Ex Parte Adams

Board of Patent Appeals and Interferences

Jul 20, 2012

11585177 (B.P.A.I. Jul. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GUY ADAMS
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Appeal 2010-003721
Application 11/585,177
Technology Center 2600
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Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4, 7-13, 18, and 21. Claims 2, 3, 5, 6, 14-17, 19, and
20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 4, 11-13, and 18 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chuang (US 2005/0122221 A1; published June 9, 2005) in
view of Lumley (US 6,784,860 B2; issued August 31, 2004).
Claims 7-10 and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chuang in view of Lumley and Beenau (US 2005/0116810 A1;
published June 2, 2005).
We affirm.

STATEMENT OF CASE
Appellant’s invention relates to an inductively powered device
including a memory tag and an additional functional device, and adapted
such that when the memory tag is powered by a reader device, the additional
functional device is also powered by the reader device and carries out its
function. See generally Abstract. Claim 1 is illustrative and reproduced
below with key disputed limitations emphasized:
1. An inductively powered device comprising a memory tag
and an additional functional device for powering by and
communication with a reader device emitting radio frequency
signals, adapted such that when the memory tag is powered by
a reader device, the additional functional device is also powered
by the reader device and carries out its function, wherein the
additional functional device comprises a display, the display
carries out the function of displaying an image of data
transmitted to it by the reader device, and the image displayed
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by the display is provided only while the display is powered by
the reader device.

CONTENTIONS1
Appellant argues:
One skilled in the art would not have modified Chuang in
the manner suggested by the Examiner based on Lumley,
because Lumley clearly teaches away from such a
modification. Lumley discloses in col. 6, lines 57-64:
It is particularly advantageous for the display to be
bistable. The elements of a bistable display have two
separate stable states. This means that unlike a
conventional display, which needs to be powered in order
to display information, power is needed only to change
the state of the display whatever the state of information
displayed upon it. (emphasis added)
Thus, Lumley clearly teaches away from using other
than a bistable display. One skilled in the art would have been
lead away from modifying the Chuang system to include a
display where “the image displayed by the display is provided
only while the display is powered by the reader device” as
recited in claim 1 in light of Lumley teaching away from such a
modification.
(App. Br. 10-11).
Appellant further argues
Lumley does not teach an embodiment with other than a
bistable display. Thus, Lumley does not disclose the
“conventional” display to be an alternative embodiment, even a
less desired alternative embodiment. Rather, Lumley teaches

1 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed Sep. 2, 2009; the Examiner’s
Answer (Ans.) mailed Oct. 15, 2009; and the Reply Brief (Reply Br.) filed
Dec. 14, 2009.
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only a bistable display as an embodiment, and suggests the
“conventional” display not be used. Moreover, Lumley’s
disclosure in col. 6, lines 57-64 to the effect that it is
particularly advantageous for the display to be bistable does
criticize or otherwise discourage the use of other than a bistable
display in the Chuang device.
(Reply Br. 2-3).
The Examiner finds
In the analogous art of display device, Lumley shows the
conventional display which needs to be powered in order to
display information (col. 6, lines 61-62) and further shows other
implementation of additional modification of electronic
components in order to provide a bi-stable display (Fig 6; col.
5, line 25 - col. 6, line 30; col. 6, lines 65-67).
(Ans. 4).
The Examiner further finds
It would have been obvious to one of ordinary skill in the
art at the time of invention [that] the display as taught by
Chuang would be operating as a conventional display device
because the teaching of Lumley shows as evidence that bi-
stable display would require a specific structure of electronic
components for display device . . . which is not required and
shown in the display module of Chuang, and therefore it would
have been obvious to one of ordinary skill in the art at the time
of invention the display as taught by Chuang could be operating
as a conventional display device or any other monostable
display wherein the image displayed by the display is provided
only while the display is powered by the reader device since the
electric power required on the memory controller and display
module [integration of 21,22, 23] are provided by the radio
frequency module.
(Ans. 4-5 (second brackets in original)).
The Examiner further finds “[t]he Prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
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alternatives because such disclosure does not criticize, discredit, or other
otherwise discourage the solution claimed.” (Ans. 12).
Appellant does not dispute that the cited prior art teaches all of the
claimed elements; Appellant does not dispute that Lumley teaches a
conventional display which needs to be powered in order to display
information. (App. Br. 10-11; Reply Br. 1-3).
Appellant only argues that Lumley teaches away from the claimed
subject matter of “the image displayed by the display is provided only while
the display is powered by the reader device.” (App. Br. 10-11; Reply Br. 1-
3).

