Ex Parte Song et al

Patent Trial and Appeal Board

Jun 12, 2014

11328764 (P.T.A.B. Jun. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEOCK-CHEON SONG, KEUN-WOO PARK,
SANG-HOON LEE, PIL-MO CHOI, and UNG-SIK KIM
____________________

Appeal 2011-012958
Application 11/328,764
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012958
Application 11/328,764

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-52. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a driving apparatus for a liquid
crystal display, including a switching unit disposed between a gate voltage
generator and a gate voltage line (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A driving apparatus for a display, comprising:
a signal line that transmits a gate voltage;
a gate voltage generator that generates the gate voltage;
a gate driver that receives the gate voltage from the gate
voltage generator through the signal line;
a switching unit disposed between the gate voltage
generator and the gate driver, wherein the gate voltage is
transmitted to the gate driver through the switching unit; and
a signal controller that generates a control signal for
control of the switching unit,
wherein the switching unit is turned on to connect the
voltage generator and the gate driver through the signal line.

C. REJECTIONS1
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
So US 6,025,746 Feb. 15, 2000

1 The Examiner notes that Appellants have erred in their recitation of the
grounds of rejection to be reviewed on appeal (Ans. 2-3).
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Application 11/328,764

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Lee US 6,421,038 B1 July 16, 2002
Nguyen US 6,509,796 B2 Jan. 21, 2003

Claims 1-4, 6-10, 12-14, 31-34, 39-41, and 43-52 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Lee.
Claims 5, 11, and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee.
Claims 15-29 and 35-38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee in view of So.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee in view of So and Nguyen.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding Lee teaches “a switching unit disposed between the gate voltage
generator and the gate driver, wherein the gate voltage is transmitted to the
gate driver through the switching unit” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Lee
Lee discloses a liquid crystal display apparatus having a high and low
level gate voltage generator 42 that delivers a gate voltage to a shift register
36 and a control switch 39 within a gate driver 34; wherein, the control
switch 39 selectively delivers any one of the low and high level gate
voltages Vgl and Vgh to the gate line GL as controlled by the logical state at
Appeal 2011-012958
Application 11/328,764

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the output terminal QT of the shift register 36 (Fig. 5; col. 5, ll. 51-54). The
control switch 39 couples to the shift register 36 (id.).

IV. ANALYSIS
Claims 1-4, 6-10, 12-14, 31-34, 39-41, and 43-52
Appellants contend the “Examiner is in error as to a gate voltage from
a low level gate voltage generator and from a high level voltage generator
being transmitted to the gate driver 34 through control switches 39,” since
“the gate voltage is directly transmitted from the gate voltage generator to
gate driver 34 before encountering control switches 39” (App. Br. 8).
Appellants assert “control switches 39 do not transmit the gate voltage to
gate driver 34, but deliver the gate voltage to gate lines GL” (App. Br. 9).
However, the Examiner finds Lee discloses “a switching unit (control
switches 39, figure 5) disposed between the gate voltage generator and the
gate driver” “36 [of] figure 5” (Ans. 4). In particular, the Examiner notes
Figure 5 of Lee illustrates “control switches 39 connecting voltage
generators to element 36 through signal lines FVL and SVL” (id.). The
Examiner “maintains that the control switches 39 do transmit the gate
voltage to gate driver 34 in at least that the connection points of control
switches 39 are located within gate driver 34” (Ans. 25).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 is directed to a driving “apparatus” comprising “a switching
unit disposed between the gate voltage generator and the gate driver.”
Although Appellants assert, in Lee, “control switches 39 do not transmit the
gate voltage to gate driver 34, but deliver the gate voltage to gate lines GL”
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(App. Br. 9, emphasis omitted), as an initial matter, we note that claim 1
merely recites “wherein the gate voltage is transmitted to the gate driver
through the switching unit.” That is, how the gate voltage is being
“transmitted” is provided in a “wherein” clause describing a “switching
unit” in the claimed “apparatus.”2
Given the language used, the “wherein” clause is reasonably
interpreted to identify the resulting conditions that occur when a switching
unit is disposed between a gate voltage generator and a gate driver, as
positively recited in claim 1. Thus, the “wherein” clause at issue is akin to a
“whereby” clause that merely states the result of disposing a switching unit
in a particular location. Our reviewing court has concluded that “[a]
‘whereby’ clause that merely states the result of the limitations in the claim
adds nothing to the patentability or substance of the claim.” Texas
Instruments, Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir.
1993) (citation omitted).
Further, we note the contested limitation of “the gate voltage is
transmitted to the gate driver through the switching unit” is directed to
functional language in an apparatus claim (claim 1, emphases added). That

