Junichi Yamashita et al.

Patent Trials and Appeals Board

Jan 25, 2021

2019005570 (P.T.A.B. Jan. 25, 2021)

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.
12/588,758 10/27/2009 Junichi Yamashita 880210-4335-US00 9853
134795 7590 01/25/2021
MICHAEL BEST & FRIEDRICH LLP (DC)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
PIZIALI, JEFFREY J
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
DCipdocket@michaelbest.com
nbenjamin@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNICHI YAMASHITA and KATSUHIDE UCHINO
Appeal 2019-005570
Application 12/588,758
Technology Center 2600
Before CAROLYN D. THOMAS, ERIC B. CHEN, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as JOLED Inc.
Appeal Br. 2.
Appeal 2019-005570
Application 12/588,758

2
STATEMENT OF THE CASE
Introduction
The Application is directed to “a display device that makes it possible
to perform burning correction at high speed.” Spec. 1. Claims 40–47 are
pending. Appeal Br. 18–20.2 Claim 40, the sole independent claim, is
reproduced below for reference (emphases added):
40. A display device comprising:
a display panel including a plurality of pixels configured
to emit light based on a magnitude of a video signal, the plurality
of pixels are sectioned into a plurality of areas of the display
panel;
a plurality of light reception sensors, at least one light
reception sensor of the plurality of light reception sensors is
arranged in one area of the plurality of areas, each light reception
sensor of the plurality of light reception sensors is configured to
receive incident light and output a light reception signal based
on a total luminance value of the incident light that is received;
and
signal processing means configured to process one or
more light reception signals from the plurality of light reception
sensors,
wherein a first area of the plurality of areas of the display
panel includes
a first light reception sensor of the plurality of light
reception sensors,
a first pixel group of the plurality of pixels including
at least one pixel, and
a second pixel group of the plurality of pixels
including pixels other than the first pixel group, and
wherein the signal processing means is configured to
obtain the light reception signal from the first light
reception sensor,
when the first pixel group and the second pixel
group are caused to emit the light at a light emission luminance

2 Claims 1–39 are canceled. Appeal Br. 18.
Appeal 2019-005570
Application 12/588,758

3
corresponding to a signal voltage of the video signal, set the light
reception signal that is obtained from the first light reception
sensor as an offset value, and
when the second pixel group is caused to emit the light at
the light emission luminance corresponding to the signal voltage
of the video signal and the first pixel group is caused to emit the
light at a second light emission luminance different from the light
emission luminance corresponding to the signal voltage of the
video signal, set the light reception signal that is obtained from
the first light reception sensor as a light reception value, and
wherein the signal processing means further includes
an arithmetic means configured to
perform an arithmetic function of the offset
value and the light reception value, and
output an arithmetic signal based on the
arithmetic function of the offset value and the light reception
value,
a converting means configured to output digital data
based on the arithmetic signal, and
a modifying means configured to
determine correction data based on the
digital data,
modify the video signal using the correction
data, and
supply the video signal that is modified to the
first pixel group.
The Examiner’s Rejection
Claims 40–47 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Final Act. 2.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We are persuaded the Examiner’s indefiniteness rejection is in
error. “[A] claim is indefinite when the boundaries of the protected subject
Appeal 2019-005570
Application 12/588,758

4
matter are not clearly delineated and the scope is unclear.” MPEP
§ 2173.02. The Patent Office requires “the claims set out and circumscribe a
particular subject matter with a reasonable degree of clarity and
particularity,” but these “requirements for clarity and precision must be
balanced with the limitations of the language and the science.” MPEP
§§ 2173.02, 2173.05(a); see also In re Packard, 751 F.3d 1307, 1313 (Fed.
Cir. 2014) (The indefiniteness “requirement is not a demand for
unreasonable precision.”). In the instant case, we agree with Appellant that
the Examiner has required an unreasonable degree of particularity with
respect to the rejected claim terms. See Appeal Br. 7.

A. Independent Claim 40
The Examiner finds claim 40 recites a number of indefinite terms.
We address each of the separate terms, below.

