Ex Parte Bruls et al

Patent Trial and Appeal Board

Aug 30, 2016

12441541 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/441,541 03/17/2009 Wilhelmus Hendrikus Alfonsus Bruis
24737 7590 09/01/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2006P01534WOUS 3288
EXAMINER
TSENG, CHARLES
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILHELMUS HENDRIKUS ALFONSUS BRULS,
BART GERARD BERNARD BARENBRUG,
and DIRK KORNELIS GERHARDUS DE BOER
Appeal2015-002536
Application 12/441,541
Technology Center 2600
Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and
JOHNNY A. KUMAR, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20 and 22. Claim 21 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Invention
The invention on appeal relates to a method of, and a device for,
allowing two or more viewers to view the same (still and/or moving) images
Appeal2015-002536
Application 12/441,541
on the same display screen, while providing one or more individual settings
for each viewer. (Spec. 1 ).
Representative Claim
1. A device (1) for displaying an image having at least two
different image settings, each image setting defining an image
reproduction quality, the device comprising:
an image processing unit (2) for providing at least three
different partial images, a first pair of partial images together
constituting the image having a first image setting and a second
pair of partial images together constituting the image having a
second image setting, and
[L] a display unit (3) comprising only one electronic
display screen, said screen for displaying the at least three
partial images, such that the image having the first image
setting and the image having the second image setting are both
visible to their respective viewers (VI, V2).
(Emphasis added regarding the contested limitation, labeled as L ).
Rejections
A. Claims 1-20 and 22 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
B. Claims 1---6, 9-17, 20, and 22 are rejected under 35 U.S.C. § 103(a)
over the combined teachings of Putilin et al. (US 2004/0223218
Al; pub. Nov. 11, 2004) and Lapstun et al. (US 2006/0028400 Al;
pub. Feb. 9, 2006).
C. Claims 7, 8, 18, and 19 are rejected under 35 U.S.C. § 103(a) over
the combined teachings of Putilin, Lap stun, and Tomita (US
2004/0233275 Al; pub. Nov. 25, 2004).
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Grouping of Claims
Based upon Appellants' arguments, we decide the appeal of claims
1---6, 9-17, 20, and 22, rejected under§ 103 rejection B, on the basis of
representative claim 1. We address the remaining claims rejected under
§103 rejection C, infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejection A of Dependent Claims 1-20 and 22
under § 112, second paragraph
The Examiner finds an inconsistency arises in independent claims 1,
12, and 13, "where Applicants attempt to exclude additional display screens
with the recitation of 'only one' display screen and where these claims recite
open transitional phrases such as 'comprising' which would permit
additional display screens." (Final Act. 2-3). Thus, the Examiner concludes
claims 1, 12 and 13 are indefinite, because the Examiner finds it is unclear
whether the language of these claims permits or excludes additional un-
recited elements, such as additional display screens. (Id.).
Regarding the claim 1 limitation "a display unit (3) comprising only
one electronic display screen," we apply the guidance of our reviewing
court:
[T]his court has repeatedly emphasized that an indefinite article
"a" or "an" in patent parlance carries the meaning of "one or
more" in open-ended claims containing the transitional phrase
"comprising." That "a" or "an" can mean "one or more" is best
described as a rule, rather than merely as a presumption or even
a convention. The exceptions to this rule are extremely limited:
a patentee must "evince[ ] a clear intent" to limit "a" or "an" to
"one." The subsequent use of definite articles "the" or "said" in
a claim to refer back to the same claim term does not change
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Application 12/441,541
the general plural rule, but simply reinvokes that non-singular
meanmg.
SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348, 1360
(Fed. Cir. 2012) (citing Baldwin Graphic Systems, Inc. v. Siebert, 512 F.3d
1338, 1342 (Fed.Cir.2008)).
Here, we find Appellants have evinced a clear intent to limit the
indefinite article "a" to "one" under the term "comprising" by amending the
independent claims during prosecution to recite "only one electronic display
screen .... " Although the Specification (10, 11. 31-32) indicates "the words
'comprise(s)' and 'comprising' are not meant to exclude any elements not
specifically stated," we conclude the claim term "only one" (added by
amendment) specifically states the claim scope is limited to only one
electronic display screen. (See independent claims 1, 12, and 13).
