Ex Parte Albert et al

Board of Patent Appeals and Interferences

Oct 13, 2009

10711238 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN D. ALBERT, BARRETT COMISKEY, and
RUSSELL J. WILCOX
_________

Appeal 2009-005460
Application 10/711,2381
Technology Center 2600
____________

Decided: October 14, 2009
____________

Before MAHSHID D. SAADAT, SCOTT R. BOALICK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed September 3, 2004. Application 10/711,238 is a
continuation of U.S. Patent No. 6,825,829, filed August 27, 1998, which
claims the benefit under 35 U.S.C. § 119(e) of multiple provisional
applications, with the earliest filing date being August 28, 1997. The real
party in interest is E Ink Corporation.
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Application 10/711,238

2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-16, 18 and 20. Claims 17 and 19 have been indicated to be
allowable if rewritten in independent form. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to an encapsulated electrophoretic
display (Spec. ¶ [0008]) having an adhesive backing and a process for
manufacturing the display (Spec. Abstract).
Claim 1 is exemplary:
1. An electrically active display comprising:

a bistable optoelectrically active display medium capable of changing
its optical state upon application of an electric field thereto and having first
and second surfaces on opposed sides thereof;

an optically transmissive electrode in contact with the first surface of
the display medium; and

an adhesive layer disposed on the second surface of the display
medium, the surface of the adhesive remote from the display medium
forming an external surface of the display, so that the display can be
attached to a receiving surface by the adhesive layer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sheridon 4,126,854 Nov. 21, 1978
Inoue 4,922,241 May 1, 1990
Sato 5,173,342 Dec. 22, 1992
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Rothschild 5,802,015 Sept. 1, 1998
(filed May 5, 1997)
Richley 5,900,858 May 4, 1999
(filed May 30, 1997)
Brody 6,285,343 B1 Sept. 4, 2001
(filed Oct. 19, 1994)

Claims 1-4, 10, 12, 16, 18 and 20 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Rothschild, Sato and Inoue.
Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Rothschild, Sato, Inoue and Richley.
Claims 6, 7, 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Rothschild, Sato, Inoue and Sheridon.
Claims 8, 9 and 11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Rothschild, Sato, Inoue and Brody.2
Except as noted in this decision, Appellants have not presented any
substantive arguments directed separately to the patentability of the
dependent claims. In the absence of a separate argument with respect to
those claims, they stand or fall with the representative independent claim.
See 37 C.F.R. § 41.37(c)(1)(vii). Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Brief have not been considered and are
deemed to be waived. See id.

2 The Examiner’s Answer inadvertently omits Inoue from the statement and
the body of the rejection. (Ans. 6.)
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ISSUE
With respect to claims 1-4, 10, 12, 16, 18 and 20, Appellants argue
that “there is no logical way to combine Rothschild, Sato and Inoue”
because “the Rothschild display does not suffer from the problem which
Inoue is designed to solve, and hence there is no incentive to combine
Rothschild with Inoue.” (Br. 14.)
With respect to dependent claims 6, 7, 14 and 15, Appellants argue
that the combination of Rothschild, Sato, Inoue and Sheridon does not teach
or suggest the limitation “wherein the display medium comprises an
electrophoretic medium comprising at least one species of particles
dispersed in a fluid medium,” as recited in claims 6 and 14. (Br. 15.)
With respect to dependent claims 8, 9 and 11, Appellants argue that
the combination of Rothschild, Sato, Inoue and Brody does not teach or
suggest the limitation “at least one conductive via extending from the
electrode through the display medium,” as recited in claims 8 and 11.
(Br. 15-16.)
Appellants’ arguments present the following issue:
Have Appellants shown that the Examiner erred in rejecting
claims 1-16, 18 and 20 under 35 U.S.C. § 103(a)?
The resolution of this issue turns on the following subsidiary issues:
1. Have Appellants shown that the Examiner erred by improperly
combining the applied references?
2. Have Appellants shown that the Examiner erred in finding that the
combination of Rothschild, Sato, Inoue and Sheridon teaches or suggests the
limitation “wherein the display medium comprises an electrophoretic
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5
medium comprising at least one species of particles dispersed in a fluid
medium,” as recited in dependent claims 6 and 14?
3. Have Appellants shown that the Examiner erred in finding that the
combination of Rothschild, Sato, Inoue and Brody teaches or suggests the
limitation “at least one conductive via extending from the electrode through
the display medium,” as recited in dependent claims 8 and 11?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Rothschild
1. Rothschild relates to “[a]n electronic timing label for indicating the
expiration of a time period associated with a particular article.”
(Abstract.) The timing label includes “a display for indicating the
expiration of the time period.” (Id.)

