2
In Patent Owner’s Appeal Brief (“PO App. Br.”),
Patent Owner “chooses not to appeal the Examiner’s rejection of claims 18-
21 of the [’]970 Patent,” and appeals only claims 23, 25, 27, 28, and 37. PO
App. Br. 4, 6.
3
Based on settlement between the parties, Third-Party
Requester InnoLux Corp. (“InnoLux” or “Requester”) withdrew its appeal.
4

In its Notice of Withdrawal, Requester specifically waived “its right to
appeal under the provisions of 35 U.S.C. §§ 134, 141-144, and 315(b).”
In a Decision Dismissing Petition (“Decision”), dated April 11, 2014,
the Office of Patent Legal Administration denied Patent Owner’s Petition
under 37 C.F.R. § 1.182 to Transfer Jurisdiction Over, and Consider on the
Merits, Patent Owner’s Motion to Terminate Inter Partes Reexamination.
The Decision withdrew claim 18 from consideration in this reexamination
based on a final decision in Mondis Technology, Ltd. v. LG Electronics, Inc.,
et al., No. 2:07-cv-565 (E.D. Tex.). Decision 10. The Decision concluded
prosecution will continue with respect to claims 19-23, 25, 27, and 28 and

1
Patent Owner’s Notice of Appeal dated April 23, 2012.
2
Order Cancelling Oral Hearing dated June 26, 2014.
3
Patent Owner has expressed a clear intent not to pursue claims 18-21 and
those claims are not appealed. Ex Parte Ghuman, Appeal 2008-1175 (BPAI
May 1, 2008) (precedential).
4
InnoLux Notice of Withdrawal (“Notice of Withdrawal”) dated March 12,
2013 and Confirmation of Withdrawal dated July 24, 2013. InnoLux
represented it will no longer participate in this reexamination in any way.
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new claims 30-43. Decision 10. The Examiner confirmed the patentability
of claim 22 and further determined newly added claims 30-36 and 38-43 are
patentable.
5

As a result of the preceding, claims 23, 25, 27, and 28 and proposed
new claim 37 are subject to appeal. PO App. Br. 4.
The ’970 patent issued on April 15, 2003 to Ikuya Arai and Kouji
Kitou from Application Serial No. 09/732,291, filed on December 8, 2000.
The ’970 patent claims priority to a Japanese patent application filed on
February 10, 1993.
B. THE INVENTION
The ’970 patent describes a display unit that is capable of receiving
control instructions from a connected computer. ’970 patent, 4:58-60. A
microcomputer uses these control instructions to adjust the displayed image.
Id. at 4:60-67. The display can be adjusted in size, position, brightness,
contrast, and/or color. Id. at 4:67-5:3. In addition, the display unit includes
a memory which stores information such as user adjustment data, delivery
adjustment data, identification (“ID”) numbers, and/or factory preset values.
Id. at Fig. 2; 5:15-29. The display unit also includes a communication
controller that facilitates the sending and receiving of data into and out of the
display. Id. at 4:27-31; 7:53-57, Figs. 1, 7, 9, 10, and 11.
In addition to receiving control instructions from an external
computer, the communication controller can send the contents of the
display’s memory, including ID numbers, to the computer. Id. at Fig. 1,

5
Right of Notice of Appeal (“RAN”) dated March 23, 2012, page 1,
incorporated into Examiner’s Answer dated January 7, 2013.
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3:14-16, 5:64-65. The data sent from the display to the computer can
include the display’s ID number, which the computer can use to uniquely
identify a particular display unit from among others. Id. at 5:64 – 6:7, 7:25-
47, Fig. 5. The ability to identify a display can, for example, facilitate
security by preventing the display of information on an unauthorized display
unit. Id. at 2:35-38, 6:26-29, 10:40-45.
Transmission of the display’s ID number to the computer can also
inform the computer that the monitor supports certain features, such as being
able to receive control instructions to adjust the image. Id. at 5:64-6:7. The
display can receive a communication signal generated by an attached video
source based upon display unit information sent by the display to the video
source. Id. at 3:12-19; 5:64-6:4.
Claim 23, which is illustrative of the appealed subject matter, reads as
follows:
23. A display unit for displaying an image based on an
image signal inputted from an externally connected computer,
comprising:
a processor adapted to control display of the display unit;
a memory which stores an identification number; and
a communication controller which sends the
identification number stored in said memory to said computer;
wherein said communication controller enables bi-
directional communication between said display and said
computer.

