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UNITED STA TES p A TENT AND TRADEMARK OFFICE

APPLICATION NO. FILING DATE

14/633,781 02/27/2015

30593 7590 10/15/2018

HARNESS, DICKEY & PIERCE, P.L.C.

P.O. BOX 8910

RESTON, VA 20195

FIRST NAMED INVENTOR

BonwonKOO

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

ATTORNEY DOCKET NO. CONFIRMATION NO.

2557SI-002297-US 6706

EXAMINER

AZAR!, SEPEHR

ART UNIT PAPER NUMBER

2691

NOTIFICATION DATE DELIVERY MODE

10/15/2018 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):

dcmailroom@hdp.com

jcastellano@hdp.com

jhill@hdp.com

PTOL-90A (Rev. 04/07)

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte BONWON KOO, DEUKSEOK CHUNG, HYUNJOON KIM,

SHANGHYEUN PARK, CHANGSOO LEE, and TAEWON JEONG 1

Appeal2018-001969

Application 14/633,781

Technology Center 2600

Before ST. JOHN COURTENAY III, JASON J. CHUNG, and

SCOTT B. HOWARD, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final

Rejection of claims 1-19 and 21-25. 2 We have jurisdiction under 35 U.S.C.

§ 6(b).

We reverse.

INVENTION

The invention is directed to an electro-chromic panel capable of

selectively making a transparent and a reflective area. Spec. ,r 2. Claim 1 is

illustrative of the invention and is reproduced below:

1. An electro-chromic panel comprising:

1 According to Appellants, Samsung Electronics Co., Ltd. is the real party in

interest. App. Br. 2.

2 Claim 20 has been canceled. App. Br. 20.

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Appeal2018-001969

Application 14/633,781

a detection layer; and

an electro-chromic layer configured to switch an

operational mode of a selected area between a transmission mode

and a reflective mode according to a signal provided from the

detection layer.

REJECTIONS AT ISSUE

Claims 1-7, 9-11, 13, 14, 17-19, 21, 23, and 24 stand rejected under

35 U.S.C. § 103 as being unpatentable over the combination ofWassingbo 3

and Kuroki4 . Ans. 2-12. 5

Claim 8 stands rejected under 35 U.S.C. § I03(a) as being

unpatentable over the combination of Wassingbo, Kuroki, and Tam 6. Ans.

13.

Claims 12 and 25 stand rejected under 35 U.S.C. § 103 as being

unpatentable over the combination ofWassingbo, Kuroki, and Nam 7. Ans.

13-15.

3 Wassingbo, US 2009/0262085 Al, published Oct. 22, 2009.

4 Kuroki, US 2013/0328780 Al, published Dec. 12, 2013.

5 The Answer includes claims 10 and 21 in the rejection heading. Ans. 2.

However, claims 10 and 21 are not included in the body of the rejection. Id.

at 2-11. The Answer subsequently states "[c]laims 10 and 21 are rejected

under 35 U.S.C. § 103 as being unpatentable over Wassingbo." Id. at 11-12.

Because claims 10 and 21 depend from independent claims 6 and 1 7,

respectively, we interpret the Examiner's subsequent heading and rejection

(see id. at 11-12) to be a typographical error. Accordingly, we make the

appropriate corrections in our listing of the rejections by grouping the

rejections from pages 2-12 of the Answer together.

6 Tam, US 2008/0238871 Al, published Oct. 2, 2008.

7 Nam, 2013/0307801 Al, published Nov. 21, 2013.

2

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Appeal2018-001969

Application 14/633,781

Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as being

unpatentable over the combination of Wassingbo, Kuroki, and Lee 8• Ans.

15-17.

Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable

over the combination of Wassingbo, Kuroki, and Han. Ans. 17.

ANALYSIS

The Examiner finds W assingbo teaches switching between a

transparent mode and an opaque mode. Ans. 3, 18 (citing Wassingbo ,r,r 60-

61, 63, 69-71, Figs. 6A---6C). 9 In addition, the Examiner finds Kuroki

teaches switching between a transparent state and a reflective state. Ans. 3

(citing Kuroki ,r 38). The Examiner concludes since a reflective surface is a

type of opaque surface, a person having ordinary skill in the art at the time

of the invention would have combined W assingbo and Kuroki to provide a

reflective effect for Wassingbo' s non-active areas based on a simple

substitution of one known element for another to obtain predictable results.

Ans. 3--4.

8 Lee, US 2014/0062899 Al, published March 6, 2014.

9 The Examiner entered the claim amendments that incorporated the features

from dependent claim 20 into independent claims 1, 6, 13, and 17 in an

Advisory Action mailed February 16, 2017. The Examiner shifts their

theory of unpatentability by citing to Wassingbo' s Figures 6A-6C and

paragraph 63 for the first time in the Answer pertaining to claim 1.

Compare Final Act. 3, 9 with Ans. 18 (citing Wassingbo, Figs. 6A-6C,

,r 63). Accordingly, we conclude Appellant's arguments pertaining to the

combination being inoperative for its intended purpose (see Reply Br. 3--4)

are raised timely.

3