Ex Parte Kimura et al

Patent Trial and Appeal Board

Jun 13, 2016

13550855 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/550,855 07/17/2012
31780 7590 06/13/2016
Robinson Intellectual Property Law Office, P,C,
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
FIRST NAMED INVENTOR
Hajime KIMURA
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.
0756-9854 9186
EXAMINER
SHERMAN, STEPHEN G
ART UNIT PAPER NUMBER
2621
MAILDATE DELIVERY MODE
06/13/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAJIME KIMURA and SHUNPEI YAMAZAKI
Appeal2014-001459
Application 13/550,855
Technology Center 2600
Before THU A. DANG, JOHNNY A. KUMAR, and
MICHELLE N. WORMMEESTER, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52 (hereinafter "Request") on May 5, 2016 for reconsideration of our
affirmance of the Examiner's rejections in a Decision mailed March 8, 2016
(hereinafter "Decision"). The Decision affirmed the Examiner's 35 U.S.C.
§ 103(a) rejections of claims 1-20 over Pathak and Koyama.
We have reconsidered our Decision in light of Appellants' comments
in the Request. We grant the Rehearing Request to the extent that we
consider the Appellants' arguments and clarify our holding regarding claims
1-20 infra, but DENY the request to modify the Decision. As noted infra,
we maintain our affirmance of the Examiner's rejection of claims 1-20. We
Appeal2014-001459
Application 13/550,855
are still of the view that the invention set forth in claims 1-20 would have
been obvious in view of the teachings and suggestions of Pathak and
Koyama. This Decision on Appellants' Request for Rehearing is deemed to
incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(l).
II. ISSUE
The issue we address in this Request is whether Appellants have
identified that the Board misapplied the relevant law or misapprehended
Appellants' arguments set forth in the Appeal Brief in agreeing with the
Examiner that the combination of Pathak and Koyama would have suggested
the claimed display device circuit.
III. ANALYSIS
Appellants' invention is directed to a display device. For further
clarity, Appellants' Figure 5B as discussed in our Decision (Decision 3--4) is
reproduced below:
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As shown in Figure 5B reproduced above, one source/drain of
transistor 523 is electrically connected to wiring 503, the other source/drain
is electrically connected to a terminal of memory 535, while the gate is
electrically connected to wiring 513. Further, one source/ drain of transistor
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Application 13/550,855
525 is electrically connected to wiring 502 (via transistor 522), the other
source and drain is directly connected with the display element 533, and the
gate is electrically connected with a terminal of the memory 535. One
source/drain of transistor 524 is electrically connected with wiring 501 (via
transistor 521) while the other source/drain is directly connected with the
display element 533.
As set forth in our Decision, we agreed with the Examiner that Pathak
discloses the various claimed embodiments in a display device (Decision 7).
Further, we also agreed with the Examiner's reliance on Koyama for
disclosing and suggesting the contested elements missing from Pathak (id.).
In particular, Koyama also discloses a liquid crystal device. For further
clarity, Koyama' s Figure 1 as discussed in the Decision (Decision 5) is
reproduced below:
As shown in Figure 1 of Koyama reproduced above (similar to
Appellants' Figure 5B), one source/drain of transistor 105 is electrically
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connected with wiring 101, the other source/drain is electrically connected
with a terminal of memory 108, while the gate is electrically connected with
wiring 102. Further, one source/drain of transistor 112 is electrically
connected with wiring 11 7, the other source/ drain is connected with liquid
crystal element LC, while the gate is electrically connected with a terminal
of the memory 108. One source/drain of transistor 111 is electrically
connected with wiring 120, while the other source/drain is connected with
liquid crystal element LC.
As we noted in our Decision, "Appellants do not point to any
particular claim language, and thus, do not contend that the cited references
fail to disclose or suggest any of the claimed limitations" (Decision 6).
Further, as set forth in the Decision, we found no error with the Examiner's
conclusion that the claims would have been obvious over the combined
teachings (Decision 7).