(PO App. Br., Clms. App’x. 1).
C. THE PRIOR ART
The following prior art references are relied on in the rejections of
claims 23, 25, 27, 28 and 37. RAN 7-8.
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REFERENCE PATENT NO. FILING DATE
Moriconi US 5,262,759 Jul. 27, 1992
Schmidt US 5,285,197 Aug. 28, 1991

D. THE REJECTIONS
The following rejections were adopted by the Examiner and are
relevant to the claims on appeal:
1. Claims 23, 25, 27, 28, and 37 as anticipated by Moriconi under 35
U.S.C. § 102(e). RAN 6, 8-10, 23.
2. Claims 23, 25, 27, 28, and 37 as anticipated by Schmidt under 35
U.S.C. § 102(e). RAN 14-20, 24-25.
II. ANALYSIS
A. MORICONI-REJECTION OF CLAIMS 23, 25, 27, 28, AND 37 UNDER
35 U.S.C. § 102(e)

The ’970 patent claims the benefit of an application filed February 3,
1994 and thus the patent expired February 3, 2014. 35 U.S.C. § 154(a)(2).
While claims are generally given their broadest possible scope during
prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), the Board's
review of the claims of an expired patent is similar to that of a district court's
review. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); see also
MPEP § 2258 I.G (directing Examiners to construe claims pursuant to
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), during
reexamination of an expired patent).
1. “processor”

We begin by construing the first disputed limitation of claim 23 which
recites, in pertinent part, “a processor adapted to control display of the
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display unit.” The limitation is a part of all the claims on appeal. PO App.
Br. 15, 20.
The Examiner points to circuitry 47 of Figure 4 of Moriconi as being
“adapted to control display of the display unit.” RAN 9 (citing Moriconi,
4:51-69). Concerning control of the display, the Examiner finds the
circuitry provides output to logic that activates bits in the bit-array of the
display. Id. at 32 (citing Moriconi, 4:51-5:20).
Patent Owner points to the Specification of the ’970 patent which
states “‘[t]he microcomputer 7 identifies this control instruction and
generates control signals to the relevant portions to be adjusted in the
deflection circuit 10 or video circuit 11.’” PO App. Br. 7 (citing ’970
Patent, 4:60-63). Patent Owner contends “processor” is synonymous with
“microprocessor.” Id.at 8, Patent Owner Rebuttal Brief (“PO Reb. Br.”) 1-3.
Thus, Patent Owner contends “processor” is used in the sense of a
microcomputer. Id. Patent Owner contends this construction precludes
Moriconi’s disclosure, which does not disclose a digital processor, from
meeting the limitation. Id., PO Reb. Br. 6.
Patent Owner, citing to the Specification, contends “control” by the
processor is “receiving and applying control instructions from a computer”
and then controlling display parameters such as brightness. PO App. Br. 8.
Patent Owner further contends the “control” claimed is different from
simply processing a video signal. Id.
Although an inventor is free to define the specific terms used to
describe the invention, “this must be done with reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
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1994). To act as its own lexicographer, a patentee must “clearly set forth a
definition of the disputed claim term” other than its plain and ordinary
meaning. It is not enough for a patentee to simply disclose a single
embodiment or use a word in the same manner in all embodiments, the
patentee must “clearly express an intent” to redefine the term. Thorner v.
Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
(citations omitted). Further, our reviewing court has repeatedly warned
against confining the claims to specific embodiments described in the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(en banc). Thus Patent Owner’s arguments which cite to the Specification
are not persuasive. The Specification does not define the terms “processor”
and “control” but rather describes them. As such, importing the descriptions
into the interpretation of the claim terms is improper.
As to “processor,” we agree with the Examiner that the claims do not
recite the term “microcomputer.” RAN 32. In addition, “processor” could
be reasonably interpreted as not only a digital microprocessor of a
microcomputer “but also a switching signal processor using any set of
electrical components.” Id. The word “processor” appears only in the
claims and does not appear in the Specification. The Specification is
therefore devoid of any definition regarding the “processor.”
We are not persuaded that the Specification’s reference to
“microcomputer” necessarily means the claimed “processor” must be a
“microcomputer” or a digital device. As previously noted, the term
“processor” is not defined as a “microcomputer.” Absent concluding the
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“processor” is the described “microcomputer,” we cannot read such a
limitation into the claims.
Thus, we turn to the claim language which states the “processor” is
“adapted to control display of the display unit.” Patent Owner contends
Moriconi only controls “display image parameters.” PO Reb. Br. 6. Patent
Owner argues “control” is “receiving and applying control instructions from
a computer.” Id. The U.S. District Court for the Eastern District of Texas
concluded “control,” as used in claim 23, included “whether or not to send
information to the display.”
6
Requester’s Rebuttal Brief (“Req. Reb. Br.”),
4-5. The District Court Opinion concluded “control” should be construed as
“to direct, regulate, or influence.” Req. App. Br., Ex. E-15, at 44.
The Examiner’s finding that “processor” is not limited by the claim
language and includes electrical circuitry is reasonable. As the Examiner
finds, and following the District Court Opinion, Moriconi’s “processor” also
provides “control” as claimed. RAN 32.
As a result of our construction, which is consistent with the District
Court’s Opinion, Moriconi discloses the “processor” limitation.
2. “communication controller”
The second disputed limitation of claim 23 recites, in pertinent part,
“a communication controller which sends the identification number stored in
said memory to said computer.” The limitation is a part of all claims on

