Ex Parte Chang et al

Patent Trial and Appeal Board

Apr 24, 2017

12976909 (P.T.A.B. Apr. 24, 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.
12/976,909 12/22/2010 Shih Chang Chang 106842041400
(P10384US1)
8325
69753 7590 04/26/2017
APPT F cln MORRTSON Rr FOFRSTFR T T P T A
EXAMINER
707 Wilshire Boulevard
Los Angeles, CA 90017
EDWARDS, CAROLYN R
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIH CHANG CHANG, HOPIL BAE, CHENG HO YU,
AHMAD AL-DAHLE, and ABBAS JAMSHIDI ROUDBARI
Appeal 2016-004664
Application 12/976,9091
Technology Center 2600
Before JUSTIN BUSCH, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—25. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Apple Inc. as the real party in interest. Br. 2.
Appeal 2016-004664
Application 12/976,909
STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention is directed to “separately controlling a
slew rate of a scanning signal and a shunting capability of the scanning line”
for a touch screen. Spec. 11. According to the Specification, in order to
reduce unwanted visual artifacts, it may be desirable to increase the falling
times of gate line signals and, once the gate line has stabilized, decrease the
shunting resistance of the gate line. Spec. 14.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics'.
1. A scanning system comprising:
a plurality of scan lines including a first scan line and a second
scan line, the first scan line having a first scanning signal and the second
scan line having a second scanning signal;
a first transistor that controls one of a rising time and a falling
time of the first scanning signal;
a second transistor having a first electrical resistance when the
second transistor is switched on that controls the other of the rising time
and the falling time of the first scanning signal, the first electrical
resistance based on the other of the rising time and the falling time of
the first scanning signal; and
a third transistor having a second electrical resistance when the
third transistor is switched on that controls a first shunting operation of
the first scanning signal, wherein the first electrical resistance is
different from the second electrical resistance and
the second and third transistors are coupled to the second scan
line.
The Examiner’s Rejections
1. Claims 1—7 and 9-25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Uh et al. (US 2006/0279511 Al; Dec. 14, 2006)
2
Appeal 2016-004664
Application 12/976,909
(“Uh”) and Moon et al. (US 2005/0083292 Al; Apr. 21, 2005) (“Moon”).
Final Act. 3—13.
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uh, Moon, and Choi et al. (US 2008/0067528 Al;
Mar. 20, 2008) (“Choi”). Final Act. 13-14.
Issue on Appeal
Did the Examiner err in relying on the proposed combination of Uh
and Moon to teach or suggest the limitations of, inter alia, claim 1 because
an ordinarily-skilled artisan would not have been motivated to combine the
teachings as suggested by the Examiner?
ANALYSIS2
Appellants assert the Examiner’s proposed combination of Uh and
Moon is improper because a person of ordinary skill in the art would not
have been motivated to modify the transistors (T5 and T6) of Uh to have
different resistances, as taught by Moon, because the trade-offs outweigh the
benefits of such a modification. Br. 6—8. In particular, Appellants
acknowledge the potential benefits of the proposed modification (i.e., a
reduced capacitive load and increased operating speed) as identified by the
Examiner but posit “the benefits would come at the cost of an unstable gate
output line and the risk of the gate output line being in a floating state.”
Br. 7. Appellants suggest an unstable gate output line would occur because
2 Throughout this Decision, we have considered the Appeal Brief, filed
September 21, 2015 (“Br.”); the Examiner’s Answer, mailed February 2,
2016 (“Ans.”); and the Final Office Action, mailed November 26, 2014
(“Final Act.”), from which this Appeal is taken.
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Application 12/976,909
the modified transistors would have different parasitic capacitances,
different pull-down speeds and different threshold voltages. Br. 7.
Appellants further suggest these values would change with time. Br. 7.
Thus, Appellants assert the proposed modification “could lead to the gate
output line being in a floating state . . . [and] can lead to a display with non-
uniform brightness.” Br. 7 (emphases added). Accordingly, Appellants
contend that “although the modification proposed by the Examiner may be
‘feasible,’ it is not, on balance, ‘desirable.’” Br. 8; see Winner Int7 Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000). Appellants also
suggest the Examiner’s proposed modification is a product of impermissible
hindsight. Br. 8.
Additionally, Appellants suggest an alternate modification to Uh’s
transistors (i.e., making them smaller but still having the same resistance).
Br. 7—8. Appellants aver such a modification would not only provide the
benefits identified by the Examiner, but also avoid the pitfalls (as alleged by
Appellants) with the Examiner’s proposed modification. Br. 7—8.
As an initial matter, it is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence). Here, Appellants do not provide
sufficient evidence to support the claims of the alleged drawbacks of the
Examiner’s proposed modification to Uh. Additionally, Appellants have not
presented sufficient evidence that combining Moon’s transistors of different
size (and having different electrical resistances) with the circuit of Uh would
have been “uniquely challenging or difficult for one of ordinary skill in the
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Application 12/976,909
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)).
Regarding Appellants’ suggested alternate modification of Uh, we
note our precedent does not require that the motivation to combine the
teachings be the best option, only that it be a suitable option from which the
prior art did not teach away. See Galderma Labs., L.P. v. Tolmar, Inc., 737
F.3d 731, 738 (Fed. Cir. 2013); Bayer Healthcare Pharm., Inc. v. Watson
Pharm., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013).
To the extent Appellants argue the Examiner’s proposed modification
is inconsistent with Uh’s principle of operation (see Br 7), we agree with the
Examiner that Uh is directed to “a shift register that is capable of performing
low voltage driving without being adversely affected by parasitic
capacitance.” Uh| 15; Ans. 4.
Finally, we are unpersuaded the Examiner relied on impermissible
hindsight in combining the teachings of Uh and Moon. Rather than relying
on Appellants’ disclosure as a basis for the proposed modification, the
Examiner identifies sufficient motivation (i.e., to reduce the capacitive load
and increase operating speed) from Moon for the proposed modification.
See Final Act. 6 (referring to Moon 1251).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 1. For
similar reasons, we also sustain the Examiner’s rejection of independent
claims 12 and 21, which recite similar limitations and were not argued
separately. See Br. 8. Further, we sustain the Examiner’s rejections of
claims 2—11, 13—20, and 22—25, which depend therefrom and were not
argued separately. See Br. 8—9.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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