2 See MPEP §2111.04 regarding "wherein" clauses:
Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples of
claim language, although not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012).
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is, the contested limitation does not further limit the structure of the claimed
apparatus.
Our reviewing court guides that the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries, Inc. v. Masaba,
Inc., 2013-1302, 2014 WL 163046 at *5 (Fed. Cir. 2014) (Rader, J.,
concurring):
[A] system claim generally covers what the system is, not what
the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 . . . (1875) (“The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.”).
Thus, it is usually improper to construe non-structural claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v. Timex
Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).3
Thus, we interpret claim 1 as merely requiring “a switching unit
disposed between the gate voltage generator and the gate driver.” We find
no error with the Examiner’s underlying factual findings and rejection of the
claims as anticipated by Lee.
Lee is directed to a liquid crystal display apparatus having a high and
low level gate voltage generator that couples to a shift register and a control
switch (both within a gate driver); wherein, the gate voltage is supplied to

3 Superior Industries, Inc. v. Masaba, Inc., 2013-1302, 2014 WL 163046
(Fed. Cir. 2014) is a non-precedential opinion of the Court of Appeals for
the Federal Circuit. However, we consider the concurring opinion by Chief
Judge Rader as guiding because it cites precedential authority in support.
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the control switch (FF 1). A control switch is disposed between the gate
voltage generator and the shift register (id.).

Lee’s Figure 5 is reproduced below:

Figure 5 depicts a schematic diagram showing the configuration of a
liquid crystal display apparatus according to a first embodiment of the
present invention (col. 5, ll. 3-5).
In particular, as shown above, shift register 36 and control switch 39
are coupled to receive the gate voltages from the gate voltage generator 42
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(FF 1). Although in the Response to Argument section of the Answer, the
Examiner responds to Appellants’ arguments regarding the gate driver 34
(Ans. 25), we find no error with the Examiner’s original finding that Lee
discloses “a switching unit (control switches 39, figure 5) disposed between
the gate voltage generator and the gate driver” “36 [of] figure 5” (Ans. 4;
Final Rej. 3).
That is, we find no error with the Examiner’s finding that Lee’s
control switch 39 is disposed between the gate voltage generator and shift
register 36, which the Examiner finds discloses the claimed gate driver (Ans.
4; FF 1).4 Thus, the preponderance of evidence supports the Examiner
finding that Lee’s Fig 5 and supporting description anticipates the contested
limitation of “a switching unit disposed between the gate voltage generator
and the gate driver,” within the meaning of claim 1. Moreover, Appellants
fail to rebut this finding by the Examiner in the Appeal Brief and Reply
Brief.
Accordingly, we find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 102(b) over Lee. Further, independent claim 39, having
similar claim language, and claims 2-4, 6-10, 12-14, 31-34, 40, 41, and 43-
52 (depending from claims 1 and 39) which have not been argued separately,
fall with claim 1.
Claims 5, 11, 15-29, 30, 35-38, and 42

4 Anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831,
832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int'l Trade Comm'n, 808
F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory reference . . . need
not duplicate word for word what is in the claims." Standard Havens Prods.
v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
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Application 11/328,764

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Appellants argue that claims 5, 11, 15-29, 30, 35-38, and 42 are
patentable over the cited prior art for the same reasons asserted with respect
to claim 1 (App. Br. 10-12).
As noted supra, however, we find that Lee teaches all contested
limitations of claim 1. We therefore sustain the Examiner’s rejection of
claims 5, 11, and 42 under 35 U.S.C. § 103 over Lee; of claims15-29 and
35-38 under 35 U.S.C. § 103 over Lee in view of So; and of claim 30 under
35 U.S.C. § 103 over Lee in view of So and Nguyen.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-4, 6-10, 12-14, 31-34, 39-41,
and 43-52 under 35 U.S.C. § 102(b) and claims 5, 11, 15-29, 30, 35-38, and
42 under 35 U.S.C. § 103(a) 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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