SMITH, Nathan James.

Patent Trials and Appeals Board

Feb 3, 2020

14524467 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/524,467 10/27/2014 Nathan James SMITH HARAP0390US 9183
72119 7590 02/03/2020
MARK D. SARALINO ( SHARP )
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
ENGLISH, ALECIA DIANE
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHAN JAMES SMITH
____________

Appeal 2019-001466
Application 14/524,467
Technology Center 2600
____________

BEFORE JOHNNY A. KUMAR, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3–12, and 15–23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2017). Appellant identifies the real party in interest as Sharp Kabushiki
Kaisha. Appeal Br. 2.

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Application 14/524,467

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Invention
The disclosed and claimed invention on appeal is directed to “a display
system that has two displays and that has multiple display modes including a very
low power consumption reflective display mode.” Spec. p. 1, ll. 4–6.

Illustrative Claims
1. A display system, comprising:
a first pixelated image display;
a second pixelated image display;
a specular reflective polarizer disposed between the first image
display and the second image display, with the second image display
disposed on the viewing side of the display system; and
an optical diffuser layer disposed between the first image
display and reflective polarizer on a light emitting side of the first
image display, wherein the optical diffuser maintains a polarisation
state of light that passes through said optical diffuser.

19. A display system comprising:
a first pixelated image display;
a second pixelated image display;
a specular reflective polarizer disposed between the first image
display disposed on a viewing side of the second image display, with
the second image display disposed on a viewing side of the display
system;
an optical diffuser layer disposed between the first image
display and reflective polarizer on a light emitting side of the first
image display, wherein the optical diffuser maintains a polarisation
state of light that passes through said optical diffuser; and
a controller;
wherein the controller, the first image display and second image
display are configured to selectively operate to pass
light through the specular reflective polarizer and the optical
diffuser in accordance with multiple display functions in which the
first image display and the second image display have different
viewing properties to a viewer;
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and wherein:
the second image display has a liquid crystal layer, a first
substrate disposed on a non-viewing side relative to the liquid crystal
layer, and a second substrate disposed on the viewing side relative to
the liquid crystal layer;
the second image display is a Zenithal Bistable Liquid Crystal
Display (ZBD) that is switchable by the controller between a twisted
nematic (TN) configuration of liquid crystal molecules and a hybrid
aligned nematic (HAN) configuration of liquid crystal molecules;
the first image display emits light linearly polarized in a first
direction, and a transmission axis of the reflective polarizer is
arranged in the first direction;
when the ZBD is switched into the TN configuration, the
alignment direction perpendicular to the first direction;
when the ZBD is switched into the TN configuration, the
alignment direction of the liquid crystal molecules of the second
substrate is in the first direction; and a polarizer that has a
transmission axis in the second direction is disposed on the viewing
side of the second image display.

Appeal Br. 1, 3–4 (Claims App.).

Rejections
1. Claims 19–23 are rejected under 35 U.S.C. § 112(b) as being indefinite or
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor regards as the invention.2
2. Claims 1, 3, 5, and 8–11 are rejected under 35 U.S.C. § 103 as being

2 There appears to be some ambiguity with respect to whether this rejection is
before us on appeal. We note the Examiner’s Answer does not contain a
“WITHDRAWN REJECTIONS” section. The Examiner filed a proposed
Amendment on April 3, 2018 to correct the language of claim 19 that was entered
by the Examiner as indicated by the claim language addressed on page 11 of the
Final Office Action. But the Advisory Action of May 14, 2018 indicates that
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unpatentable over Erinjippurath in view of Akiyama.
3. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over
Erinjippurath and Akiyama in view of Kitagawa.
4. Claims 6, 7, 19, 20, 22, and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Erinjippurath in view of Akiyama and further in view of
Jones.
5. Claims 12, 15, and 18 are rejected under 35 U.S.C. § 103 as unpatentable
over Erinjippurath and Akiyama in view of Yang.
6. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as unpatentable over
Erinjippurath, Akiyama, and Yang and in view of Mather.
7. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over
Erinjippurath, Akiyama, Jones, and in view of Yang.
8. Claims 1–203 are provisionally rejected on the ground of nonstatutory
double patenting (OTDP) as being unpatentable over claims 1–17 of
copending Application No. 14/524,446.4