6
Mondis Technology, Ltd. v. Hon Hai Precision Industry Co. Ltds., et al.,
No. 2:07-CV-565, slip op. at 43-44 (E.D. Tex. Jan. 24, 2011)(“District Court
Opinion”). Requester’s Appeal Brief (“Req. App. Br.”), Exhibit E-15.

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appeal. PO App. Br. 1-11, 20. Whether Moriconi discloses the limitation
turns on the construction of “communication controller.”
Patent Owner contends Moriconi’s serial input/output lines, relied on
by the Examiner to show the “communication controller” limitation (RAN
9), are “nothing more than a serial communication interface that directly
links the Moriconi computer body to the EEPROM in the lid housing the
display. Moriconi patent at Figs. 4-5.” PO App. Br. 11, PO Reb. Br. 6.
Patent Owner argues for a construction based on the Specification’s
description of the functions of the “communication controller.” PO App. Br.
10-12. Patent Owner contends “communication controller” is more than a
“communication interface,” which is separately described in the ’970 patent.
Id. at 11 (citing ’970 Patent, 6:13-16).
We are not persuaded that the additional functional limitations beyond
the claimed function should be incorporated into the construction of
“communication controller.” See SuperGuide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As recited in the claim, the
“communication controller” need only function to send the identification
number to the computer and enable bi-directional communication between
the computer and display. Patent Owner’s argument that a “communication
controller” should perform “at least basic controlling functions to control the
flow of messages between the display unit and the computer,” (PO Reb. Br.
3) is not persuasive. In support of this contention, Patent Owner argues the
“communication controller might perform” additional functions. Id. That
additional functions may be performed by the “communication controller”
does not require the construction of the term to include those functions.
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Although the ’970 patent does separately discuss “communication
controller” and “communication interface,” Patent Owner’s argument that
“communication controller” is distinct from a “communication interface”
does not lead to excluding a “communication interface” from the
construction of “communication controller.” PO Reb. Br. 4. Indeed, the
’970 patent states “the communication controller 5 controls a
communication interface such as RS-232C which is installed in the standard
type.” ’970 patent, 4:37-42. The Examiner relied on this portion of the ’970
patent to find Moriconi’s disclosure shown in Figure 5 meets the
“communication controller” limitation. RAN 29-30. Stated differently, the
functionality of a “communication interface” is part of the functionality of
the “communication controller.”
Further, Moriconi is not just a communication interface. The
Examiner points to Moriconi’s disclosure of the EEPROM for controlling
serial I/O communication to the display. RAN 9 (citing Moriconi, Fig. 5;
5:24-27). To the extent some “control” of the signals directed to the display
is required, the EEPROM provides such control. As an example, the
EEPROM matches driver routines to the particular requirement of the
display module. Moriconi 5:35-38.
Based on the description in the Specification, Moriconi discloses the
