Ex Parte Yamazaki et al

Board of Patent Appeals and Interferences

Jun 16, 2009

09833674 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHUNPEI YAMAZAKI,
JUN KOYAMA, and YU YAMAZAKI
____________

Appeal 2009-000918
Application 09/833,674
Technology Center 2600
____________

Decided:1 June 16, 2009
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 6-9, 12, 35, 38, 43, 46, 51-53, 56-59, 62, 85, 88, 93, 96, and 109-
116. Claims 4, 5, 10, 11, 36, 37, 44, 45, 54, 55, 60, 61, 86, 87, 94, 95, and
101-108 have been canceled while claims 13-34, 39-42, 47-50, 63-84, 89-92,
and 97-100, which are all of the remaining claims pending in this
application, have been withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ invention relates to a system for identifying an individual
using a sensor-incorporated display for reading the biological information of
a user (Spec. 2:23-25). According to Appellants, the display includes a
sensor portion having a plurality of pixels, wherein each pixel includes the
circuitry for activating the pixel, an electroluminescent element, and a
photodiode for sensing the biological information (see generally id. at 11:4 –
13:23).
Independent claim 1 is illustrative of the invention:
1. A system for identifying an individual, comprising:
a display device having pixels, each of which includes a light
emitting element and a sensor for reading biological information of a
user;
a flash memory for storing reference biological information of
said user;
means for judging legitimacy of the user by checking read
biological information with the reference biological information; and
means for transmitting information about the judgment to a
destination of communication when the read biological information
has matched the reference biological information,
wherein
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the light emitting element comprises a cathode, a light emitting
layer, and an anode.

The Examiner relies on the following prior art references in rejecting
the claims:
Nishimura US 6,040,810 Mar. 21, 2000
Wang US 6,175,922 B1 Jan. 16, 2001
Harkin US 6,327,376 B1 Dec. 4, 2001
(filed Dec. 3, 1998)
Ritter US 6,657,538 B1 Dec. 2, 2003
(filed Sep. 28, 1999)

Claims 1-3, 6-9, 12, 35, 38, 43, 46, 51-53, 56-59, 62, 85, 88, 93, and
96 stand rejected as being unpatentable under 35 U.S.C. § 103(a) over Ritter
in view of Harkin and Wang.
Claims 109-116 stand rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Ritter, Harkin, and Wang in view of Nishimura.2
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer3 for the respective positions of Appellants and the
Examiner.
ISSUE
The Examiner’ position is that Ritter discloses the claimed display
device except for the display device having pixels, each of which including a
light emitting element and a sensor (Ans. 3-4). The Examiner finds that
Harkin discloses (col. 9, ll. 14-63) a fingerprint sensing device using
transparent sensing electrodes combined with a flat panel display device that

2 The Final Rejection of the claims is repeated in pages 3-11 of the
Examiner’s Answer.
3 We refer to the Appeal Brief filed Mar. 7, 2008, the Reply Brief filed Jun.
9, 2008, and the Answer mailed Apr. 8, 2008.
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may be an electroluminescent display (Ans. 4-5). The Examiner further
finds (Ans. 5-6) that Wang discloses the device for judging legitimacy of the
user and the storage of the identification data that are missing in Ritter. The
Examiner concludes that it would have been obvious to apply Harkin’s
electroluminescent display to the biological sensing device of Ritter in
combination with Wang “in order to dispose the sensing device over a
display while still allowing the output of the display to be viewed” (Ans. 4).
Appellants contend that while Harkin discloses, with respect to the
embodiment shown in Figure 5, a light source associated with the biometric
sensor, no display device or display elements associated with the biometric
sensor are disclosed (App. Br. 7). Appellants argue that Harkin’s mention of
an electroluminescent display suggests a possible display to be used instead
of the disclosed liquid crystal display, but does not enable one of ordinary
skill in the art to include a light emitting element and a sensor for reading a
user’s biological information without undue experimentation (Reply Br. 2).
The issue is whether Appellants have shown that the Examiner’s
combination of the reference teachings is improper and the Examiner erred
in rejecting the claims under 35 U.S.C. § 103. Specifically, the issue turns
on whether there is a legally sufficient justification for combining the
disclosures of Ritter, Harkin, and Wang and if so, whether the combination
of the applied references teaches the claimed subject matter.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
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1. Harkin discloses a fingerprint sensing device (10) having an
array of sensing elements (12) on a transparent substrate (35) for sensing
capacitively the ridge pattern of a fingerprint placed over the array.
(Abstract, Fig. 5.)
2. As shown in Figure 5, the fingerprint sensing element array 10
is carried in housing 50 with its sensing surface 37 onto which a user’s
finger is placed facing outward. (Harkin, col. 7, ll. 60-63).
3. Harkin further describes a biometric sensor 60 disposed within
the housing beneath the sensing array for sensing a different biometric
characteristic of the person’s finger by means of light directed through the
transparent array at the same time as the fingerprint is being sensed.
(Harkin, col. 7, l. 63-col. 8, l. 1).
4. Harkin describes the sensor as having a light source, such as an
LED, emitting red and infra-red light beams which are directed onto human
tissue and a detector which receives the light transmitted through or reflected
from the tissue. (Harkin, col. col. 8, ll. 3-6).
5. Harkin, as shown in Figure 6, provides for the fingerprint
sensing array 10 in combination with a flat panel display device 70, such as
a matrix liquid crystal (LC) display device which may comprise a pair of
plates 71, 72, usually of glass, spaced slightly apart and sealed together
around their periphery, with the LC material 73 filling the space. (Harkin,
col. 9, ll. 14-23.)
6. Although an LC display device is used in this example, Harkin
mentions that other types of display devices, comprising other kinds of
electro-optic materials, for example electroluminescent or electrochromic
display devices, could be used instead. (Harkin, col. 9, ll. 64-67.)
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PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
Such a showing requires:
‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’ . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Therefore, in analyzing a rejecting under 35 U.S.C. § 103, we must
“determine whether there was an apparent reason to combine the known
elements in the fashion claimed.” KSR, 550 U.S. at 418. The proper inquiry
is whether a person of ordinary skill in the art would have seen a benefit to
combining the prior art teachings. KSR, 550 U.S. at 424.
The evidence of record is insufficient to show obviousness if it merely
suggests “to explore a new technology or general approach that seemed to be
a promising field of experimentation, where the prior art gave only general
guidance as to the particular form of the claimed invention or how to achieve
it.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).
Further, a rejection based on § 103 must rest upon a factual basis
rather than conjecture or speculation. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). See also In re Kahn, 441 F.3d at 988.
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ANALYSIS
Rejection of claims over Ritter, Harkin, and Wang
The Examiner relies on Harkin’s suggestion to use an
electroluminescent display instead of an LC display to conclude that Harkin
provides the claimed light emitting element missing in the combination of
Ritter and Wang (Ans. 11-12).4 The Examiner further supports the
obviousness of the claimed subject matter based on an alleged showing of all
the claimed elements in the prior art and a conclusion that the combination
of the references would have been obvious to one of ordinary skill in the art
(Ans. 12-13). There are two problems with this reasoning: (1) the Examiner
has not pointed to any evidence of record that Harkin’s electroluminescent
display has pixels, each of which includes a light emitting element and a
sensor; and (2) the Examiner has not provided “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”
As argued by Appellants (App. Br. 7), the only light source disclosed
in Harkin is in the biometric sensor which is disposed under the sensing
array 10 (FF 1-4). The sensor 60 is different from the array of sensing
elements (FF 3, 4) while the sensing elements array is also separate and
distinct from the flat panel display device 70 (FF 5). Further, because the
only light source suggested by Harkin is in the sensor, separate from the
sensing array and the display device, even if the teachings of Ritter, Harkin,
and Wang were combined, we do not see how this combination would have

