Ex Parte Haueter et al

Patent Trial and Appeal Board

Oct 31, 2014

11608929 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ULRICH HAUETER, MAURICE DUCREIT, DAVID
BOSSHARD, THOMAS RUFER, IVAN HEUTSCHI, HANS-PETER
STOLLER, JOEL JECKELMANN, MARTIN BRUGGER, and HEINER
KAUFMANN1
__________

Appeal 2012-006025
Application 11/608,929
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC B. GRIMES and
ROBERT A. POLLOCK, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 5–7, 14, 22, 23, and 26–29 as unpatentable. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, and designate our affirmance as a New Ground of
Rejection under 37 C.F.R. § 41.50(b).

1 Appellants disclose that the Real Party in Interest is Roche Diagnostics
International AG. (App. Br. 1).
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STATEMENT OF THE CASE
Appellants’ invention relates to a dual-display device suitable for use
with portable medical devices such as insulin pumps and blood glucose
monitors. (Spec. ¶¶ 1, 17.)
Representative independent claims 14 and 23 read as follows:
14. A patient system comprising a patient device
which comprises a user interface and a case, wherein the user
interface comprises a first display unit which displays
information relating to the patient device and is integrated
into the case and a second display unit which displays
information relating to the patient device and is external to
the case, wherein the second display unit is coupled to the
case such that it can be at least one of folded, tilted, pulled
out or unrolled relative to the case, wherein the case further
comprises a projection unit comprising an optical lens and a
light source which provides visible light, and wherein the
first display unit is arranged directly between the optical lens
and the light source such that the information can be
projected onto a surface separate from the case.
23. A patient device comprising:
a case;
a user interface enabling interaction between a patient
and the patient device, wherein the user interface comprises a
display unit which displays information to the patient; and
a projection unit provided on or in the case which
projects information onto a surface separate from the case,
wherein the projection unit comprises an optical lens and a
light source which provides visible light;
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wherein the display unit is arranged directly between
the optical lens and the light source such that when the light
source is switched off, information displayed on the display
unit is readable directly from the display unit by the patient,
and when the light source is switched on, the display unit
acts as an imaging matrix such that information displayed on
the display unit is projected by the optical lens onto a surface
separate from the case.
The following grounds of rejection are before us for review:
Claims 6, 7, 14, 22, and 26–29 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 6, 7, and 23 stand rejected under 35 U.S.C. § 102(b) as
unpatentable over Faris.2
Claim 5 is rejected under 35 U.S.C. 103(a) as unpatentable over Faris
as applied to claim 23 above, in view of Scheiblhuber.3
Claims 14, 22, and 26–29 stand rejected under 35 U.S.C. 103(a) as
unpatentable over the combination of Mault,4 Wilk,5 and Boie.6

35 U.S.C. § 112
The Examiner rejects independent claim 14, and dependent claims 6,
7, 22 and 26–29, as failing to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph. (Ans. 4–5; 12–15.) Claim
14 includes:

2 Faris et al., US 6,414,728 B1, issued July 2, 2002.
3 Scheiblhuber, US 2006/0209020 A1, published September 21, 2006.
4 Mault et al., US 6,790,178 B1, issued September 14, 2004.
5 Wilk, US 6,643,124 B1, issued November 4, 2003.
6 Boie et al., US 5,847,690, issued December 8, 1998.
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a case . . . comprising an optical lens and a light source;

a first display unit . . . integrated into the case;

a projection unit comprising an optical lens and a light
source …wherein the display unit is arranged directly
between the optical lens and the light source . . . such that
information can be projected onto a surface separate from
the case; and

a second display unit . . . external to the case, wherein the
second display unit is coupled to the case such that it can be
at least one of folded, tilted, pulled out or unrolled relative
to the case

In rejecting claims under 35 U.S.C. § 112, first paragraph, the
Examiner finds that the Specification fails to support an embodiment
comprising (1) “a first display unit . . . integrated into the case . . . wherein
the display unit is arranged directly between the optical lens and the light
source; and (2) a second display unit . . . external to the case,” as set forth in
claim 14. (See Ans. 5. (Rejections based on failure to disclose “an external
display unit coupled to a first display unit [] situated between a light source
and a lens to project information on a separate surface.”).) Appellants
contend that the claim limitations are supported by, inter alia, Figures 1, 3,
and 5 of the Specification. (App. Br. 5–8; Reply Br. 2–3.)
Findings of Fact
FF1. Figure 1 is reproduced below.

