Ex Parte Andrysco et al

Patent Trial and Appeal Board

Apr 28, 2017

14040101 (P.T.A.B. Apr. 28, 2017)

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.
14/040,101 09/27/2013 Nathan R. Andrysco P53984 6380
99256 7590
Finch & Maloney PLLC
50 Commercial Street
Gateway One, Suite 300
Manchester, NH 03101
05/02/2017 EXAMINER
LHYMN, SARAH
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
docketing @ finchmaloney .com
inteldocs_docketing @ cpaglobal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN R. ANDRYSCO and KEVIN L. LIN
Appeal 2017-002948
Application 14/040,1011
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—25, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Intel Corporation as the real party in interest. App.
Br. 2.
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Application 14/040,101
STATEMENT OF THE CASE
Introduction
Appellants’ described and claimed invention relates generally to
“[rendering techniques ... for displays capable of adjusting/changing the
angle of individual pixels (or pixel groups).” Abstract.2
Claim 1 is representative and reads as follows (with the disputed
limitation emphasized)'.
1. A method comprising:
determining per-pixel surface normal data for a textured
display including a plurality of pixels and capable of changing
the angle of individual pixels within the textured display, the
surface normal data relevant to a given scene to be presented on
the textured display; and
transferring the per-pixel surface normal data to the
textured display to cause the angle of the individual pixels of the
textured display to be adjusted based on the per-pixel surface
normal data in effort to improve upon the visual realism of the
given scene when presented on the textured display.
App. Br. 12 (Claims App’x).
Rejections on Appeal
Claims 1—3, 5, and 7—9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tsuneo Ikedo, Illumination Engine for a Billion Pixels per
Second, Technical Report HCIS-2003-03, Hosei University, Faculty of
Computer and Information Sciences (March 16, 2003) (“Ikedo”), in view of
2 Our Decision refers to the Final Office Action mailed Mar. 24, 2016
(“Final Act.”), Appellants’ Appeal Brief filed Sept. 9, 2016 (“App. Br.”) and
Reply Brief filed Dec. 14, 2016 (“Reply Br.”), the Examiner’s Answer
mailed Oct. 14, 2016 (“Ans.”), and the original Specification filed Sept. 27,
2013 (“Spec.”).
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Application 14/040,101
Yamazaki et al. (US 2012/0099049 Al; published Apr. 26, 2012)
(“Yamazaki”).
Claims 10-14 and 16—25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ikedo, in view of Yamazaki, and further in view of
Kothari et al. (US 2011/0149375 Al; published June 23, 2011) (“Kothari”).
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Ikedo, in view of Yamazaki, and further in view of Shirbabadi
(US 2011/0316828 Al; published Dec. 29, 2011).
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Ikedo, in view of Yamazaki, and further in view of Palmqvist et al.
(US 2009/0015425; published Jan. 15, 2009) (“Palmqvist”).
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Ikedo, in view of Yamazaki, in view of Kothari, and further in view of
Kim et al. (US 2010/0289740 Al; published Nov. 18, 2010) (“Kim”).
ANALYSIS
Appellants argue the cited references fail to teach or suggest “a
textured display . . . capable of changing the angle of individual pixels
within the textured display,” as recited in independent claims 1, 10, 18, and
23.3 See App. Br. 5. More specifically, as argued by Appellants, Yamazaki
does not disclose or reasonably suggest a textured display capable of
changing the angle of individual pixels within the textured display, as
Yamazaki merely describes a micro-electro-mechanical system (“MEMS”)
switch used to provide a lateral shutter function in a display device. See
3 Appellants’ arguments raise additional issues, but we do not reach them
because the identified issues are dispositive of the appeal.
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App. Br. 6. Appellants further argue the shutter of the MEMS switch of
Yamazaki only moves in a lateral direction parallel to a light emitting
substrate, and the shutter action does not change an angle of a pixel. See
App. Br. 7.
The Examiner states that, with regard to functional claim limitations,
the relevant issue is whether it is impossible for the prior art to perform the
functional claim limitation at issue (see Ans. 3). In response, Appellants
argue the “impossible standard” is improper because the claim additionally
recites an “active-type element” (i.e., “to cause the angle of the individual
pixels of the textured display to be adjusted”), which the Board treats
differently than claims that simply recite “capable of-type” elements in the
absence of “active-type elements.” See Reply Br. 2—3. Further, the
Examiner reasons that the device of Yamazaki is capable of performing the
claimed function of changing the angle of individual pixels within the
textured display because Yamazaki’s description of lateral movement does
not preclude a determination that Yamazaki’s device is capable of changing
the angle of individual pixels (see Ans. 4—6). In response, Appellants argue
the Examiner has failed to provide any explanation as to how Yamazaki’s
MEMS switch could possibly be capable of changing the angle of individual
pixels within a display. See Reply Br. 3^4.
Regarding the standard to determine whether the prior art teaches a
functional claim limitation, we note:
A patent applicant is free to recite features of an apparatus
either structurally or functionally. ... Yet, choosing to define
an element functionally, i.e., by what it does, carries with it a
risk. . . .
[Wjhere the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
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Application 14/040,101
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
In other words, to establish a prima facie case that Yamazaki teaches
“a textured display . . . capable of changing the angle of individual pixels
within the textured display,” the Examiner only needs to establish the
functional limitation is an inherent characteristic of Yamazaki’s MEMS
switch (i.e., Yamazaki’s MEMS switch is capable of changing the angle of
individual pixels within the textured display). Once established, the burden
shifts to Appellants to prove Yamazaki’s MEMS switch does not possess the
functional limitation (i.e., Yamazaki’s MEMS switch is incapable of
changing the angle of individual pixels within the textured display). See
Schreiber, 128 F.3d at 1478 (citing In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990)). We disagree with Appellants that the aforementioned standard does
not apply simply because the claims further recite an “active-type element”
(i.e., “to cause the angle of the individual pixels of the textured display to be
adjusted”), because the “active-type element” is a separate limitation from
the functional limitation at issue, and does not affect the standard to
determine whether the prior art teaches the functional limitation at issue.
However, we agree with Appellants that the Examiner has not
established Yamazaki’s MEMS switch is capable of changing the angle of
individual pixels within the textured display Thus, the Examiner has not
established a prima facie case that Yamazaki teaches the functional
limitation at issue. As articulated by the Federal Circuit, the Examiner’s
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Application 14/040,101
burden of proving non-patentability is by a preponderance of the evidence.
See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of
the evidence is the standard that must be met by the PTO in making
rejections”). “A rejection based on section 103 clearly must rest on a factual
basis[.]” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not. . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.” Id.
Yamazaki merely describes the MEMS switch includes a shutter
combined with two flexible actuators, where the actuators perform the
function of moving the shutter in a lateral direction parallel to a surface of
insulating film 505 and the substrate. See Yamazaki 1199; Fig. 9.
Appellants argue, and we agree, that the Examiner has not established how
lateral movement of the shutter is capable of changing an angle of individual
pixels of Yamazaki’s display device. See Reply Br. 3^4. Further, the
portions of Yamazaki cited by the Examiner fail to teach or suggest the
actuators of the MEMS switch provide a tilting movement, rotational
movement, or other type of movement capable of changing an angle of
individual pixels.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 10, 18, and 23 for obviousness under 35 U.S.C. § 103.
We also do not sustain the Examiner’s rejection of dependent claims 2—9,
11—17, 19-22, 24, and 25, which variously depend from one of the
aforementioned independent claims.
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DECISION
We reverse the Examiner’s decision rejecting claims 1—25 under
35 U.S.C. § 103.
REVERSED
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