“communication controller” limitation.
3. “externally connected”
The third disputed limitation of claim 23 recites, in pertinent part, the
display unit is for displaying an image from a signal ‘inputted from an
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externally connected computer.” The limitation is in the preamble of all the
independent claims and is part of all claims on appeal. PO App. Br. 12.
The Examiner finds Moriconi’s removable display unit 13 for
displaying an image based on an image signal is inputted from an
“externally connected” computer. RAN 9. Further, for the computer, the
Examiner points to body portion 19 of laptop/notebook computer 11 in Fig.
1. Id. The Examiner also finds the term is in the preamble and should not
be given patentable weight. RAN 31.
Patent Owner argues that “externally connected,” is a limitation even
though it is in the preamble. PO App. Br. 12. Patent Owner argues the term
is a limitation because it “introduces and provides antecedent basis for the
‘computer’ and ‘video source’
7
elements in the body as well as describes
their structural configuration relative to the display unit.” Id.
Patent Owner also contends the term is not a structural limitation but
rather a functional limitation. PO Reb. Br. 5. Patent Owner notes the
Specification states there are a plurality of display units “designed to be
physically separated from the computer but electrically connected to the
computer so that each of the display unit[s] functions in such a
configuration.” Id. (citing ’970 patent, Fig. 5, 7:16-30, 44-48).
Patent Owner does not explain with particularity how the recitation
“externally connected” provides antecedent basis for “computer” or how the
term makes “computer” meaningful. Contrary to Patent Owner’s contention,
the body of the claims fully and intrinsically sets forth the complete
invention, including all of its limitations. Accordingly, “the preamble is of

7
“Video source” rather than “computer” is used in claim 27.
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no significance to claim construction because it cannot be said to constitute
or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999) (citing Rowe v. Dror, 112 F.3d 473,
478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152
(CCPA 1951)).
8

We are not persuaded that “externally connected” is a functional
limitation which would require it be given weight. The term still appears in
the preamble and, absent providing antecedent basis or otherwise being
necessary to set forth the complete invention, is not a limitation.
Patent Owner argues a person of ordinary skill would recognize the
display unit is externally connected. PO Reb. Br. 5. That conclusion is
unsupported by evidence beyond attorney argument. As discussed below,
to the extent Patent Owner provides factual argument, it requires reading
limitations from the Specification into the claim.
Assuming arguendo that we give “externally connected” patentable
weight, Patent Owner has not provided a proper construction for the term
that would distinguish Moriconi. Patent Owner attempts to draw a
distinction between the claim language and Moriconi based on the display
module of Moriconi being attached by “secure attachment” to the computer
body. PO App. Br. 13. Patent Owner goes on to argue the result is “a single