2. Rothschild describes an electronic timing label 10 affixed to a
bottle 11 with double-sided foam tape 18. (Col. 5, ll. 2-5; figs. 1, 2.)
The label 10 includes an electronic output device 14. (Col. 4,
ll. 55-56; fig. 1.) “The preferred embodiment supposes the use of a
liquid crystal TN [twisted nematic] type display segment for output
device 14.” (Col. 7, ll. 38-39; fig. 8.) “[A] TN liquid crystal display
device includes a clear plastic or glass display panel 14a containing an
electrosensitive display media.” (Col. 7, ll. 40-42; fig. 8.) Rothschild
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teaches that by applying a voltage to the display panel 14a, it turns
from clear to dark (col. 7, ll. 43-45).

Sato
3. Sato relates to “an orientation film used in a liquid crystal display
device.” (Col. 1, ll. 8-9.) Sato describes that “a liquid crystal 1 is in
contact with a pair of substrates 3 each having an electrode 2 at a
surface facing the liquid crystal 1.” (Col. 2, ll. 13-15; figure.) The
electrode 2 can be a transparent electrode material including indium
tin oxide (ITO) or SnO2. (Col. 2, ll. 27-28.) The liquid crystal can be
a twisted nematic liquid crystal (col. 1, ll. 11-13) or a ferroelectric
liquid crystal (col. 1, ll. 15-16).

Inoue
4. Inoue “relates to a display device and, more particularly, to a display
device having a memory function, e.g., a display device using a
ferroelectric liquid crystal element.” (Col. 1, ll. 8-11.)

5. Inoue describes that for display devices, “[t]he most popular liquid
crystal element is a TN (twisted nematic) element since it has a
relatively short response time among the liquid crystal materials and a
low power consumption.” (Col. 1, ll. 27-30.) However, with an
increasing number of scanning lines in display devices (col. 2,
ll. 4-12), “a decrease in image contrast and crosstalk phenomenon
cannot be avoided” for the TN element (col. 2, ll. 12-13).

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6. As an alternative, Inoue describes that a ferroelectric liquid crystal
(FLC) has the advantages of “a very short response time (1 μsec to
100 μsec[)]” and “a bistable state” (col. 3, ll. 45-49) during the
application of an electric field (col. 3, ll. 50-62; fig. 46). Liquid
crystals with a bistable state have a memory function (i.e., the
orientation state of the liquid crystal is unchanged when the electric
field is removed). (Col. 3, ll. 53-54, 57-60.)

Sheridon
7. Sheridon describes “[a] display system in which the display panel is
comprised of a plurality of particles.” (Abstract.) Sheridon further
describes a display 2 including a display panel 4 between substrates 6
and 8. (Col. 3, ll. 19-21; figs. 1, 2.) The display panel 4 includes “a
distribution of minute particles 14 . . . surrounded by a transparent
dielectric fluid [18]” (col. 3, ll. 35-37; figs. 2, 2A) within “a solid,
optically transparent support material 15” (col. 3, ll. 43-44; figs. 2,
2A). “[E]ach of the spheres 14 is located within a cavity 16 of the
transparent support material 15” such that the “[c]avities 16 have a
diameter slightly larger than the diameter of spheres 14.” (Col. 3,
l. 67 to col. 4, l. 1; figs. 2, 2A.)

Brody
8. Brody relates to “a flat-screen television display.” (Col. 1, ll. 18-19.)
The flat-screen television display 10 is formed of multiple
modules 11. (Col. 6, ll. 47-49; fig. 1.) Each module 11 has a first
major surface 15, a second major surface 16, edge surfaces 17 and
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includes a matrix of picture elements 18 extending over the first major
surface 15. (Col. 7, ll. 3-6; fig. 3.) “The picture elements 18 are
preferably formed in a light modulating film composed of a liquid
crystal dispersion in a polymeric binder . . . .” (Col. 7, ll. 18-21.)

9. The picture elements 18 are controlled by electrical switching
elements 20, which include a row conductive strip 21 and a column
conductive strip 22. (Col. 7, ll. 24-29.) To complete the electrical
circuit of electrical switching elements 20, a transparent conductive
layer 28 on an opposite surface of picture elements 18 is connected to
an interconnecting conductor 30. (Col. 7, ll. 51-55.)
“[I]nterconnecting conductors 30 are preferably positioned over edge
surfaces 17 . . . and wrap around second major surface 16 to
electrically connect conductive strips 21, 21’, 22 and 22’ to electrical
drive circuit 29.” (Col. 8, ll. 24-28; figs. 3, 5.) Figure 4C illustrates
that interconnecting conductors 30 extend vertically from the second
major surface 16 to conductive pads 19, along edge surfaces 17.

PRINCIPLES OF LAW
On appeal, all timely filed evidence and properly presented arguments
are considered by the Board. See In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.
During the examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The “ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Id. at 1313.

