Ex Parte Marathe

Patent Trial and Appeal Board

Nov 25, 2014

11951033 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MADHAV V. MARATHE
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Appeal 2012-009850
Application 11/951,033
Technology Center 2600
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Before ALLEN R. MacDONALD, JASON J. CHUNG and
BETH Z. SHAW, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–7, 9–15, and 17–19. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 1 and 9 under appeal read as follows (emphasis
added):
Claim 1. display comprising:
a plurality of pixels arranged in a matrix having rows and columns,
each pixel operable to emit light;
a first display driver operable to receive a first image and to display
the first image using a first set of columns of pixels;
a second display driver operable to receive a second image and to
display the second image using a second set of columns of pixels; and
a lenticular lens array comprising a plurality of lenticular lenses, the
lenticular lens array located adjacent to the matrix;
wherein each lenticular lens is configured to direct the light emitted
by a first column of the first set in a first direction and to direct the light
emitted by a second column of the second set in a second direction, the first
direction different than the second direction;
the first image shows a first view of a remote participant at a remote
endpoint;
the second image shows a second view of the remote participant, the
first view and the second view portraying the remote participant
concurrently from different angles; and
during a video conference involving a first participant, a second
participant, and the remote participant, the first image is directed to the first
participant and the second image is directed to the second participant.

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9. A method comprising:
receiving a first image and a second image at a display device, the
display device including a plurality of pixels arranged in a matrix having
rows and columns, each pixel operable to emit light, the display device
further including a lenticular lens array comprising a plurality of lenticular
lenses, the lenticular lens array located adjacent to the matrix;
displaying the first image using a first set of columns of pixels;
displaying the second image using a second set of columns of pixels;
and
directing the first image to a first participant during a video
conference involving the first participant, a second participant, and a remote
participant at a remote endpoint, the first image showing a first view of the
remote participant; and
directing the second image to the second participant, the second image
showing a second view of the remote participant, the first view and the
second view concurrently portraying the remote participant from different
angles;
wherein each lenticular lens is configured:
to direct the light emitted by a first column of the first set in a
first direction; and
to direct the light emitted by a second column of the second set
in a second direction, the first direction different than the second
direction.
Rejection
The Examiner rejected claims 1–7, 9–15, and 17–19 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Zacks (US
2005/0195330 A1), Inoguchi (US 6,151,062), and Francisco (US 7,515,174
B1).1

1 Separate patentability is not argued for claims 2–7, 10–15, and 17–19.
Except for our ultimate decision, these claims are not discussed further
herein.
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Appellant’s Contentions
1. As to the first of the Examiner’s two alternative theories of the
rejection (plural display drivers are inherent), Appellant contends that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because:
[T]he Examiner argues that the existence of three separate areas
of an image display source inherently teaches three separate
display drivers. See Office Action, p. 3-5. However, this
contradicts the teachings of Zacks. Zacks explicitly teaches a
single display driver. See Zacks ¶ 13, Fig. 7.
Moreover, regardless of the specific location of image
combination (the Examiner argues that it is done after the
display driver), the fact that Zacks combines multiple channels
of image content before displaying the received image
necessarily precludes the reference from teaching two distinct
display drivers for displaying two distinct received images.
(App. Br. 10) (emphasis added).
2. As to the second of the Examiner’s two alternative theories of
the rejection (plural display drivers are obvious), Appellant contends that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because “the
Examiner fails to demonstrate how Zacks suggests that its display driver
can be divided into three display drivers.” (App. Br. 10) (emphasis added).
In particular, Appellant contends, “In addition, as previously explained, the
Examiner’s reliance on [the In re Dulberg] case law in MPEP § 2144.04
V.(C) is misplaced.” (Reply Br. 3).
3. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
Zacks states that the “display driver is adapted to receive more
than one channel of image content and to use the source of
image modulated light to form a pattern of image modulated
light that combines channels of image content and that is
adapted so that image content from each channel of image
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content is observable in a different area.” Zacks, ¶ 13. In other
words, because the display driver is capable of “combin[ing]
channels of image content” using the source of image
modulated light, Zacks teaches away from divisibility of the
display driver.
(App. Br. 10) (emphasis added).
4. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
The Examiner continues to rely on case law to support
his obviousness rejection despite clear guidelines in the MPEP
to the contrary. See Office Action, p. 5-6. Based on the
Examiner’s reading of a particular case, the Examiner
previously argued that he can effectively treat a single display
driver as two display drivers, and thus, he argues, the two are
obvious over anything that shows one. See, e.g., Final Office
Action mailed February 11, 2011, pp. 4-8. This is improper for
at least two reasons. First this violates the basic tenets of
patent law and the MPEP, which require that “[a]ll words in a
claim must be considered in judging the patentability of that
claim against the prior art.” MPEP 2143.03 (citations omitted).
(App. Br. 11) (emphasis added).
5. Appellant further contends that the Examiner erred:
Second, because Appellant has demonstrated that the
claim language at issue is critical, case law cannot be relied
upon to show obviousness. See MPEP 2144 (“[i]f the applicant
has demonstrated the criticality of a specific limitation, it would
not be appropriate to rely solely on the rationale used by the
court [in case law] to support an obviousness rejection.”
(emphasis in original)).
(App. Br. 11).
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6. Appellant contends that the Examiner erred in rejecting claim 9
under 35 U.S.C. § 103(a) because:
Independent Claim 9 requires “displaying the first image using
a first set of columns of pixels” and “displaying the second
image using a second set of columns of pixels.” As Appellant
has previously stated, the Appellant’s disclosure makes clear
that these functions are inherently performed by a first display
driver and a second display driver.
(App. Br. 12) (emphasis added).