Although the Specification also describes that "[s]ingle (circuit)
elements may be substituted with multiple (circuit) elements or with their
equivalents" (Spec. 10, 11. 32-33), we do not conclude the contested claim
language is indefinite. As argued by Appellants (App. Br. 6), the claims
only permit additional elements (under the transitional phrase "a display unit
(3) comprising .. . ")that are not electronic displays. Thus, we conclude the
claim language that restricts the scope of independent claims 1 and 12 to "a
display unit (3) comprising only one electronic display screen" does not
contravene the term "comprising" as found by the Examiner. (Final Act. 2-
3). 1
1 We note remaining independent claim 13 is a method claim that recites
similar language: "displaying the at least three partial images on only one
electronic display .... "(emphasis added).
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Application 12/441,541
Accordingly, for essentially the same reasons argued by Appellants in
the Briefs (App. Br. 5-7; Reply Br. 2-3), as further discussed above, we
reverse the Examiner's rejection A of claims 1-20 and 22 under§ 112,
second paragraph. 2
Rejection B of Claims 1-6, 9-17, 20, and 22 under 35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Putilin and Lapstun would have taught or suggested
contested limitation L: "a display unit (3) comprising only one electronic
display screen, said screen for displaying the at least three partial images,
such that the image having the first image setting and the image having the
second image setting are both visible to their respective viewers (VI, V2),"
within the meaning of claim 1? (Emphasis added). 3
2 ln the event of fmi.her prosecution of this application~ we leave it to the
Examiner to consider whether at kast clahn 1 should be rejected under
35 LLS.C. § 112, first paragraph, for failing to comply with the written
description requirement under Santarus, Inc. v. Par Pharmaceutical, Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012) ("Negative claim limitations are
adequately supported when the specification describes a reason to exclude
the relevant limitation. Such written description support need not rise to the
level of disclaimer. In fact, it is possible for the patentee to support both the
inclusion and exclusion of the same material."). See also MPEP
§ 2173.05(i) ("Any negative limitation or exclusionary proviso must have
basis in the original disclosure. . . . The mere absence of a positive recitation
is not basis for an exclusion."). Specifically, we conclude the requirement
that the display unit "compris[es] on~v one electronic display screen" is a
negative limitation, by excluding additional display screens. This negative
limitation was added by amendment during prosecution. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b \no inference
should be drawn \vhen the Board elects not to do so. See MPEP § 1213.02.
3 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See Spec. e.g., p. 10, 1. 30-p. 11, 1. 4.
5
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We have considered all of Appellants' arguments and any evidence
presented. Regarding the claims rejected under rejection B under§ 103, we
disagree with Appellants' arguments, and we adopt as our own: ( 1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Answer in
response to Appellants' arguments. (Ans. 3---6). However, we highlight and
address specific findings and arguments for emphasis in our analysis below.
The Examiner finds Putilin teaches limitation L by teaching "stacked
electronic liquid crystal panels to provide a single electronic viewing
window or screen as only one electronic display screen from the perspective
of viewers for displaying a single image that may be viewed in different
aspects according to a viewer's viewing location or angle," wherein "the
display of the stereopairs [] display[ s] different aspects of a same image for
viewing by different viewers." (Final Act. 5 (citing Putilin i-fi-132, 40, 41, 80,
and Figs. 10-11)).
Appellants contend Putilin fails to teach "a display unit (3) comprising
only one electronic display screen." (App. Br. 8). Appellants aver Putilin
teaches the display unit comprises "at least two transmissive electronic
display screens ... positioned one behind another," and "explicitly recites
that [Putilin's] invention requires two such screens." (Id. at 9 (emphasis
omitted) (quoting Putilin i-f 14) ). Appellants further urge, "interpreting the
phrase 'electronic display screen' in the manner asserted in the Final Office
Action is contrary to the accepted meaning of the phrase 'electronic display
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Application 12/441,541
screen,' as well as how that phrase is used throughout the specifications of
both Putilin and of the current invention." (App. Br. 9 (emphasis omitted)).
Appellants contend the Examiner's reliance on the description in the
Specification (7, 11. 2-3) that "no split-screen arrangements are necessary to
produce the partial images" is misplaced because "[t]he term 'split-screen' is
a well-known term of art that refers to a display technique that consists of
dividing graphics and/or text into non-movable adjacent parts, typically two
or four rectangular areas" and, as such, "a split-screen is only one 'electronic
display screen."' (App. Br. 10-11 ). Finally, Appellants assert Lap stun
"fails to teach the feature that the image created in accordance with these
settings is displayed on a single electronic display screen." (Id. at 11 ).
The Examiner explains in the response to arguments (Ans. 4):
"Appellants' Specification states the 'display unit 3 is designed for
providing a single image, and that no split-screen arrangements are
necessary to produce the partial images'" and thus "Appellants'
Specification refers to its display screen of its display unit as a viewing area
[] providing a single image in contrast to split-screen arrangements." (Id.
citing Spec. 6-7).