8
In a reexamination proceeding between these parties with a patent claim of
similar scope, “external computer” was not given patentable weight. Chimei
Innolux Corp. v. Mondis Tech., Ltd., Appeal No. 2011-006035, at 5 (BPAI
July 11, 2011), Requester’s Appeal Brief, dated June 25, 2012, Appendix
RP-2.
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rigid unit” and not an external connection. Id. We are not persuaded that a
separate display module that can be removed from a computer body and is
selectively connectable to the computer body, as shown in Moriconi, is not
“externally connected.” In the disconnected configuration, the display
module is external to the body. Even when attached, the display module of
Moriconi is separate from the body, thus “external” to it, but electrically
connected. Patent Owner argues for a construction of “externally
connected” where the display unit is “physically separated from the
computer but electrically connected.” PO Reb. Br. 5. We are not persuaded
there is a distinction between Moriconi and Patent Owner’s proposal.
As discussed above, Patent Owner points to the Specification as
showing “the plurality of display units are designed to be physically
separated from the computer but electrically connected to the computer so
that each of the display unit[s] functions in such a configuration.” PO Reb.
Br. 5. The claim language is not so limited. It is improper to read
limitations from the Specification into the claim.
We conclude that “externally connected” is not a claim limitation.
Assuming it is a limitation, based on the description in the Specification and
the claim language of the ’970 patent, Moriconi discloses the “externally
connected” limitation.
4. “identification number”
The fourth disputed term appears in independent claim 27, which
recites, in pertinent part, a “memory in which at least display unit
information is stored, wherein the display unit information inc[l]udes an
identification number for identifying the display unit.” The limitation is
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included in claims 27 and 28. PO App. Br. 14.
The Examiner finds Moriconi’s memory, i.e., EEPROM 51 of Figure
4, stores display unit identification information. RAN 10 (citing Moriconi,
5:21-29). The display unit information includes an identification number for
identifying the specific type of display module. Id. (citing Moriconi, 5:21-
23).
Patent Owner contends this element is missing from Moriconi
“because the identity code disclosed by Moriconi merely identifies the ‘type’
of display rather than the display unit itself.” PO App. Br. 14. Patent Owner
concedes Moriconi discloses an “identification number,” but argues that the
number is not associated with a particular display, only a type of display. Id.
Patent Owner relies on the Specification of the ’970 Patent to construe
identification number as differentiating between “individual display units
even when they are the same type (i.e., ‘having the same structure’).” Id. at
14-15 (citing ’970 patent, Fig. 1; 7:18-39).
As previously discussed, limitations from the Specification are not
read into the claims. Furthermore, Moriconi is not so limited. Moriconi
discloses “a portable computer with a physical interface for attaching and
detaching a display panel, and a means of recognizing on power-up the
specific display attached.” Req. Reb. Br. 11 (citing Moriconi 1:50-53).
Patent Owner contends this portion of Moriconi still does not disclose “the
specific display.” PO Reb. Br. 9. Even if this portion of Moriconi only
indicates the type of display, Patent Owner has not persuaded argued that a
particular display is not identified. Identification of a specific display by
type falls within the scope of the claim language.
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Based on the description in the Specification and the claim language
of the ’970 patent, Moriconi discloses the “identification number” limitation.
5. Proposed New Claim 37
As noted above, claim 37 was added by amendment. RAN 1. “[N]o
amendment, other than the cancellation of claims, will be incorporated into
the patent by a certificate issued after the expiration of the patent.” 37 C.F.R.
§ 1.530(j). Furthermore, “[a]lthough the Office actions will treat proposed
amendments as though they have been entered, the proposed amendments
will not be effective until the reexamination certificate is issued and
published.” 37 C.F.R. § 1.530(k). See Ex Parte Rhine, No. 2010-006734,
2010 WL 3359322 at 4 (BPAI August 24, 2010). Accordingly, we do not
address dependent claim 37.
B. SCHMIDT-REJECTION OF CLAIMS 23, 25, 27, 28, and 37
Under 35 U.S.C. § 102(e)

