X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
The full case caption appears at the end of this opinion. BRYSON, Circuit Judge. This is an appeal from a decision of the Patent and Trademark Office’s Board of Patent Appeals and Interferences. Theappellant, Gilbert P. Hyatt, seeks review of the Board’s decision upholding a patent examiner’s action rejecting severalclaims of Mr. Hyatt’s patent application. We affirm the decision of the Board. I Mr. Hyatt’s application addresses the problem of defects or faults in certain systems, including illumination systems. In anillumination system using display panels with many display devices, the invention compensates for a defect in one of thedevices by using the surrounding devices to generate the intensity that was supposed to be generated by the defectivedevice. Mr. Hyatt refers to that aspect of his invention as “device detection and intensity sharing.” According to thewritten description, the invention produces an acceptable image “even when 10% to 50% or more” of the devices arefaulty. The four claims at issue are claims 1, 8, 24, and 30. The claims read as follows: 1. A sharing system comprising: an intensity signal generator generating input intensity signals; a device detector generating device condition signals; a sharing generator coupled to the intensity signal generator and to the device detector and generating shared intensitysignals in response to the input intensity signals and in response to the device condition signals; and a plurality of devices coupled to the sharing generator and excited by the shared intensity signals. 8. An array system comprising: an intensity signal generator generating input intensity signals; a device detector generating device condition signals; a sharing generator coupled to the intensity signal generator and to the device detector and generating shared intensitysignals in response to the input intensity signals and in response to the device condition signals; and an array of devices coupled to the sharing generator and excited by the shared intensity signals. 24. A display system comprising: a display signal generator generating input illumination intensity display signals; a fault detector generating fault condition signals; a sharing generator coupled to the display signal generator and to the fault detector and generating shared illuminationintensity display signals in response to the input illumination intensity display signals and in response to the fault conditionsignals; and a plurality of display devices coupled to the sharing generator and excited by the shared illumination intensity displaysignals. 30. A liquid crystal display system comprising: a display signal generator generating input illumination intensity display signals; a degraded device memory storing degraded liquid crystal device condition signals to identify a degraded liquid crystaldevice; a sharing generator coupled to the display signal generator and to the degraded device and generating shared illuminationintensity display signals in response to the input illumination intensity display signals and in response to the degraded liquidcrystal device condition signals; and a plurality of liquid crystal display devices coupled to the sharing generator and excited by the shared illumination intensitydisplay signals. In reviewing the prior art, the examiner focused on U.S. Patent No. 4,825,201 to Watanabe et al., which discloses adisplay error detection and correction system. The examiner found many of the claims of the application distinguishableover Watanabe because they explicitly recite limitations “directed to changing the intensity of devices adjacent to thedefective device to compensate for the intensity of the defective device.” The examiner, however, rejected the four claimsat issue in this appeal on the ground of anticipation, finding that because they do not expressly recite the limitations ofchanging the intensity of adjacent devices to correct for a defect, they are not distinguishable over the second embodimentdisclosed in Watanabe. The Watanabe patent discloses an “optical measuring device” positioned in front of an array of display units. The opticalmeasuring device measures various optical properties of the display units, including brightness and color tone. The opticalmeasuring device generates a signal that is sent to the “correction-value determining device,” which calculates both theposition of the display unit that needs correction and the “correction value” to be applied to that display unit. Thecorrection-value determining device includes a central processing unit, a read-only memory, and a random accessmemory. Based on the signal from the optical measuring device and on stored data for running the program, thecorrection-value determining device generates a “correction signal” that is sent to a controller, which in turn transmits acorrection data signal to correction circuits connected to the display units. Although the correction data signal is availableto all of the correction circuits, the controller enables only the particular correction circuit corresponding to the display unitthat needs correction. Thus, the correction data from the controller is transmitted through only the correction circuitcorresponding to the display unit that needs correcting. On appeal, the Board of Patent Appeals and Interferences upheld the rejections. The Board adopted the examiner’sfindings that various features in Watanabe anticipate the claimed intensity signal generator, the claimed device detector,the claimed sharing generator, and the claimed plurality of devices. With respect to the “sharing” limitation, the Boardfound that Watanabe’s correction data signal is shared by all of the display devices – and thus meets the sharing limitationfound in all four claims – because it is available to all of the correction circuits, even though it is transmitted through onlythat correction circuit corresponding to the display unit that