The Examiner finds Putlin's "stacked electronic liquid crystal panels
provide a single electronic viewing window or screen as only one electronic
display screen from the perspective of the viewers for displaying a single
image that may be viewed in different aspects according to a viewer's
viewing location or angle." (Ans. 4 (citing Putilin i-fi-132, 80, and Figs. 10-
11)). See also Putilin Fig. 2.
The Examiner further explains: "even if the claim[] language of 'only
one electronic screen' precludes the use of stacked liquid display panels,
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Application 12/441,541
Putilin still discloses the use of a single electronic display screen" by
teaching "lenticular displays are well known in the art as a display unit with
a single screen behind a lenticular screen." (Ans. 5 (citing Putilin i-fi-15, 19)).
4 The Examiner notes, "Appellants acknowledge lenticular displays would
meet the claimed language" (Id. (citing App. Br. 8)).
Appellants disagree (Reply Br. 4):
[T]he application (and the claims ... ) makes a distinction
between a display unit (e.g., a lenticular display, a parallax
barrier display, a regular display) and an electronic display
screen (e.g., an LCD screen, a plasma screen, a CRT screen, an
electrophoretic display screen, a passive screen on which
images are projected by a suitable projector).
Appellants further respond: "the Examiner's Answer submits that
'Appellants acknowledge lenticular displays would meet the claimed
language.' This is not factually correct as a display unit comprising only
one lenticular display is what is discussed at page 6, lines 24--28 and
depicted in Fig. 3 of the application." 5 (Reply Rr. 6 (citation omitted)).
We do not find Appellants' contentions persuasive. Although
Appellants' Specification discusses both display units and screens, it does
not define an "electronic display screen" and Appellants have provided no
4 See Putilin e.g., i-fl9, describing "prior art systems where image
information for both eyes is displayed on a single screen or plane behind a
lenticular screen or lens." (emphasis added).
5 See Spec. 6, 11. 24--28 ("The display unit 3 may be a lenticular display, a
parallax barrier display or a regular display, and may comprise an LCD
(Liquid Crystal Display) screen, a plasma screen, a CRT (Cathode Ray
Tube) screen, an electrophoretic display screen, or a passive screen on
which images are projected by a suitable projector. Such displays and
screens are known per se."
8
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Application 12/441,541
-t , , -t • -t • , "'I -t , , -t -t • -t , "'I • £' , "'I , f:.. "TT T reouna1 ev10ence m me recora to estaonsn me meamng or tne term. v we
find an artisan at the time of the invention would have understood a display
"screen" to be "a flat surface on which a picture or series of pictures is
projected or reflected'' 7 (emphasis added). Therefore, on this record, we are
not persuaded the Examiner's interpretation of the claimed "electronic
display screen" as "a viewing area ... providing a single image" (Ans. 4) is
overly broad, unreasonable, or inconsistent with Appellants' Specification. 8
Putilin teaches a single viewing area providing a single image that will be
perceived differently by multiple users. (Putilin i-f 80; see also i-f l 9).
For at least these reasons, and on this record, we find a preponderance
of the evidence supports the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness regarding contested limitation L of
claim 1. Because Appellants have not persuaded us the Examiner erred, we
sustain § 103 rejection B of representative claim 1. Grouped claims 2---6,
9-17, 20, and 22, also rejected under rejection B, fall with claim 1. See
Grouping of Claims, supra.
Rejection C of claims 7, 8, 18, and 19 under §103(a)
Appellants advance no separate arguments for claims 7, 8, 18, and 19,
rejected under§ 103 rejection C. Arguments not made are considered
6 The arguments of counsel cannot take the place of evidence in the record.
In re Schulze, 346 F.2d 600, 602 (CCPA 1965); In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997).
7 "Screen," Merriam-Webster's Collegiate Dictionary, 1049 (10th ed. 1997).
8 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted). See also n.3, supra.
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Application 12/441,541
waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain rejection C
of dependent claims 7, 8, 18, and 19.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. 9 See 37 C.F.R. § 41.41(b)(2).
DECISION
We reverse the Examiner's rejection of claims 1-20 and 22 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner's rejections of claims 1-20 and 22 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
9 Appellants advance several new, untimely arguments in the Reply Brief
(6), which we do not reach, because good cause has not been shown: e.g., (1)
It is unclear how Putilin renders obvious the language of claim 1; and, (2)
Putilin "teaches away" from the claimed invention. See 37 C.F.R.
§ 41.41 (b )(2).
10