ISSUE
Does Lumley teach away from the claimed subject matter of “the
image displayed by the display is provided only while the display is powered
by the reader device” such that, under 35 U.S.C. § 103(a), the Examiner
erred in the reasoning used to reach the legal conclusion of obviousness for
claim 1?

PRINCIPLES OF LAW
“A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(2009).

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ANALYSIS
The appeal hinges on whether or not Lumley teaches away from the
argued limitation of claim 1. In summary, Appellant argues that Lumley
teaches away from using other than a bistable display, that Lumley does not
teach an embodiment other than a bistable display, that Lumley suggests a
conventional display not be used, and that Lumley does criticize or
otherwise discourage the use of other than a bistable display.
We turn to the same portion of Lumley cited by Appellant: column 6,
lines 57-64 (emphasis added):
It is particularly advantageous for the display to be bistable.
The elements of a bistable display have two separate stable
states. This means that unlike a conventional display, which
needs to be powered in order to display information, power is
needed only to change the state of the display whatever the state
of information displayed upon it.
We also note Lumley, column 2, lines 64-66 (emphases added): “The
optical medium may be a liquid crystal medium. The liquid crystal medium
may be bistable, such that the display area holds an image following
addressing of the display.”
Regarding Appellant’s arguments that Lumley teaches away from
using other than a bistable display and that Lumley suggests a conventional
display not be used, we find that Lumley merely expresses a general
preference for a bistable display over other alternative displays. Lumley
suggests alternatives are possible for the liquid crystal medium besides a
bistable display, and Lumley suggests alternatives are possible for the
optical medium besides a liquid crystal medium. (Lumley, col. 2, ll. 64-66).
Regarding Appellant’s argument that Lumley does not teach an
embodiment other than a bistable display, we disagree. While Lumley
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describes his invention as being primarily directed to a bistable display,
Lumley’s disclosure is not limited to bistable displays. As noted by the
Examiner (Ans. 4 (citing Lumley, col. 6, ll. 61-62)), Lumley additionally
discloses that it was already conventional to provide displays that need to be
powered in order to display information.
Finally, we find Lumley does not criticize, discredit, or otherwise
discourage investigation into the invention claimed, but only suggests that a
bistable display is preferred over a conventional display and distinguishes
the bistable display from the conventional display. Such an expression of a
general preference as found in Lumley does not rise to the level of a
teaching away from using other than a bistable display. See DePuy Spine,
567 F.3d at 1327.
Weighing Appellant’s arguments, that Lumley teaches away from the
claimed subject matter, against the Examiner’s specific and detailed findings
and our own further findings as a whole, we conclude that the Examiner did
not err in rejecting independent claim 1. We therefore sustain the
Examiner’s rejection of claim 1 as well as claims 4, 11-13, and 18, which are
not separately argued (App. Br. 10-11).
We likewise sustain the Examiner’s obviousness rejection of claims 7-
10 and 21 over Chuang in view of Lumley, further in view of Beenau.
Appellant has not particularly pointed out errors in the Examiner’s reasoning
regarding the additional teachings of Beenau, but merely reiterates the same
arguments that are set forth in relation to independent claim 1 regarding the
alleged deficiencies of Chang and Lumley (App. Br. 11).

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DECISION
The Examiner’s decision rejecting claims 1, 4, 7-13, 18, and 21 is
affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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