needs correction. The Board agreed with the examiner inrejecting Mr. Hyatt’s argument that the sharing limitation in each of the rejected claims incorporates the requirement forchanging the intensity of the devices adjacent to the defective device in order to compensate for the intensity of thedefective device. Because it found that the correction data signal in Watanabe is available to all of the correction circuitsat the same time, the Board found that Watanabe discloses the “sharing” limitation of all four rejected claims when thatlimitation is given its broadest reasonable interpretation consistent with the specification. II A In challenging the Board’s decision, Mr. Hyatt first argues that the examiner and the Board failed to analyze the claims onan element-by- element and claim-by-claim basis. That failure, according to Mr. Hyatt, renders the Board’s decisioninadequate under our holding in Gechter v. Davidson, 116 F.3d 1454, 43 USPQ2d 1030 (Fed. Cir. 1997). The central thrust of Gechter is that the Board must explain the basis for its rulings sufficiently to enable meaningful judicialreview. Gechter, 116 F.3d at 1458, 43 USPQ2d at 1033. As we stated, “For an appellate court to fulfill its role ofjudicial review, it must have a clear understanding of the grounds for the decision being reviewed,” which requires that”[n]ecessary findings must be expressed with sufficient particularity to enable [the] court, without resort to speculation, tounderstand the reasoning of the Board, and to determine whether it applied the law correctly and whether the evidencesupported the underlying and ultimate fact findings.” Id. at 1457, 43 USPQ2d at 1033. Under that standard, the court inGechter concluded that it could not properly review the Board’s decision to reject the claim at issue for anticipationbecause the Board’s decision addressed only one of several limitations in the claim. In addition, the court found that it wasnot clear from the Board’s discussion what construction it had placed on the one limitation that it did discuss. Id. at1459-60, 43 USPQ2d at 1035. In this case, the Board addressed the limitations of each claim in a manner adequate to permit judicial review. Inparticular, in his answer to Mr. Hyatt’s appeal before the Board of Patent Appeals and Interferences, the examinerexplained which aspects of Watanabe anticipate each of the limitations of claim 1. With respect to the critical terms”sharing” and “shared intensity signals,” the examiner pointed out that “there is no structural recitation providing patentablydistinguishing language regarding the disclosed feature of adjusting the brightness of adjacent devices to compensate forthe brightness of a defective device.” That statement implicitly construes the “sharing” limitation to embrace its broadestcommon meaning – to “undergo in common.” Webster’s New International Dictionary 2087 (3d ed. 1968). The Boardadopted the examiner’s analysis with additional remarks explaining why the “sharing” limitation was found in Watanabe.With respect to the remaining claims, the examiner explained that those claims are not materially different from claim 1and that the patentability of those claims stands or falls with claim 1. While the explanation given by the examiner and the Board could have been more expansive, particularly with regard toclaims 8, 24, and 30, their analysis is sufficient to apprise us of the basis on which they rejected each of the disputedclaims. Accordingly, we decline the invitation to vacate the Board’s decision on the ground that it failed to explain itsreasoning sufficiently to enable us to review its rulings. B On the merits, Mr. Hyatt argues that the examiner and the Board were incorrect in finding that the Watanabe referenceanticipates the four rejected claims. At its core, Mr. Hyatt’s argument is that rejected claims 1, 8, 24, and 30 aredistinguishable over Watanabe because they are directed to changing the intensity of devices surrounding the defectivedevice in order to compensate for the intensity of the defective device. Three general and undisputed propositions guide our review of the Board’s decision. First, anticipation is a question offact. See Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15 (1869); In re Schreiber, 128 F.3d 1473, 1477, 44USPQ2d 1429, 1431 (Fed. Cir. 1997). Second, we uphold decisions of the Board on factual matters if there issubstantial evidence in the record to support the Board’s findings. See In re Gartside, 203 F.3d 1305, 1315, 53USPQ2d 1769, 1775 (Fed. Cir. 2000). Third, during examination proceedings, claims are given their broadestreasonable interpretation consistent with the specification. See In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697,1701 (Fed. Cir. 1995); In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985) (en banc). That lastproposition “serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scopethan is justified,” In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984), and it is not unfair toapplicants, because “before a patent is granted the claims are readily amended as part of the examination process,”Burlington Indus., Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed. Cir. 1987). Operating inconjunction as they do in this case, these three propositions make the applicant’s task on appeal to this court a dauntingone. We agree with the Board that most of the elements of the four disputed claims are clearly anticipated by Watanabe. First,the optical measuring device disclosed in Watanabe detects the state of various optical properties of each of the devicesin an array of devices and generates signals that reflect the state of those properties. Mr. Hyatt argues that the “devicedetector” limitation requires the sensing of a defective or faulty panel, not simply the measurement of the illuminationproperties of a device. The broadest reasonable interpretation of the claim limitation, however, includes the detection ofthe condition of a