4 The Examiner additionally relies on Tang (US 5,550,066, Aug. 27, 1996)
to show that electroluminescent devices include an anode, a light emitting
layer, and a cathode (Ans. 12).
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led one having ordinary skill in the art to redesign Harkin’s sensor array and
display to include a light emitting element and a sensor in each of the pixels
in the display device.
With respect to the general suggestion in Harkin that a display device
may comprise an electroluminescent device, we find that the Examiner has
not pointed to any portion of the reference to provide any details as to how
the pixels of such a display device may each include a light emitting element
and a sensor. We further find that the nominal reference to an
electroluminescent display device in Harkin apparently is applicable only to
the display 70 in Figure 6, while the sensing array 10 and the biometric
sensor 60 are intended to remain unchanged (FF 6). In that regard, we find
such general suggestion “to explore” using an electroluminescent display
device to be insufficient to lead the ordinary skilled artisan to add a light
emitting element to each pixel and support a prima facie case of
obviousness.
While Tang is not before us in this appeal because it was not relied on
in the final rejection of the claims, we note that its teachings related to the
structure of an electroluminescent device add nothing to Harkin’s mere
suggestion for using such a display device. Therefore, we find that the
Examiner has not articulated sound reasons for asserting that using a light
emitting element and a sensor in each display pixel in Harkin would have
been obvious. Harkin provides no direction as to placing the light source
from sensor 60 and the sensing elements from sensor array 10 in each pixel
of display 70. O’Farrell, 853 F.2d at 903-04. We conclude that the
Examiner did not make a prima facie case for obviousness based on the
record before this panel.
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Thus, since the combination of the references does not teach or
suggest all the recited requirements of claim 1, as well as the other
independent claims that include similar limitations, and the Examiner’s
conclusion that it would have been obvious to the skilled artisan to combine
the references is not supported by the teachings or suggestions of Ritter,
Harkin, or Wang, the 35 U.S.C. § 103(a) of claims 1-3, 6-9, 12, 35, 38, 43,
46, 51-53, 56-59, 62, 85, 88, 93, and 96 over Ritter in view of Harkin and
Wang cannot be sustained.
Rejection of claims over Ritter, Harkin, Wang, and Nishimura
With respect to the rejection of claims 109-116, we observe that the
Examiner cited Nishimura only to meet the limitations of these dependent
claims and pointed to nothing in the reference that would provide a reason to
combine the teachings of Ritter, Harkin, and Wang. For the reasons
discussed above, we conclude that a prima facie case for obviousness of
these claims has not been made, and thus, we cannot sustain the 35 U.S.C.
§ 103 rejection of claims 109-116 over Ritter, Harkin, Wang, and
Nishimura.

CONCLUSION
On the record before us, we find that the Examiner failed to make a
prima facie case that the combination of Ritter, Harkin, and Wang would
have taught or suggested using a light emitting element and a sensor in each
of the display pixels. Therefore, Appellants have shown that the Examiner’s
combination of the reference teachings is improper and that the Examiner
erred in rejecting the claims under 35 U.S.C. § 103.

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DECISION
The decision of the Examiner rejecting claims 1-3, 6-9, 12, 35, 38, 43,
46, 51-53, 56-59, 62, 85, 88, 93, 96, and 109-116 is reversed.

REVERSED

KIS

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