Appellant’s amendment will not be entered although the continuation sheet to the
Advisory Action indicates that the grammatical issue in the claims has been
corrected. For purposes of this Appeal, we consider the rejection of claims 19–23
under 35 U.S.C. § 112(b) to have been overcome and do not address this rejection
further in our analysis.
3 Although the Examiner identifies claims 1-20, Appellant has canceled claims 2,
13, and 14.
4 We note Appellant filed a Terminal Disclaimer on November 15, 2016. The
Terminal Disclaimer was entered into the record on November 15, 2016.
Accordingly, this rejection is moot. Therefore, this rejection of these claims is not
discussed further herein.
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References
Name Reference Date
Jones US 2004/0165135 A1 Aug. 26, 2004
Yang US 2006/0023146 A1 Feb. 2, 2006
Kitagawa US 2007/0242028 A1 Oct. 18, 2007
Akiyama US 2008/0273145 A1 Nov. 6, 2008
Mather US 7,813,042 B2 Oct. 12, 2010
Erinjippurath US 2014/0049734 A1 Feb. 20, 2014

ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We have reviewed Appellant’s arguments in the Briefs, the Examiner’s
obviousness rejections, and the Examiner’s responses to Appellant’s arguments.
Appellant proffers sufficient argument and evidence to persuade us of error
regarding the Examiner’s underlying factual findings and ultimate legal conclusion
of obviousness. In our analysis below, we highlight and address specific findings
and arguments for emphasis.

Issue: Under 35 U.S.C. § 103, does the Examiner’s proposed combination
of modifying the structure of Erinjippurath with the teachings of Akiyama results
in an inoperable combination?
The Examiner finds:
it would have been obvious to one having ordinary skill in the art at the time
of the invention to allow the usage of a reflective polarizer similar to that
which is taught by Akiyama to be included in a system similar to that which
is taught by Erinjippurath to allow for a reflective viewing mode while
reducing power consumption (see Akiyama; paragraph 11).
Final Act. 5.

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Regarding the Examiner’s proffered rationale to modify Erinjippurath, with
the teachings of Akiyama, Appellant contends:
With reference to independent claims 1 and 19, the Examiner states that the
reflective polarizer 30 of the claimed invention corresponds to polarizer 720
described in Erinjippurath. The structure and function of a reflective
polarizer versus a conventional absorbing polarizer are very different. The
polarizer 720 in Erinjippurath is not reflective, and thus Erinjippurath does
not teach the claimed elements. Although a reflective polarizer 710 is
described by Erinjippurath, the position of the reflective polarizer 710 is
never between the laminated achromatic LCD stack and the laminated color
LCD stack, and thus the configuration of Erinjippurath differs from the
claimed configuration. As claimed, the reflective polarizer is positioned
between the first (lowermost) pixelated image display 10 and the second
(uppermost) pixelated image display 20, and more particularly between the
second pixelated image display and the polarization preserving diffuser. In
this regard, secondary reference Akiyama discloses a reflective polarizer
positioned between the first LC panel 10 and second LC panel 20. However,
there is no basis to incorporate a reflective polarizer into Erinjippurath. As
Erinjippurath has no reflective mode, adding a reflective element internally
into Erinjippurath would undermine Erinjippurath’s operation for its
intended purpose of using transmission properties such that the achromatic
LCD stack is used to enhance the contrast ratio of the color LCD stack.

Appeal Br. 7.