Plurality of Pixels
The Examiner finds the recitations of “plurality of pixels” are
indefinite, because the terms lack sufficient antecedent basis. See Ans. 12,
13 (emphasis omitted). The Examiner explains that, “[a]lthough it is
certainly plausible that each limitation of ‘the plurality of pixels’ (in lines 3,
12, and 13) could be referring to the recited, ‘a plurality of pixels’ (in line
2),” that “it is also plausible that each limitation of ‘the plurality of pixels’
(in lines 3, 12, and 13) could instead be referring to the recited, ‘pixels other
than the first pixel group’ (line 13),” particularly if “the earlier recitation of
‘a plurality of pixels’ (in line 2) wasn’t present.” Id. at 12–13 (emphasis
omitted).
Appeal 2019-005570
Application 12/588,758

5
Appellant argues the Examiner errs, because, “contrary to the
Examiner’s assertions, the earlier presence of ‘a plurality of pixels’ in claim
40 does eliminate the plausibility of each limitation of ‘the plurality of
pixels’ referring to ‘pixels other than the first pixel group.’” Reply Br. 4.
We agree with Appellant. The Examiner has not explained why the
term “the plurality of pixels” would receive antecedent basis support from a
later recited claim term (the “other than the first pixel group” limitation).
Moreover, we find that one of ordinary skill in the art would understand the
terms to be sufficiently clear and precise. The “other than the first pixel
group” limitation refers to a sub-group of “the plurality of pixels,” as the
claim recites the “other than” grouping to be “of the plurality of pixels.”
Accordingly, the “other than the first pixel group” does not provide
antecedent basis for “the plurality of pixels.” See Appeal Br. 8 (“Indeed, the
only logical antecedent basis for ‘the plurality of pixels’ is ‘a plurality of
pixels’ on line 2.”). Based on the record before us, we agree with Appellant
that the scope of the pixels terms would be reasonably ascertainable by those
skilled in the art. See Reply Br. 3, 4. We do not sustain this rejection.

Light Reception Sensor
The Examiner finds claim 40 is indefinite “due to the claimed subject
matter: ‘at least one light reception sensor’ (line 4) and ‘a first light
reception sensor’ (line 11),” because “[i]t would be unclear to one having
ordinary skill in the art whether [these] limitations are intended to be
identical to, common to, or distinct from one another.” Ans. 13 (emphasis
omitted).
Appeal 2019-005570
Application 12/588,758

6
Appellant argues “[t]he fact that ‘at least one light reception sensor’
and ‘a first light reception sensor’ may be interpreted to be the same sensor
or different sensors is not an indication of indefiniteness, but merely,
breadth.” Reply Br. 4; see Appeal Br. 9.
We find the Examiner errs. The Examiner has not explained what
ambiguity occurs from reading the limitations as “identical to, common to,
or distinct from one another.” Ans. 13. The “at least one light reception
sensor (line 4)” is part of the limitation explaining the general function of the
sensors in the claimed display; whereas the later recitation of “a first light
reception sensor (line 11)” is describing a specific sensor relating to the
claimed signal processing means. Ans. 14 (emphasis omitted); see Appeal
Br. 18. Whether these sensors are the same or different does not appear to
change the functionality or structure of the claimed device containing “a
plurality of light reception sensors.” Id.; cf. Ex Parte Miyazaki, 89 USPQ2d
1207 (BPAI 2008) (precedential) (Finding the claim indefinite for reciting
“[a]n infinite number of combinations of printer and user positions [that]
could be envisioned such that the . . . language of claim 1 does not, in fact,
impose a structural limitation on the height of the paper feeding unit of the
claimed printer.”).
Thus, we agree with Appellant that the Examiner has not shown that
the claim scope lacks a reasonable degree of clarity, as opposed to merely
being broad. See Appeal Br. 9; MPEP § 2173.04 (“A broad claim is not
indefinite merely because it encompasses a wide scope of subject matter
provided the scope is clearly defined.”). We do not sustain this rejection.