In the Request, Appellants contend the Decision affirming the
Examiner's rejection "is founded on three obvious errors: (1) a fundamental
miscount of Koyama's circuit elements; (2) a misrepresentation of the
status of several of Pathak's circuit elements in the combined device; and (3)
a detached disregard for Pathak's principle of operation" (Request 2).
In particular, Appellants contend, "the Examiner's revised
'replacement' theory necessarily results in more circuit elements in the
combined device than in the starting device of Pathak" (Request 3). That is,
"the incorporation of Koyama' s memory circuit 108 does not suggest the
addition of one nominal element in place of Pathak' s two capacitors but
without question requires the addition offour transistors and associated
wiring to the combined device in place of Pathak' s two capacitors" (Request
4).
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Application 13/550,855
Although Appellants concede "the Examiner and the Decision
nominally allege that the combined device would replace elements such as
Pathak's transistors SI and S2 and wirings R_l,A and R_l,B," Appellants
add that "as emphasized in the Reply Brief (Reply 5-6) and [the] Hearing,
the Examiner's Answer and [Office] Action both explicitly require these
elements to remain in the combined device [as the claimed fourth transistor,
fifth transistor, fifth wiring and sixth wiring, as set forth in the dependent
claims]" (Request 5, emphasis added). Thus, Appellants contend the finding
that the replacement of Pathak's elements would achieve an obvious
reduction in circuit size "is necessarily an inadvertent misrepresentation by
the Office of the Examiner's own theory" (Request 6).
Appellants then contend "[a] person having ordinary skill in the art
would immediately recognize that the modification cannot achieve Pathak's
pre-modification objective of row-by-row updating and simultaneous
updating of all rows" (Request 8-9).
We note that the Request includes many new arguments, including
"Table 1" and "Table 2" and what Appellants point to as arguments
"emphasized in the Reply Brief (Reply [Br.] 5---6) and the Hearing" (Request
5). However, it is inappropriate for Appellants to discuss for the first time in
a Reply Brief, Request for Rehearing, or during Oral Hearing matters that
could have been raised in the Appeal Brief. "The failure to raise all issues
and arguments diligently, in a timely fashion, has consequences." Ex parte
Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision). Cf
Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986)
and McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C.
Cir. 1986).
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Application 13/550,855
As set forth in our Decision, we agreed with the Examiner that it
would have been understood by the ordinarily skilled artisan, upon
combining Pathak' s teachings with Koyama' s teachings, "Pathak' s
'transistors and wirings S 1, S2, and R_l ,A and R_l ,B, respectively would
be replaced by a single transistor 105 and single wiring 102' of Koyama"
and that "'the memories Cl and C2' of Pathak 'would be replaced by the
memory structure 108' of Koyama" and obtaining "one less transistor per
pixel and one less wiring per row" (Decision 7-8, citing Adv. Act.). Even
Appellants concede "the Examiner and the Decision nominally allege that
the combined device would replace elements such as Pathak' s transistors S 1
and S2 and wirings R_l,A and R_l,B" (Request 5). Thus, contrary to
Appellants' contention, there is no "inadvertent misrepresentation by the
Office of the Examiner's own theory" (Request 6, emphasis added).
Although Appellants contend "the Examiner's revised 'replacement'
theory necessarily results in more circuit elements in the combined device
than in the starting device of Pathak" (Request 3)," as we pointed out in the
Decision, "[t]he issue here is not whether the skilled artisan would have
bodily incorporated the entire system of Koyama into the entire system of
Pathak," but rather
whether the ordinarily skilled artisan, upon reading Pathak and
Koyama, would have found it obvious to replace Pathak's
transistors and wirings S 1, S2 and R_l,A and R_l,B, respectively,
with Koyama's a single transistor 105 and single wiring 102, and
furthermore, also would modify the entire circuitry accordingly
in the incorporation.
Decision 8.
