Ex Parte Hickman

Patent Trial and Appeal Board

Apr 27, 2017

14075646 (P.T.A.B. Apr. 27, 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.
14/075,646 11/08/2013 Mark R. Hickman H-13-148-US 6160
71016 7590
Bose Corporation
Patent Group
Mountain Road, MS 3B1
Framingham, MA 01701
05/01/2017 EXAMINER
PATEL, PREMAL R
ART UNIT PAPER NUMBER
2623
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
docket @ bose. com
designs @ bose. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK R. HICKMAN
Appeal 2017-001190
Application 14/075,6461
Technology Center 2600
Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JOHN A. EVANS, Administrative Patent Judges.
Per Curiam.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—8, 10-14, 17—22, 25, and 26. App. Br. 2. Claims 9, 15, 16, 23, and
24 have been canceled. Claims App’x. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Bose Corporation.
App. Br. 2.
Appeal 2017-001190
Application 14/075,646
Appellant’s Invention
Appellant invented a system containing cascaded displays including
superimposed transparent display panels. Abstract. Each panel presents a
particular type of information. Spec. 138, Fig. 2. In a passive mode, panel
102 presents persistent information, such as clock data, and panel 104 is
transparent. Id. Upon switching to active mode, panel 102 does not present
data and panel 104 presents non-persistent information. Id.
Claim 1, reproduced below, is illustrative of the claimed subject
1. An apparatus comprising:
a display device comprising:
a first display panel on which information of a first type is
displayed; and
a second display panel on which information of a second
type is displayed, the second display panel being optically
transparent and superimposed over the first display panel,
wherein the apparatus is configured to be switched between a
first mode, in which the first display panel presents information
of the first type and the second display panel does not present
any information, and a second mode, in which the second display
panel displays information of the second type and the first
display panel does not display any information.
Illustrative Claim
matter:
CHO et al.
(“CHO”)
Prior Art Relied Up
US 2010/0079704 Al Apr. 1, 2010
Ostergard et al.
(“Ostergard”)
Hagiwara et al.
(“Hagiwara”)
US 2010/0333006 Al Dec. 30,2010
US 2011/0043486 Al Feb. 24,2011
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Appeal 2017-001190
Application 14/075,646
Wells US 2011/0201404 A1 Aug. 18, 2011
YUN et al. US 2014/0035942 A1 Feb. 6, 2014
(“YUN”)
Rejections on Appeal
Claims 1—4, 6—8, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wells and Ostergard. Final Act.
2-5.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wells, Ostergard, and Yun. Final Act.
5-6.
Claims 10-13, 17—19, 21, 22, and 26 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Wells, Cho, and
Ostergard. Final Act. 12—13.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wells, Cho, Ostergard, and Hagiwara.
Final Act. 6—12.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wells, Cho, Ostergard, and Yun. Final
Act. 13-14.
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Appeal 2017-001190
Application 14/075,646
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 4—6, and the Reply Brief, pages 1—3.2
Appellant argues the proposed combination of Wells and Ostergard
does not render claim 1 unpatentable. App. Br. 4—5; Reply Br. 1—3.
Appellant contends that, as admitted by the Examiner, Wells does not teach
wherein the apparatus is configured to be switched between a first
mode, in which the first display panel presents information of the first
type and the second display panel does not present any information,
and a second mode, in which the second display panel displays
information of the second type and the first display panel does not
display any information.
App. Br. 4. In the Final Action, the Examiner relies on Ostergard to teach
these limitations. Final Act. 3. Appellant argues incorporating Ostergard’s
mode switching feature into the invention of Wells, would render it
unsatisfactory for its intended purpose and would change its principle of
operation. App. Br. 5; Appellant additionally contends that the Examiner is
solely addressing a “teaching away” argument. Reply Br. 1—2. In particular,
Appellant contends Wells seeks to provide three dimensional images. App.
Br. 5 (citing Wells 1 5); Reply Br. 2. According to Appellant, Wells
provides three dimensional images “by simultaneously displaying different
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed April 28, 2016) (“App. Br.”), the Reply Brief
(filed October 24, 2016) (“Reply Br.”), the Answer (mailed August 24,
2016) (“Ans.”), and the Final Office Action (mailed December 18, 2015)
(“Final Act.”) for the respective details. We have considered in this
Decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 14/075,646
images (partially or wholly) on different display screens.” App. Br. 5
(quoting Wells 1 59) (emphasis omitted); Reply Br. 2. Appellant argues
modifying Wells to display information on one display panel, while no
information is displayed on another display panel, would prevent the Wells
device from simultaneously displaying different images on different display
screens to generate three dimensional images. App. Br. 5. Appellant asserts
Wells does not contemplate such an embodiment. Reply Br. 2. These
arguments are not persuasive.
At the outset, we note Appellant has mischaracterized the operation of
Wells to require simultaneously displaying different images on different
display screens all of the time to generate three dimensional images. The
Examiner correctly finds Wells teaches both display screens can display
virtual three dimensional images. Ans. 16 (citing Wells 113). More
specifically, Wells teaches each display screen can display virtual three
dimensional images. See Wells 113. Thus, Wells teaches or suggests one
display screen displaying virtual three dimensional images while another
screen displays no information. See Wells 113.
The Examiner further correctly finds Wells teaches flashing a
translucent image on one display screen such that image is displayed on,
then off, then on, then off, and so on. Ans. 17 (citing Wells 118). We agree
with the Examiner that Wells teaches the one display screen flashes off the
translucent image in which no information is displayed, while the other
display screen generates a game image. Ans. 17 (citing Wells 118). These
teachings in Wells contradict Appellant’s argument that Wells requires both
screens to display information simultaneously, all of the time, to generate
three dimensional images. App. Br. 5; Reply Br. 2—3. Wells teaches that
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Application 14/075,646
displaying information on one display screen during certain periods while
displaying no information on the other display screen is sufficient for
generating three dimensional images. See Wells Tflf 13, 18. Thus, the Wells
device is not rendered unsatisfactory for its intended purpose of generating
three dimensional images when one display screen does not display
information when it is flashed off.3 Appellant replies that this teaching
provides images on both the interior and exterior display screen. Reply Br.
2—3 (citing Wells 118). However, when the Wells device flashes off for a
brief period of time, the Wells device operates consistent with the teachings
of Ostergard upon which the Examiner relies. Ans. 17 (citing Wells 118);
Final Act. 3 (citing Ostergard 134, 136—138, 42, Figs. 1A, IE, 2B, 2C).
Accordingly, we find unavailing Appellant’s argument that not presenting
information on a display screen in the Wells device for any period of period
of time renders the Wells device unsatisfactory for its intended purpose or
change its principle of operation. App. Br. 5; Reply Br. 1—2. It follows
Appellant has not shown error in the Examiner’s rejection of claim 1.
3 We remind Appellant the argument that a proposed combination of
references would render one of the references unsuitable for its intended
purpose or would change its principle of operation is a teaching away
argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court
concluded that in effect, “French teaches away from the board’s proposed
modification” because “if the French apparatus were turned upside down, it
would be rendered inoperable for its intended purpose”). The Federal
Circuit has held “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994)).
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Application 14/075,646
Regarding the rejection of claims 2—8, 10-14, 17—22, 25, and 26, to
the extent Appellant has either not presented separate patentability
arguments or has reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above, those claims fall
therewith. See 37 C.F.R. § 41.37(c)(l)(vii).
DECISION
For the above reasons, the Examiner’s rejection of claims 1—8, 10—14,
17—22, 25, and 26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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