Appeal 2019-005570
Application 12/588,758

7
Area
The Examiner finds claim 40 is indefinite “due to the claimed subject
matter: ‘one area’ (line 5) and ‘a first area’ (line 10),” because “[i]t would be
unclear to one having ordinary skill in the art whether [these] limitations are
intended to be identical to, common to, or distinct from one another.” Ans.
14 (emphasis omitted).
Appellant argues “[t]he fact that ‘one area’ and ‘a first area’ may be
interpreted to be the same area or different areas is not an indication of
indefiniteness, but merely, breadth.” Reply Br. 4.
We find the Examiner errs, for the same reasons discussed above with
respect to the light reception sensor. We agree with Appellant that the
Examiner has not shown that the claim scope is not clearly defined, as
opposed to broad. See Appeal Br. 9. We do not sustain this rejection.

Light Reception Signal
The Examiner finds claim 40 is indefinite “due to the claimed subject
matter: ‘a light reception signal’ (line 6) and ‘one or more light reception
signals’ (line 8),” because “[i]t would be unclear to one having ordinary skill
in the art whether [these] limitations are intended to be identical to, common
to, or distinct from one another.” Ans. 14–15 (emphasis omitted). The
Examiner further finds a lack of antecedent basis for the “light reception
signal” recited in lines 16, 18, and 23, because the “presence of ‘a light
reception signal’ (line 6) doesn’t eliminate the plausibility of each limitation
of ‘the light reception signal’ (in lines 16, 18, and 23) instead referring to the
recited, ‘one or more light reception signals’ (line 8).” Ans. 17 (emphasis
omitted).
Appeal 2019-005570
Application 12/588,758

8
Appellant argues “[t]he fact that ‘a light reception signal’ and ‘one or
more light reception signals’ may be interpreted to be the same signal or
different signals is not an indication of indefiniteness, but merely, breadth.”
Reply Br. 5; see also Appeal Br. 9. Appellant further contends “that ‘the
light reception signal’ clearly and unmistakably derives strict antecedent
basis from ‘a light reception signal.’” Appeal Br. 10.
We find the Examiner errs, for the same reasons discussed above with
respect to the light reception sensor and the plurality of pixels limitations.
We agree with Appellant that the Examiner has not shown that the claim
scope is not clearly defined, as opposed to broad. See Reply Br. 5. We also
agree with Appellant that each recitation of “the light reception signal”
obtains antecedent basis support from the preceding “a light reception
signal.”3 See Reply Br. 6. We do not sustain this rejection.

Incident Light
The Examiner finds there is insufficient antecedent basis for claim
40’s recitation of “the incident light (line 7),” because “[t]he claim earlier
recites, ‘each light reception sensor . . . is configured to receive incident
light’ (line 5),” and “[i]t would be unclear to one having ordinary skill in the
art which incident light (which one of the incident lights), the claim term
‘the incident light’ is intended to refer to.” Ans. 15, 16 (emphasis omitted).
Appellant argues the Examiner’s rejection is in error, because “one of
ordinary skill in the art would understand ‘incident light’ and ‘the incident

3 Of course, given the broadest reasonable construction of the claim
discussed herein, the recited “a light reception signal” may be the same
signal as the recited “one or more light reception signals.” See Appeal Br. 9.
Appeal 2019-005570
Application 12/588,758

9
light’ individually refers to each respective light reception sensor of the
plurality of light reception sensors that are separate and distinct from each
other.” Reply Br. 5–6 (emphasis omitted). Appellant contends “the terms
‘incident light’ and ‘the incident light’ are not with respect to ‘the plurality
of light reception sensors’ as interpreted by the Examiner,” but “[i]nstead,
‘incident light’ and ‘the incident light’ are claimed with respect to ‘each
light reception sensor of the plurality of light reception sensors.’” Reply Br.
5 (emphasis omitted); see Appeal Br. 10.
We are persuaded the Examiner errs. First, we find the Examiner’s
references to “a plurality of incident light” and “which incident light” (Final
Act. 4; Ans. 16 (emphasis omitted)) to be contrary to the ordinary usage of
the term: as correctly noted by Appellant, in the context of claim 40, the
incident “‘light’ is an uncountable noun (i.e., a mass noun)” (Appeal Br. 10).
Second, the Examiner’s antecedent basis rejection for “incident light” is
predicated on finding a lack of clarity with respect to the “sensor” receiving
the incident light. Ans. 16. Because we find the scope of the claimed “light
reception sensor” would be clearly understood by one of ordinary skill (as
discussed above), we do not find there to be indefiniteness with respect to
the claimed “incident light.” Accordingly, we do not sustain the Examiner’s
indefiniteness rejection with respect to claim 40’s recitations of “incident
light.”