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Figure 1 is a schematic representation of an embodiment of patient
device 2, comprising “case 3 and a projection instrument, which
projects or presents information on a surface 4 remote from the patient
device.” (Spec. ¶ 19.) The projector comprises “optical lens, 18, and
an imaging matrix 6 (for example an LCD panel or the like) arranged
between the light source 12 and the lens 18.” (Id. at 21.) As shown
in Figure 1, Element 6 is therefore, a “display unit arranged directly
between the optical lens and the light source,” as set forth in claim 14.
FF2. Figure 3 is reproduced below.

Figure 3 is a schematic representation of an embodiment of patient
device 2 “having a display unit 6a, also referred to below as display
6a, and a projection instrument.” (Id. ¶ 26.) In contrast to Element 6
of Figure 1, display unit 6a is not arranged directly between an optical
lens and the light source.
FF3. Figure 5 is reproduced below.

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Figure 5 is a schematic representation of an exemplary embodiment of
patient device 2 having a first display unit 6 on case 3, and a second
display unit 6a, external to case 3. (See e.g., id. ¶¶ 19, 36.) The
Specification states that “[t]he patient device 2 in the exemplary
embodiment shown has a display 6 and an external display 6a, which
is operably coupled to the patient device 2.” (Id. ¶ 36.) “The external
display 6a may be a conventional LCD display, which is fastened on
the patient device 2 in such a way that it can be folded or tilted.” (Id.
¶ 37.) “As an alternative to a rigid LCD display, it is possible to use
a flexible display which can be rolled out when needed.” (Id. ¶ 39.)
Analysis
The written description requirement of § 112, first paragraph, requires
that description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” Vas–Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) (citing In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989)). The test for sufficiency is therefore,
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010).
Figure 1 of the Specification discloses a patient device comprising a
first display unit (display 6) arranged directly between an optical lens and a
light source such that information can be projected onto a surface separate
from the case. FF1. Figure 3 differs from Figure 1 in omitting a lens
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element such that a second disclosed display unit, 6a, is not arranged directly
between an optical lens and a light source. FF2.
In view of Figures 1 and 3, the patient device illustrated in Figure 5
shows case 3 comprising a first display unit 6, and a second display unit 6a
that is separate from, but operably coupled to, case 3. As the Specification
teaches element 6 in association with an optical lens and a light source (as
shown in Figure 1), we find that the Specification reasonably conveys to
those skilled in the art that the inventors had possession of a patient device
comprising (1) “a first display unit . . . integrated into the case . . . wherein
the first display unit is arranged directly between the optical lens and the
light source;” and (2) “a second display unit . . . external to the case,” as set
forth in claim 14.
In view of the above, we do not sustain the Examiner’s rejection of
claims 6, 7, 14, 22 and 26–29, as failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.

35 U.S.C. § 102(b)
Findings of Fact
FF4. Faris is directed to a “transportable image display system having
direct and projection viewing modes.” (Faris abstract.) Faris Figure
13 is reproduced below.
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Faris Figure 13 shows portable pen-computing device 120 comprising
system components mounted within hand-supportable housing 122. (Id.
29:9–27.)
FF5. Faris Figure 13a is reproduced below.

Faris Figure 13a shows a portable pen-computing system comprising
hand-supportable housing 122 interposed between portions of portable
light projection device 60’. Portable light projection device 60’
comprises a first housing portion including light-emitting element
61C, and a second housing portion including projection lens 82. (Id.
28:62–29:3.) Images passing through projection lens 82 are projected
onto viewing surface 89.
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Analysis
The Examiner rejects claims 6, 7, and 23 as anticipated by Faris under
35 U.S.C. § 102(b). Appellants contend that the Examiner errs in finding
that Faris teaches “a projection unit provided on or in the case” as recited in
claim 23, from which claims 6 and 7 depend.
The Examiner’s rejection focuses on Faris, Figure 13a and equates
housing 122 as the “case” recited in the rejected claims. (Ans. 6–9; 15.) In
particular, the Examiner finds that Farris Figure 13a discloses “projection
device 60’ attached to unit 122 (patient unit) case.” (Id.) According to the
Examiner, “[t]his clearly shows a projection unit ‘provided on the case’ of a
patient unit since it is physically attached.” (Id.)
Whereas claim 23 recites “a projection unit provided on or in the case
which projects information onto a surface separate from the case,” element
122 refers to the housing (case) for portable pen-computing device 120 and,
contrary to the Examiner’s finding, does not encompass a projection device.
(FF 4) As indicated in FF5, however, element 60’ is a projection device
comprising first and second housing portions, which projects images onto
viewing surface 89.
Applying the broadest reasonable construction to the term “case” we
find that it encompasses the first and second housing portions of Faris’
portable projection device 60’. Faris thus, discloses “a projection unit
provided on or in the case which projects information onto a surface separate
from the case,” as set forth in claim 23.
For the reasons set forth above, we sustain the rejection of claim 23
under 35 U.S.C. § 102(b) as anticipated by Faris. Claims 6 and 7 were not
argued separately and therefore fall with claim 23. 37 C.F.R.
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§ 41.37(c)(1)(vii). Because our reasoning differs somewhat from that of the
Examiner, we designate this affirmance a New Ground of Rejection under
37 C.F.R. § 41.50(b).

