Ex Parte Osame et al

Patent Trial and Appeal Board

Aug 11, 2016

11968902 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111968,902 01/03/2008
26171 7590 08/15/2016
FISH & RICHARDSON P,C (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Mitsuaki Osame
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.
12732-0161002 9755
EXAMINER
MATTHEWS, ANDRE L
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUAKI OSAME, A YA ANZAI, and RYOTA FUKUMOTO
Appeal2014-009081
Application 11/968,902
Technology Center 2600
Before JOHNNY A. KUMAR, MELISSA A. RAAP ALA, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-15 and 21-23. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse and enter a new ground of rejection in accordance with 37
C.F.R. § 41.50(b).
1 Claims 16-20 have been canceled.
Appeal2014-009081
Application 11/968,902
INVENTION
Appellants' invention is directed to "a light emitting device that is
able to suppress power consumption while a balance of white light is kept,
without making a configuration of a power source circuit complicated."
Abstract. Claim 1 is representative of the subject matter on appeal:
1. An active matrix light emitting device comprising:
a source line driving circuit;
a level shifter comprised in the source line driving
circuit;
a wiring configured to supply the source line driving
circuit and the level shifter with a power source potential;
a pixel portion comprising:
a light emitting element; and
a transistor electrically connected to the light emitting
element;
a source line electrically connecting the level shifter to
the pixel portion; and
a power source line electrically connecting the source
line driving circuit to the pixel portion,
wherein the level shifter is configured to set one of a
higher electric potential and a lower electric potential of a video
signal input into the source line driving circuit to the power
source potential, and
wherein the power source line is configured to be set at
the power source potential.
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Appeal2014-009081
Application 11/968,902
REJECTIONS ON APPEAL
Claims 1--4 and 21 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Yamazaki (US 2002/0018060 Al; Feb. 14,
2002) and Yamada (US 5,990,629; Nov. 23, 1999) ("Yamada '629").
Claims 5-15 and 22-23 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Yamazaki, Yamada '629, and
Yamada (US 7,091,936 Bl; Aug. 15, 2006) ("Yamada '936").
ISSUE
Appellants' contentions present us with the following issue: Did the
Examiner err in finding the combination of Yamazaki and Yamada '629
teaches or suggest wherein the power source line is configured to be set at
the power source potential, as recited in independent claim 1?
ANALYSIS
We have reviewed Appeiiants' contentions in the Briefs, the
Examiner's rejection, the Examiner's response to Appellants' contentions,
and the evidence of record. We agree with Appellants that the Examiner has
not established the combination of Yamazaki and Yamada '629 teaches or
suggests wherein the power source line is configured to be set at the power
source potential.
Claim 1 recites "a wiring configured to supply ... the level shifter
with a power source potential." The power shift potential recited in the
disputed wherein clause receives its antecedent basis from the power source
potential supplied to the level shifter via the wiring. Thus, the claim requires
the power source line to be set at the same power source potential as that
supplied to the level shifter.
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Appeal2014-009081
Application 11/968,902
The Examiner relies on Yamazaki to teach the disputed limitation.
See Final Act. 2-3; Ans. 11-13. Specifically, the Examiner relies on Figure
3 of Yamazaki to teach a wiring that supplies the level shifter (element 405)
with a power source potential (power source for R/G/B). See Final Act. 2.
The Examiner relies on Figures 1, 14, and paragraphs 60-61 to teach the
power source line (power source feed line 104/904) is configured to be set at
the power source potential. See Ans. 12, Final Act. 3. The Examiner finds:
[ s ]ince Yamazaki teaches that the power source feed lines
receive RGB potential from the external power source and the
RGB potential of the level shifter is changed by changing the
power source potential supplied to the level shifter, it is clear
that the same RGB power potential is supplied from the same
external power source thereby supplying the same power
potential to the power feed lines and the level shifter.
Ans. 12.
We do not find that the portions of the references relied upon by the
Examiner teach or suggest the disputed limitation. Appellants argue
Yamazaki does not describe or suggest any link between the potentials of the
power sources feeding the level shifter circuit 405 of Fig. 3 and the
potentials supplied to the power source feed lines 104 of Fig. 1 (A). Reply
Br. 5; see also App. Br. 4--8. We agree. Yamazaki describes power source
feed lines 104 are connected to an external power source and the potential of
the power source feed lines 104 are given to the selected pixels. Yamazaki
i-fi-1 60-61; see also Fig. 1. Although Yamazaki describes the output voltage
of the level shifter circuit 405 can be varied, we can find no description in
the cited sections that the same potential supplied to the level shifter circuit
405 is the potential at which the power source feed line 104 is set. See Figs
1, 3, i-fi-160, 61, 82. Indeed, as pointed out by Appellants (Reply Br 4),
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Appeal2014-009081
Application 11/968,902
Figure 1 does not show any connection between the power source feed line
104 and the source signal line drive circuit 102. See Fig. 1; see also Fig. 14.
For the reasons stated above, Appellants persuade us the Examiner
has not established the combination of Yamazaki and Yamada '629 teaches
or suggests the power source line is configured to be set at the power source
potential, as recited in independent claim 1. The Examiner does not rely on
the additional reference of record (Yamada '936) to teach this limitation.
Accordingly, without further explanation, we do not sustain the 35 U.S.C. §
103(a) rejections of: (i) claim 1; (ii) independent claims 5 and 9, which
recite limitations substantially similar to the disputed limitation of claim 1;
and (iii) the remaining claims, which depend from one of claims 1, 5, and 9.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
independent c iaims 1 and 9, and their dependent c iaims 2--4, 10-12, 14, 21,
and 23, under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Section 112, first paragraph, requires the
Specification to reasonably convey 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).
Claims 1 and 9 were amended after the application was filed to recite
"the level shifter is configured to set one of a higher electric potential and a
lower electric potential of a video signal input into the source line driving
circuit to the power source potential." Appellants cite to page 7, lines 1-3 of
the Specification as providing support for this limitation. App. Br. 2, 4.
However, the Specification describes the electric potential of a video signal
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Appeal2014-009081
Application 11/968,902
is given to the source line (Sr, Sg, Sb), not input into the source line driving
circuit 220 (of which the level shifter 220d is a component). See Spec Fig.
1, 6:6-9, 6:26-7:3. We, therefore, determine independent claims 1 and 9,
and their dependent claims, contain subject matter which was not described
in the Specification in such a way as to reasonably convey to one skilled in
the art that the inventors, at the time the application was filed, had
possession of the claimed invention.
We further note that the Patent Trial and Appeal Board is a review
body, rather than a place of initial examination. We have made a new
rejection regarding independent claims 1 and 9 over 35 U.S.C. § 112, first
paragraph under the provisions of 37 C.F .R. § 41.50(b ). We leave it to the
Examiner to determine the appropriateness of any further rejections based on
the currently cited references or other references. Our decision not to enter a
new ground of prior art rejection for the claims should not be considered as
an indication regarding the appropriateness of further rejection or aiiowance
of the claims.
DECISION
We reverse the Examiner's decision to reject claims 1-15 and 21-23.
We enter a new ground of rejection of claims 1--4, 9-12, 14, 21, and
23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
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Appeal2014-009081
Application 11/968,902
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds 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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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(±).
REVERSED
37 C.F.R. § 41.50(b)
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