Light
The Examiner finds there is insufficient antecedent basis support for
the claimed “the light,” because “[a]lthough it is certainly plausible that each
limitation of ‘the light’ (in lines 17, 20, 22) could be referring to the recited,
Appeal 2019-005570
Application 12/588,758

10
‘light’ (line [2]); it is also plausible that each limitation of ‘the light’ (in lines
17, 20, 22) could instead be referring to the recited, ‘incident light’ (line 6).”
Ans. 19 (emphasis omitted). The Examiner finds that, “[s]uppose the
recitation of ‘light’ (line [2]) wasn’t present, it would be reasonably
ascertainable by those skilled in the art, that each limitation of ‘the light’ (in
lines 17, 20, 22) must be referring to the recited, ‘incident light’ (line 6).”
Id. (emphasis omitted).
Appellant argues the Examiner errs, “because the Examiner is
intentionally reading out ‘light’ from claim 40,” and “[h]ere, ‘the light’
clearly and unmistakably has explicit antecedent basis from ‘light’ in claim
40.” Reply Br. 7.
We find the Examiner errs, for the same reasons discussed above with
respect to the plurality of pixels limitations. The Examiner finds the claim
indefinite based on “[s]uppos[ing] the recitation of ‘light’ (line [2]) wasn’t
present,” but the Examiner does not explain why one of ordinary skill would
treat the limitation as not present. Ans. 19 (emphasis omitted). Thus,
Appellant persuades us the Examiner has not established the recitations of
“light” in claim 40 lack reasonable clarity to one of ordinary skill. See
Appeal Br. 11. We do not sustain this rejection.

Video Signal
The Examiner finds there is insufficient antecedent basis for claim
40’s recitations of “the video signal,” because “[a]lthough it is certainly
plausible that each limitation of ‘the video signal’ (in lines 18, 21, 23, and
3[5]) could be referring to the recited, ‘a video signal’ (line 3),” “it is also
plausible that each limitation of ‘the video signal’ . . . could instead be
Appeal 2019-005570
Application 12/588,758

11
referring to the recited, ‘the video signal that is modified’ (line 36).” Ans.
21 (emphasis omitted).
Appellant argues the Examiner’s rejection is in error, because “one of
ordinary skill in the art would understand that ‘the video signal’ clearly and
unmistakably derives strict antecedent basis from ‘a video signal,’” rather
than from the later claimed “the video signal that is modified.” Appeal Br.
11. Appellant further contends “the Examiner is intentionally reading out ‘a
video signal’ from claim 40.” Reply Br. 8.
We find the Examiner errs, for the same reasons discussed above with
respect to the plurality of pixels limitations. The Examiner has not
explained why the term “the video signal” would receive antecedent basis
support from a later recited claim term (the “video signal that is modified”
limitation). Rather, we agree with Appellant that the recited instances of
“the video signal” obtain antecedent basis support from the earlier recited “a
video signal.” See Reply Br. 8. We do not sustain this rejection.

Correction Data
The Examiner finds claim 40 indefinite, because “[c]laim 40 provides
for the use of ‘the correction data’ (line 36), but, since the claim does not set
forth any steps involved in the method/process, it is unclear what
method/process applicant is intending to encompass.” Ans. 22 (emphasis
omitted). The Examiner explains, “claim 40 recites a use (‘using the
correction data’) without any active, positive steps delimiting how this use is
actually practiced.” Id. (emphasis omitted).
Appellant argues the Examiner errs, because “the Examiner did not
perform the essential inquiry pertaining to 112, second paragraph, as to
Appeal 2019-005570
Application 12/588,758