device, such as its illumination properties. In addition, an improper illumination condition can beconsidered a fault or defect. Thus, the optical measuring aspect of Watanabe anticipates the “device detector [or faultdetector] generating device [or fault] condition signals.” Second, the correction-value determining device of Watanabe anticipates the “intensity signal generator” or “display signalgenerator” recited as the first limitation in each of the disputed claims. The correction-value determining device generatescorrection signals based in part on signals received from the optical measuring device. Under a properly broad reading of”intensity” and “display” signals, the correction signal meets the “generates input intensity signals” or “input illuminationintensity display signals” limitation further required by each claim. Third, Watanabe discloses an array or plurality of devices, which can include liquid crystal display panels, that are excitedby the correction signals originating in the controller. Except for the references to the “sharing” generator and the “shared”intensity signals, Watanabe thus plainly anticipates the fourth limitation of the four disputed claims as well. The difficult question in the case is whether Watanabe anticipates the third limitation of each claim, which calls for a”sharing generator” that “generat[es] shared intensity signals” (or “shared illumination intensity display signals”). Mr. Hyattargues that in order to be “shared,” the intensity signals or illumination intensity display signals must be received by morethan one display device at the same time. The examiner and the Board, on the other hand, interpreted the term “shared” torequire only that the intensity signal (or illumination intensity display signal) be available to more than one of the correctioncircuits, even if only one of the correction circuits transmits the signal to its corresponding display device. In light of the rule that the Board must give claims their broadest reasonable construction, we uphold the Board’s decisionwith respect to the definition of the terms “shared” and “sharing” in Mr. Hyatt’s application. The specification, althoughlengthy, contains no definition of “shared” or “sharing” that would require the Board to construe those limitations in thenarrower manner asserted by Mr. Hyatt. The Board’s interpretation of those terms, although broad, is not unreasonable. Mr. Hyatt attempts to distinguish Watanabe by arguing that the correction signal is available to only one of the correctioncircuits at any given time. For support, he refers to the relevant Watanabe drawing, which shows a curved line connectingeach input of the correction circuits to a common line to which the signal is applied. The significance of that symbol, heasserts, is that the wire to an input is taken from a bundle of wires and is thus independent of the remaining wires in thebundle.Mr. Hyatt did not make this argument in his brief to the Board; instead, he raised it for the first time in his second requestfor rehearing before the Board. Because the Board in its decision on Mr. Hyatt’s first request for rehearing did not alter itsposition with respect to the anticipation ruling on claims 1, 8, 24, and 30, Mr. Hyatt was not entitled under Board rules tofile a second request for rehearing on that issue. See 37 C.F.R. � 1.197(b) (appellant may file one request for rehearing”unless the original decision is so modified by the decision on rehearing as to become, in effect, a new decision, and theBoard of Patent Appeals and Interferences so states”). In its response to Mr. Hyatt’s second request for rehearing, theBoard expressly relied on 37 C.F.R. � 1.197(b) in refusing to consider the request. Mr. Hyatt’s argument about thenature of the connection circuits shown in Watanabe was therefore not properly before the Board. As such, he is notentitled to rely on it as a basis for overturning the Board’s decision. See In re Schreiber, 128 F.3d at 1479, 44 UPSQ2dat 1433; In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979); In re Fong, 378 F.2d 977, 981,154 USPQ 25, 28-29 (CCPA 1967). In any event, the Watanabe drawing clearly shows the common line to consist of N channels, with N channels alsoentering each input to a correction circuit. The channels correspond to the N-bits of a correction signal, as disclosed inthe Watanabe written description. Thus, the correction signal reaches the input of all of the correction circuits, contrary toMr. Hyatt’s contention. One further point remains. The second limitation of claim 30 in Mr. Hyatt’s application refers to a “degraded devicememory storing degraded liquid crystal device condition signals to identify a degraded liquid crystal device.” Mr. Hyattargues in passing in his brief that the examiner and Board did not establish what in Watanabe is relied on to be a”degraded device memory storing degraded liquid crystal device condition signals.” The short answer to that objection isthat in Watanabe the degraded device information, i.e., the output of the device detector, is stored in memory thatWatanabe specifically notes is found in the correction-value determining device. The Board therefore did not err indeciding that claim 30, like related claims 1, 8, and 24, is anticipated by Watanabe. AFFIRMED.
In re: Gilbert Hyatt United States Court of Appeals for the Federal Circuit No. 99-1182 (Serial No. 07/419,911) IN RE GILBERT P. HYATT Raphael V. Lupo, McDermott, Will & Emery, of Washington, DC, argued for appellant. Of counsel was Paul Devinsky. John M. Whealan, Acting Deputy Solicitor, Office of the Solicitor, of Arlington, Virginia, argued for appellee,Commissioner of Patents and Trademarks. With him on the brief were Albin F. Drost, Acting Solicitor, and Raymond T.Chen, Associate Solicitor. Of counsel was Nancy C. Slutter. Appealed from: Patent and Trademark Office, Board of Patent Appeals and Interferences. DECIDED: May 12, 2000 Before LOURIE, RADER, and BRYSON, Circuit Judges.
 
Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.

More From ALM

With this subscription you will receive unlimited access to high quality, online, on-demand premium content from well-respected faculty in the legal industry. This is perfect for attorneys licensed in multiple jurisdictions or for attorneys that have fulfilled their CLE requirement but need to access resourceful information for their practice areas.
View Now
Our Team Account subscription service is for legal teams of four or more attorneys. Each attorney is granted unlimited access to high quality, on-demand premium content from well-respected faculty in the legal industry along with administrative access to easily manage CLE for the entire team.
View Now
Gain access to some of the most knowledgeable and experienced attorneys with our 2 bundle options! Our Compliance bundles are curated by CLE Counselors and include current legal topics and challenges within the industry. Our second option allows you to build your bundle and strategically select the content that pertains to your needs. Both options are priced the same.
View Now
December 02, 2024 - December 03, 2024
Scottsdale, AZ

Join the industry's top owners, investors, developers, brokers and financiers for the real estate healthcare event of the year!


Learn More
December 11, 2024
Las Vegas, NV

This event shines a spotlight on how individuals and firms are changing the investment advisory industry where it matters most.


Learn More
February 24, 2025 - February 26, 2025
Las Vegas, NV

This conference aims to help insurers and litigators better manage complex claims and litigation.


Learn More

Our client, a boutique litigation firm established by former BigLaw partners, is seeking to hire a junior-mid level associate their rapidly ...


Apply Now ›

Shipman & Goodwin LLP is seeking an associate to join our corporate and transactional practice. Candidates must have four to eight years...


Apply Now ›

SENIOR ASSOCIATE ATTORNEY, BOUTIQUE LAW FIRM, CORPORATE LAW We provide strategic advisory and legal services to the world's leading archite...


Apply Now ›