35 U.S.C. § 103(a)
Claim 5
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Faris as applied to claim 23 above, in view of
Scheiblhuber. Scheiblhuber is cited as teaching a projected virtual
keyboard. Appellants contend that Scheiblhuber does not remedy the above
deficiencies of Faris, but make no other argument regarding the patentability
of claim 5.
For the reasons set forth above with respect to claim 23, we therefore
sustain the rejection of claim 5. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection
to the Board, . . . the Board may treat any argument with respect to that
ground of rejection as waived. In the event of such a waiver, the PTO may
affirm the rejection of the group of claims that the examiner rejected on that
ground without considering the merits of those rejections.”). As with the
rejection under 35 U.S.C. § 102(b), this is a New Ground of Rejection under
37 C.F.R. § 41.50(b).
Claims 14, 22, and 26–29
The Examiner rejects independent claim 14, and its dependent claims
22 and 26–29 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Mault, Wilk, and Boie. (Ans. 10.)
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Findings of Fact
FF6. Boie relates to a typical electronic liquid crystal display panel
comprising an integrated digitizer adapted for sensing the location of
an input on a display screen. (Boie abstract, 1:6-10; 2:16-39.)
FF7. Boie Figure 1A is reproduced below.

Boie, Figure 1A, shows the structure of a liquid crystal display panel
including a back light, reflecting back surface, polarizer, cover glass,
and a liquid crystal display module between the reflecting back
surface and cover glass. Boie states that “The polarizers function to
select one component of light reflected off the back surface and
through the liquid crystal display module so as to make the viewed
surface of the cover glass appear bright when the cell (or pixel) is off
or dark when the cell (or pixel) is on.” (Id. 1:42-47.)
Analysis
The Examiner relies on Boie Figure 1A for teaching a “display unit
[is] arranged directly between the optical lens and the light source,” as set
forth in claim 14. (Ans. 11, 16.) In particular, the Examiner finds that Boie
Figure 1A shows “a liquid crystal display module [ ] located directly
between a back light (‘light source’) and a cover glass (‘optical lens’).” (Id.
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11.) Appellants contend that Examiner errs because Boie Figure 1A “clearly
shows the back light located to the side of a reflecting surface. As such,
Boie fails to show the display module directly between the back light and the
cover glass as recited in the noted claims.” (Reply Br. 4.).
We agree with Appellants that Boie Figure 1A does not show a
display unit arranged directly between the optical lens and a light source.
Nor does the Examiner address this deficiency with any teaching of Mault or
Wilk. The evidence relied upon by the Examiner, therefore, does not
support a conclusion of obviousness based on the combination of Mault,
Wilk, and Boie. Accordingly, we do not sustain the Examiner’s rejection of
claims 14, 22 and 26–29 under 35 U.S.C. § 103(a).
SUMMARY
We reverse the rejection of claims 6, 7, 14, 22, and 26–29 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We affirm the rejection of claims 6, 7, and 23 under 35 U.S.C.
§ 102(b) as unpatentable over Faris. Because our reasoning differs from that
of the Examiner, we designate our affirmance a new ground of rejection
under 37 C.F.R. § 41.50(b).
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Faris as applied to claim 23 above, in view of
Scheiblhuber. Because our reasoning differs from that of the Examiner, we
designate our affirmance a new ground of rejection under 37 C.F.R.
§ 41.50(b).
We reverse the rejection of claims 14, 22, and 26–29 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Mault, Wilk, and Boie.
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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