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ANALYSIS
We find Appellants’ arguments that the Examiner erred in rejecting
claims 1-5, 8-13, 16, 18 and 20 under 35 U.S.C. § 103(a) to lack merit.
However, we agree with Appellants that the Examiner erred in rejecting
claims 6, 7, 14 and 15 under 35 U.S.C. § 103(a).

Claims 1-4, 10, 12, 16, 18 and 20
Appellants’ arguments (Br. 14-15) that the Examiner erred by
improperly combining the applied references are not persuasive.
The Examiner found that Rothschild teaches all the limitations of
representative claim 13 except the limitation “an optically transmissive
electrode in contact with the first surface of the display medium” (Ans. 3)
and “a bistable . . . display medium capable of changing its optical state
upon application of an electric field thereto” (Ans. 4). The Examiner cited
Sato for the disclosure of a transparent electrode 2 formed on a pair of
substrates 3 with the electrodes 2 facing a liquid crystal 1. (Ans. 3-4; FF 3.)
The Examiner also cited Inoue for the disclosure of a ferroelectric liquid
crystal (FLC) with a bistable state under an applied electric field. (Ans. 4;
FF 6.) The Examiner concluded that claim 1 was obvious over the
combination of Rothschild, Sato and Inoue. (Ans. 3-4.) We generally agree
with the Examiner.
Rothschild teaches applying a voltage to a clear plastic or glass
display panel 14a containing a liquid crystal to switch the display panel 14a

3 Appellants argue claims 1-4, 10, 12, 16, 18 and 20 together as a group.
(Br. 12-15.) Accordingly, we select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
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from clear to dark. (FF 2.) Sato teaches a liquid crystal display in which a
liquid crystal 1 is located between a pair of substrates 3 with each substrate 3
having a transparent electrode 2 facing the liquid crystal 1. (FF 3.) Thus,
modifying Rothschild’s display panel 14a to include Sato’s transparent
electrodes 2 facing the liquid crystal 1 would have been obvious because it is
the mere combination of Sato’s known liquid crystal display, including
transparent electrodes 2, with Rothschild’s known display panel 14a, to yield
predictable results. See KSR, 550 U.S. at 416. Appellants have not
presented any convincing arguments or evidence that the Examiner erred in
combining Rothschild with Sato.
Moreover, Rothschild teaches applying a voltage to the clear plastic or
glass display panel 14a to switch the liquid crystal media from clear to dark.
(FF 2.) Thus, to enable the application of a voltage across the display
panel 14a, the front and back substrates of the display panel 14a would
inherently contain electrodes. (See id.) Furthermore, because Rothschild
teaches that the display panel 14a is “clear” (FF 2), such electrodes would be
“optically transmissive” (see id.).
Additionally, Rothschild teaches a display panel 14a containing a
twisted nematic (TN) liquid crystal (FF 2) and Sato teaches a liquid crystal
display with either TN or ferroelectric liquid crystals (FF 3). Inoue teaches
ferroelectric liquid crystals (FLC) as an alternative to TN liquid crystals for
display devices. (FF 6.) Inoue also teaches that some advantages of
displays using FLC include very short response times (i.e., 1 to 100 μsec)
and the ability to form displays with a memory function because FLC has a
bistable state. (Id.) Thus, combining Inoue with Rothschild and Sato is no
more than the simple substitution of Inoue’s known FLC for Rothschild’s or
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Sato’s known TN liquid crystal, with predictable results. See KSR, 550 U.S.
at 417. Appellants have not presented any convincing arguments or
evidence that the Examiner erred in combining Inoue with Rothschild and
Sato.
Therefore, Appellants have not shown that the Examiner erred in
combining the applied references. We conclude that Appellants have not
shown that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Claims 2-4, 10, 12, 16, 18 and 20 were not argued separately, and fall
together with claim 1.

Claims 5 and 13
Although Appellants nominally argue the rejection of dependent
claims 5 and 13 separately (Br. 15), the arguments presented do not point out
with particularity or explain why the limitations of the dependent claims are
separately patentable. Instead, Appellants summarily allege that “[t]here is
nothing in Richley which renders it logical to combine Rothschild, Sato and
Inoue.” (Br. 15.) Because Appellants have not shown error in the
Examiner’s rejection for dependent claims 5 and 13 based on the teachings
of Rothschild, Sato, Inoue and Richley, we will sustain the rejection of
claims 5 and 13 for the reasons discussed with respect to independent
claims 1 and 10, from which claims 5 and 13 depend.