Appellant further argues:
Referring to modified Erinjippurath, with addition of the
reflective polariser 710 between the two image panels, Erinjippurath
would be unsuitable for use as a reflective display because virtually
no ambient light (light from the viewing side) will be reflected by the
reflective polariser 710 to be viewed by a viewer. Ambient light from
the viewing side must pass through the color LCD panel before
reflecting back from the reflective polariser 710.
. . . .
With reference to the diagram above [shown on page 5 of the
Reply Brief] for modified Erinjippurath, “white” light paths are shown
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by solid lines, with filtered light paths being shown by the dashed
lines. The color filters of the color LCD panel described by
Erinjippurath will transmit approximately 1/3 of light incident on the
color filters. Light path 1 (LP1) shows the possible paths for light
incident on a color filter, for example the red filter. First, the green
and blue light rays will be absorbed → reducing reflection by at least
2/3. Secondly, only red rays that are reflected back through a red
filter will exit the display, as shown by LP1. By contrast, although
LP2 and LP3 are reflected by the reflective polariser 710, this red
light is absorbed by the green filter (LP2) and blue filter (LP3).
Similar light paths occur for ambient light incident on the green filter
and blue filter. In summary, therefore, virtually no light will be
reflected back through the color LCD panel, and therefore a specular
reflective display function is not possible in Erinjippurath as claimed.
Conversely, the ZBD panel would not work in the configuration of
Erinjippurath on the viewing side because a ZBD panel as known to
those of ordinary skill in the art is black and white (no color) and does
not have TFTs.
Reply Br. 5–6.

We agree with Appellant because prior art must be evaluated for what the
reference would have fairly suggested to one of ordinary skill in the art at the time
of the invention. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807–808
(Fed. Cir. 1989). “If references taken in combination would produce a ‘seemingly
inoperative device,’ . . . such references teach away from the combination and thus
cannot serve as predicates for a prima facie case of obviousness.” McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (citation omitted); see
also Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir.
1999) (“If when combined, the references ‘would produce a seemingly inoperative
device,’ then they teach away from their combination.”) (quoting In re
Sponnoble, 405 F.2d 578, 587 (CCPA 1969); also citing In re Gordon, 733 F.2d
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900, 902 (Fed. Cir. 1984) (where the court concluded that, essentially, “French
teaches away from the board’s proposed modification” because “if the French
apparatus were turned upside down, it would be rendered inoperable for its
intended purpose”)).
Moreover, although one of ordinary skill in the art may understand that two
references could be combined as reasoned by the Examiner, this does not imply a
motivation to combine the references. Personal Web Techs., LLC v. Apple, Inc.,
848 F.3d 987, 993–94 (Fed. Cir. 2017); see also Belden Inc. v. Berk–Tek LLC, 805
F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed invention.”);
InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir.
2014). “Obviousness requires more than a mere showing that the prior art includes
separate references covering each separate limitation in a claim under
examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011). Additionally, we are mindful “of the distortion caused by hindsight bias
and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S.
at 421 (citing Graham v. Deere, 383 U.S. 1, 36 (1966)).
Here, the Examiner has not set forth sufficient evidence or technical
reasoning persuasive to rebut Appellant’s arguments that the proffered
combination would result in an inoperable device. Accordingly, we are persuaded
by Appellant’s arguments that the ordinarily skilled artisan would not have been
motivated to combine the references as suggested by the Examiner.
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Thus, constrained by the present record, we reverse the Examiner’s
obviousness rejection of independent claim 1 over the cited combination of
Erinjippurath and Akiyama. For the same reasons, we also reverse the Examiner’s
obviousness rejections of independent claim 19 and each dependent claim on
appeal.
Accordingly, as discussed above, we reverse the Examiner’s obviousness
rejections of all claims 1, 3–12, and 15–23 on appeal.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 8–11 103 Erinjippurath, Akiyama 1, 3, 5, 8–
11
4 103 Erinjippurath,
Akiyama, Kitagawa
4
6, 7, 19, 20,
22, 23
103 Erinjippurath,
Akiyama, Jones
6–7, 19, 20,
22, 23
12, 15 ,18 103 Erinjippurath,
Akiyama, Yang
12, 15, 18
16, 17 103 Erinjippurath,
Akiyama, Yang,
Mather
16, 17
21 103 Erinjippurath,
Akiyama, Jones, Yang
21
19–23 112(b) Indefiniteness5
1–20 Provisional Non-
statutory OTDP6

5 The Indefiniteness Rejection is dismissed as moot, supra (footnote 2).
6 The Provisional OTDP Rejection is dismissed as moot, supra (footnote 4).
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome

1, 3–12,
15–23

REVERSED