Patent Owner appeals the rejection based on Schmidt making the
many of the same arguments it made in appealing the rejection based on
Moriconi. Specifically, Patent Owner argues Schmidt does not disclose: a
“processor” (PO App. Br. 15-17, PO Reb. Br. 12-13); a “communication
controller” (PO App. Br. 17, PO Reb. Br. 13-14); an “identification number”
(PO App. Br. 17-20, PO Reb. Br. 14-15); and an “identification number
identifies the specific display unit” (PO App. Br. 20-21, PO Reb. Br. 15).
To the extent construction of the terms is argued, we refer to our
previous analysis. The disclosure of Schmidt with respect to the disputed
terms is analyzed below.
1. “processor”
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The Examiner finds the “processor” in Schmidt’s color processor 102
and sync processor shown in Figure 1. RAN 18. The processors disclosed
are adapted to control display of the display unit as claimed. Id. (citing
Schmidt 5:26-57).
Patent Owner’s arguments are based on limiting the scope of the
“control” provided by the “processor.” PO App. Br. 15. The Patent Owner
argues the processor must receive and apply control instructions to control
image parameters, including brightness, contrast, and color. Id., PO Reb. Br.
12. We agree with the District Court Opinion that “control” means “to
direct, regulate, or influence.” Req. App. Br., Ex. E-15, at 44. Following
this construction, As the Examiner finds (RAN 18), Schmidt discloses
control of the display unit. “Color processor 102 advantageously provides
video signals to a CRT unit 120, which includes a CRT 122 as Well as
control circuitry 124, via a video amplifier 118.” Schmidt 5:26-57. For
reasons stated above we are not persuaded the term should be limited as
Patent Owner argues.
Schmidt discloses the “processor” limitation as construed.
2. “communication controller”
The Examiner finds a “communication controller” in Schmidt’s
processor 106 of Figure 1. RAN 18. Schmidt’s processor sends an
identification number stored in memory to the computer microprocessor,
which enters monitor identifying information to the graphics controller. Id.
(citing Schmidt 8:40-9:13).
Patent Owner makes the same arguments made above in connection
with Moriconi, i.e., functions of the “communication controller” are beyond
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a mere “communications interface.” PO App. Br. 17-18, PO Reb. Br. 13-14.
Further, a “communication controller” has to perform at least basic
“controlling functions” beyond those of a “communication interface.” Id.
We agree with Requester’s position regarding the function of the
claimed “communication controller.” The claims do not require any
function “beyond simply being capable of sending information within the
memory (i.e., the identification number) to the computer and enabling
bidirectional communication is an impermissible narrowing of the claims.”
Req. Resp. Br. 9.
Schmidt discloses the “communication controller” limitation as
construed.
3. “identification number”
The Examiner finds Schmidt discloses a memory which stores an
identification number. RAN 18. Specifically, Schmidt discloses a plurality
of bits used to uniquely identify the video display monitor type. Id. at 19
(citing Schmidt 1:8-14, 4:32-38, 8:59-64, and Table 2).
Patent Owner argues against the construction we reached above and
again argues that the identification number must identify a specific display.
PO App. Br. 17-18, PO Reb. Br. 14-15. It is argued the type of display does
not identify the display. PO App. Br. at 18. Patent Owner also contends the
bits merely identify monitor specifications or “raw technical capabilities,”
like horizontal sync frequency and video rate or bandwidth. PO App. Br. at
19.
The claim language requires an identification number and the bits
disclosed in Schmidt are a number. Patent Owner acknowledges such bits
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define a monitor type. PO App. Br. 19. That the “type” includes technical
specifications does not alter the fact that a number identifies a specific
display.
Neither are we persuaded by Patent Owner’s argument that there are
“functional limitation[s]” which preclude Schmidt from meeting the
element. PO Reb. Br. 14. The “functional limitation” is that the number is
“for identifying the display unit.” Id. A display unit is identified in Schmidt
and the identification is based on a number. That the identification is not the
identification described in the Specification does not limit the scope of the
claim language, which is broad enough to include what is disclosed in
Schmidt.
Schmidt discloses the “identification number” limitation as construed.
4. Proposed New Claim 37
Because the ’970 patent has expired, we do not reach the merits of the
rejection as applied to claim 37.
III. CONCLUSION
The Examiner’s decision to reject claims 23, 25, 27, and 28 as
unpatentable under 35 U.S.C. § 102(e) over Moriconi is affirmed.
The Examiner’s decision to reject claims 23, 25, 27, and 28 as
unpatentable under 35 U.S.C. § 102(e) over Schmidt is affirmed.

IV. ORDER
The rejection as to proposed new claim 37 is dismissed.
The Examiner’s decision to reject claims 23, 25, 27, and 28 is
affirmed.
Appeal 2013-007280
Reexamination Control 95/000,457
Patent 6,549,970 B2

19

AFFIRMED

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