Thus, we agreed "the ordinarily skilled artisan would have not
included Koyama's second and third transistors ... in addition to Pathak's
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second and third transistors ... , but rather would have replaced the pair of
transistors from one to another in the combination" (Decision 9, citing Final
Act. 4). In other words, the ordinarily skilled artisan would have provided
only one second transistor and one third transistor. 1 As set forth in our
Decision, we agreed with the Examiner's conclusion "the ordinarily skilled
artisan 'would readily have realized how to incorporate the memory circuit
of Koyama into the device of Pathak'" (Decision 9, citing Ans. 12). Thus,
we find Appellants' arguments that there was "a fundamental miscount of
Koyama's circuit elements" (Request 2) unpersuasive.
Although Appellants contend "the incorporation of Koyama' s
memory circuit 108 does not suggest the addition of one nominal element in
place of Pathak's two capacitors but without question requires the addition
offour transistors and associated wiring to the combined device in place of
Pathak's two capacitors" (Request 4), Appellants do not disclose any
evidence, other than mere attorney arguments. While attorney arguments
are helpful when directing us to evidence in the record, the arguments
themselves do not constitute evidence. Here, Appellants' arguments are
speculative and unsupported by objective evidence. Argument of counsel
cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399,
1 We note that, even assuming arguendo that we were to consider
Appellants' newly added argument "as emphasized in the Reply Brief
(Reply [Br.] 5-6) and [the] Hearing," that the combination "explicitly
require these elements to remain in the combined device" as the claimed
fourth transistor, fifth transistor, fifth wiring and sixth wiring, as set forth in
the dependent claims (Request 5), the combination having only one second
transistor and one third transistor does not preclude additionally having a
fourth transistor and a fifth transistor. (See Appellants' Figure 5B.)
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1405 (CCPA 1974). As such, these arguments are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
We also do not find Appellants' contention that there is "a detached
disregard for Pathak's principle of operation" (Request 2) persuasive.
Again, Appellants do not provide any evidence in the record in support, but
mere attorney arguments. Moreover, such contention is erroneously based
on the premise of bodily incorporating the entire circuit of Koyama into the
entire circuit of Pathak. Although Appellants argue that the combination
"cannot achieve Pathak's pre-modification objective of row-by-row updating
and simultaneous updating of all rows" (Request 8-9), again, Appellants are
reviewing the combination from a different perspective than that of the
Examiner.
As set forth in our Decision, we agreed with the Examiner that
"Pathak ... establishes an express objective 'row-by-row updating of image
information in the array,"' wherein '"the function is still achieved in the
combinational result"' with Koyama as proposed (Decision 10, citing Ans.
13). As we found, "Pathak discloses that no two row selectors may actually
access the same row at the same time" (id.)
Furthermore, in our Decision, we pointed out that Appellants have
presented no evidence that incorporating the memory circuit of Koyama into
the device on Pathak, "would have been 'uniquely challenging or difficult
for one of ordinary skill in the art" (Decision 9, citing Leapfrog Enters., Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Here, we agreed
that it would have been obvious to one of ordinary skill in the art to
incorporate Koyama's memory circuit (as set forth in Figure 1 and similar to
Appellants' memory circuit as set forth in Figure 5B) into the display device
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circuit of Pathak in the same field of endeavor. Thus, even assuming
arguendo that the combination of Koyama and Pathak would increase the
number of devices instead of decreasing, as we concluded, "[s]uch a
substitution/ design choice would have been well within the skill of the art"
wherein "Appellants' invention is simply a modification of familiar prior art
teachings (as taught or suggested by the cited references) that would have
realized a predictable result" (Decision 10, citing KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 and 421 (2007)).
Accordingly, Appellants have not identified that the Board has
misapplied the relevant law or misapprehended Appellants' arguments. We
therefore maintain our affirmance of the Examiner's rejection under 35
U.S.C. § 103(a) of claims 1-20 over Pathak and Koyama.
IV. CONCLUSION AND DECISION
We have considered the arguments raised by Appellants in the
Request for Rehearing. Although, we have considered our prior Decision in
light of the Request for Rehearing, we decline to modify our prior Decision
in any respect.
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).
DENIED
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