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious for the
reasons argued by Appellant?
Did the Examiner err in rejecting claim 9 as being obvious because
claim 9 inherently includes a first display driver and a second display driver?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellant’s above contention 1, we agree that plural display
drivers are not inherent to Zacks. The Examiner’s first alternative theory of
the rejection is in error as to this point.
As to Appellant’s above contention 2, we disagree with Appellant’s
argument that the Examiner erred because the Examiner fails to demonstrate
how Zacks suggests that its display driver can be divided into three display
drivers.” We disagree with Appellant’s argument that the Examiner’s
reliance on In re Dulberg is misplaced. The Examiner contends that the
prior art Zacks reference performs the same processing as claimed except in
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a unitary single display driver. The Examiner then contends that separating
the prior art processing structure into separate distinct display drivers is
merely a matter of obvious engineering choice. We agree with the Examiner
that:
[I]t would have been obvious to divide the internal components
of display driver 324 of Zacks into an X image driver to drive
the X image, a Y image driver to drive the Y image, and a Z
image driver to drive the Z image.
(Final Rej. 10). Making elements of a device integral or separable is
considered to be an obvious design choice and does not render an invention
patentable. See In re Larson, 340 F.2d 965, 968 (CCPA 1965); In re
Dulberg, 289 F.2d 522, 523 (CCPA 1961). Further, Appellant has not
shown determining this particular combination would have been uniquely
challenging or difficult for an ordinary artisan or represented an unobvious
step over the prior art (see 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, 418 (2007))).
As to Appellant’s above contention 3, we disagree with Appellant’s
argument that Zacks “teaches away” from the limitations of claim 1. As the
United States Court of Appeals for the Federal Circuit has counseled:
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. . . . [I]n general, a reference will teach
away if it suggests that the line of development flowing from
the reference's disclosure is unlikely to be productive of the
result sought by the applicant.
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In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Beyond stating that Zacks
“teaches away,” Appellant has not attempted to persuade us that as to the
argued limitation, the Zacks reference suggests that the line of development
flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant. Rather, as support for the “teaches away”
argument, Appellant has argued “the fact that Zacks combines multiple
channels of image content before displaying the received image necessarily
precludes the reference from teaching two distinct display drivers for
displaying two distinct received images.” (App. Br. 10). That is, Appellant
has simply argued that Zacks does not teach the argued limitation. With this
we agree. However, that is not sufficient to “teach away.”
As to Appellant’s above contention 4, we disagree with Appellant’s
argument that the Examiner erred because the rejection “violates the basic
tenets of patent law and the MPEP, which require that ‘[a]ll words in a claim
must be considered in judging the patentability of that claim against the prior
art’ MPEP 2143.03 (citations omitted).” (App. Br. 11). Beyond this
conclusory statement, Appellant provides no analysis to show how the
Examiner has not considered all words in the claim in judging the
patentability of the claim against the prior art. To the contrary, the
remainder of Appellant’s numerous arguments are directed to why the
Appellant is in disagreement with how the Examiner did consider all words
in the claim.
As to Appellant’s above contention 5 and 6, we disagree with
Appellant’s argument that the Examiner erred “because Appellant has
demonstrated that the claim language at issue is critical, case law cannot be
relied upon to show obviousness.” (App. Br. 11). Appellant point to no
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such showing and our review of the record finds none. Rather, the
application as filed is silent as to the criticality of having plural display
drivers. Particularly, we note that Appellant’s Abstract states:
The display device may include a plurality of pixels, one or
more display drivers, and a lenticular lens array comprising a
plurality of lenticular lenses.
(Abst.) (emphasis added). Further, we disagree with Appellant’s argument
that a first display driver and a second display driver are inherent to claim 9.
Rather, claim 9 is silent as to the display drivers. This silence reinforces the
lack of criticality of having “plural” display drivers. Criticality cannot be
shown by merely attorney argument or mere inclusion of the element in the
claim.
The specification does not state that a hub-generated MAC
address is the actual invention itself or that hub-generation is a
critical feature. See SunRace Roots Enter. Co. v. SRAM Corp.,
336 F.3d 1298, 1305 (Fed. Cir. 2003) (discussing cases limiting
claim language because feature “described as essential to the
invention” but declining to do so when the specification “does
not state that the cam is the actual invention itself”).
Azure Networks, LLC. v. CSR PLC., No. 2013-1459, slip op. at 24, 2014
WL 5741337 at 12 (Fed. Cir. Nov. 6, 2014).

CONCLUSION
(1) The Examiner has not erred in rejecting claims 1–7, 9–15, and
17–19 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1–7, 9–15, and 17–19 are not patentable.
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DECISION
The Examiner’s rejection of claims 1–7, 9–15, and 17–19 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)(1)(iv).

AFFIRMED

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