Claims 6, 7, 14 and 15
Appellants’ arguments (Br. 15) that the Examiner erred in finding that
the combination of Rothschild, Sato, Inoue and Sheridon teaches or suggests
the limitation “wherein the display medium comprises an electrophoretic
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medium comprising at least one species of particles dispersed in a fluid
medium,” as recited in dependent claims 6 and 14, are persuasive.
The Examiner acknowledged that the combination of Rothschild,
Sato, Inoue and Sheridon does not teach or suggest the limitation “wherein
the display medium comprises an electrophoretic medium comprising at
least one species of particles dispersed in a fluid medium.” (Ans. 5.) The
Examiner cited Sheridon for the disclosure of a display panel 4 with a
distribution of minute particles 14 surrounded by a transparent dielectric
fluid 18 and found that Sheridon teaches “at least one species of particles
dispersed in a fluid medium.” (Ans. 5-6.)
We do not agree. A relevant plain meaning of “dispersed” is “to
distribute (as fine particles) more or less evenly throughout a medium.”
Webster’s Ninth New Collegiate Dictionary 365 (1990). Sheridon teaches a
display panel 4 with a distribution of minute particles 14 in a solid, optically
transparent support material 15. (FF 7.) Each of the particles 14 is located
within a cavity 16 having a slightly larger diameter, in which the cavity 16 is
filled with a dielectric fluid 18. (Id.) However, we do not find that
Sheridon’s minute particles 14 are “dispersed in a fluid medium.” Instead of
the minute particles 14 being distributed more or less evenly throughout the
dielectric fluid 18, the particles 14 are distributed more or less evenly
throughout the solid material 15 (i.e., a solid medium), with each particle 14
being individually encapsulated within a spherical shell of dielectric fluid 18
filling a cavity 16 in the solid material 15 (see id.).
Therefore, Appellants have shown that the Examiner erred in finding
that the combination of Rothschild, Sato, Inoue and Sheridon teaches or
suggests the limitation “wherein the display medium comprises an
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electrophoretic medium comprising at least one species of particles
dispersed in a fluid medium,” as recited in dependent claims 6 and 14.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 6 and 14 as well as claims 7 and 15, which depend from
claims 6 and 14, under 35 U.S.C. § 103(a).

Claims 8, 9 and 11
Appellants’ arguments (Br. 15-16) that the Examiner erred in finding
that the combination of Rothschild, Sato, Inoue and Brody teaches or
suggests the limitation “at least one conductive via extending from the
electrode through the display medium,” as recited in dependent claims 8
and 11, are not persuasive.
The Examiner acknowledged that the combination of Rothschild,
Sato, and Inoue does not teach or suggest the limitation “at least one
conductive via extending from the electrode through the display medium.”
(Ans. 6.) The Examiner cited Brody for the disclosure of a flat-screen
television display 10 with picture elements 18 including interconnecting
conductors 30 and found that Brody teaches “at least one conductive via
extending from the electrode through the display medium.” (Ans. 6.) We
agree with the Examiner.
Brody teaches a flat-screen television display 10 formed from
multiple modules 11, each module 11 including a matrix of picture
elements 18 containing a liquid crystal dispersion. (FF 8.) Brody further
teaches that interconnecting conductors 30 extend from an electrical driver
circuit 29 along edge surfaces 17 of the module 11 to electrically connect
electrical switching elements 20 with a transparent conductive layer 28 on an
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opposite surface of picture elements 18. (FF 9.) In other words, Brody
teaches that the interconnecting conductors 30 extend from the transparent
conductive layer 28 along the edge surfaces 17 or “through” the picture
elements 18 containing the liquid crystal dispersion.
Appellants argue that because Brody’s “interconnecting conductor 30
is spaced from the liquid crystal medium by the material used to seal the
individual modules, the conductor 30 does not extend through the liquid
crystal medium.” (Br. 16.) Although Appellants are attempting to
distinguish over Brody by arguing that the conductive via is exposed or in
contact with the display medium, this feature is not claimed.
Therefore, Appellants have not shown that the Examiner erred in
finding that the combination of Rothschild, Sato, Inoue and Brody teaches or
suggests the limitation “at least one conductive via extending from the
electrode through the display medium,” as recited in dependent claims 8
and 11.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 8 and 11 under 35 U.S.C. § 103(a). Because Appellants
have not presented arguments regarding claim 9, we affirm the rejection of
this claim under 35 U.S.C. § 103(a) for the same reasons as claim 8, from
which claim 9 depends.

CONCLUSION
Based on the findings of fact and analysis above, we conclude that:
(1) Appellants have not shown that the Examiner erred in rejecting
claims 1-5, 8-13, 16, 18 and 20 under 35 U.S.C. § 103(a).
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(2) Appellants have shown that the Examiner erred in rejecting
claims 6, 7, 14 and 15 under 35 U.S.C. § 103(a).

DECISION
The rejection of claims 1-5, 8-13, 16, 18 and 20 under 35 U.S.C.
§ 103(a) is affirmed.
The rejection of claims 6, 7, 14 and 15 under 35 U.S.C. § 103(a) is
reversed.
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-IN-PART

bim

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