12
whether the claim sets out and circumscribes a particular subject matter with
a reasonable degree of clarity and particularity.” Appeal Br. 12. Further,
Appellant contends “the meaning of ‘correction data’ is clear as opposed to
ambiguous, vague, or indefinite terms.” Reply Br. 10.
We find the Examiner’s indefiniteness rejection is in error. “A
decision on whether a claim is indefinite . . . requires a determination of
whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification,” but “[i]f a description or the
enabling disclosure of a specification is not commensurate in scope with the
subject matter encompassed by a claim, that fact alone does not render the
claim imprecise or indefinite.” MPEP §§ 2173.02, 2174. In finding the
“correction data” is indefinite, the Examiner has not determined whether
those skilled in the art would understand what is claimed. See Final Act. 7.
Rather than performing an indefiniteness analysis, the Examiner appears to
have examined the “correction data” term pursuant to the written description
and enablement requirements of 35 U.S.C. § 112.4 Compare, e.g., MPEP
§ 2161 (“claims may lack written description when the claims define the
invention in functional language specifying a desired result but the
specification does not sufficiently describe how the function is performed or
the result is achieved”) with Ans. 22 (“How is the ‘correction data’ used to
modify the video signal? The claim doesn’t provide any guidance.”

4 The claims are not rejected under 35 U.S.C. § 112, first paragraph;
therefore, we do not reach the issue of whether the claims are compliant with
the written description and enablement requirements. See MPEP § 1213.02
(“The Board’s primary role is to review the adverse decision as presented by
the Examiner, and not to conduct its own separate examination of the
claims.”).
Appeal 2019-005570
Application 12/588,758

13
(emphasis omitted)). Thus, we agree with Appellant that the Examiner has
not established a lack of reasonable clarity with the “correction data,” as
claimed. See Reply Br. 9, 10. We do not sustain this rejection.

B. Dependent Claim 41
The Examiner finds dependent claim 41 indefinite, because “the
limitation ‘the video signal’ (line 2)” lacks sufficient antecedent basis.
Ans. 23 (emphasis omitted). We find this rejection is in error, for the same
reasons discussed above with respect to the “video signal” recitations in
parent claim 40.
The Examiner further finds “[c]laim 41 is indefinite where it specifies
‘a predetermined gradation’ (line 2), since “[i]t would be unclear to one
having ordinary skill in the art at the time of invention what claimed
element(s), if any, is/are intended to perform the determining,” and “[i]t
would be similarly unclear to one having ordinary skill in the art at the time
of invention what claimed event(s)/step(s), if any, is/are intended to occur
only after the predetermining.” Ans. 25 (emphasis omitted).
Appellant argues “‘predetermined’ is being used as an adjective to
describe a noun, i.e., a gradation that is determined beforehand.” Appeal
Br. 13. Appellant asserts the predetermined gradation “must already exist
prior to the ‘light emission luminance’ recited in claim 41.” Reply Br. 11.
We are persuaded the Examiner errs, for reasons similar to those
discussed above with respect to the claimed “correction data.” Particularly,
there appears to be no dispute on the record that “predetermined” means
“determined beforehand.” Ans. 25; Appeal Br. 13. Thus, we agree with
Appellant that claim 41’s recitation of “the light emission luminance
Appeal 2019-005570
Application 12/588,758

14
corresponding to the signal voltage of the video signal is at a predetermined
gradation” must require the recited “predetermined gradation” to be
determined prior to the occurrence of the “light emission.” Reply Br. 11.
As such, we are persuaded the Examiner has not established the limitations
of claim 41 to be indefinite. We do not sustain this rejection.

C. Dependent Claim 44
The Examiner finds dependent claim 44 is indefinite for reciting “the
video signal” and “the light reception signal.” Ans. 26–28 (emphasis
omitted). We find the Examiner errs, for the same reasons discussed above
with respect to these terms in parent claim 40. Accordingly, we do not
sustain this rejection.

D. Dependent Claim 45
The Examiner finds dependent claim 45 is indefinite for reciting “the
plurality of pixels” and “the light.” Ans. 28–30 (emphasis omitted). We
find the Examiner errs, for the same reasons discussed above with respect to
these terms in parent claim 40. Accordingly, we do not sustain this
rejection.

CONCLUSION
We do not sustain the Examiner’s indefiniteness rejections of claims
40, 41, 44, and 45. The Examiner rejects the remaining claims for being
dependent on a rejected claim; thus, we do not sustain the rejections of the
remaining claims for the same reasons. See Final Act. 10.

Appeal 2019-005570
Application 12/588,758

15
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
40–47 112, second
paragraph
Indefiniteness 40–47

REVERSED