Ex Parte Frey et alDownload PDFPatent Trial and Appeal BoardMay 30, 201814437511 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/437,511 04/22/2015 32692 7590 06/01/2018 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Matthew H. Frey 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. 70788US005 5898 EXAMINER TSO, STANLEY ART UNIT PAPER NUMBER 2847 NOTIFICATION DATE DELIVERY MODE 06/01/2018 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW H. FREY, BROCK A. HABLE, and THOMAS HERDTLE Appeal2017-008261 Application 14/437,511 Technology Center 2800 Before CATHERINE Q. TIMM, MONTE T. SQUIRE and JENNIFER R. GUPTA, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner's final decision to reject claims 1-11, 13, and 14 under 35 U.S.C. 1 In explaining our Decision, we cite to the Specification of April 22, 2015 (Spec.), the Final Office Action of August 5, 2016 (Final), the Appeal Brief of January 4, 2017 (Appeal Br.), the Examiner's Answer of March 17, 2017 (Ans.), and the Reply Brief of May 15, 2017 (Reply Br.). 2 Appellant is the Applicant, 3M Innovative Properties Company (Application Data Sheet of April 22, 2015). According to the Brief, 3M Company and 3M Innovative Properties Company are the real parties in interest. Appeal Br. 2. Appeal2017-008261 Application 14/437,511 § I02(a) as anticipated by Lee, 3 or alternatively, under 35 U.S.C. § I03(a) as obvious over Lee in view of Petersen, 4 and to reject claim 12 under 35 U.S.C. § I03(a) as obvious over those references further in view of Mohindra. 5 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appellant's invention is directed to electrically conductive and transparent articles used as electrodes in liquid crystal displays, photovoltaic cells, touch display sensors, etc. Spec. ,r 1. The articles include an electrically conductive pattern of pairs of separated traces on a substrate. Spec. ,r,r 14--16. Pairs of traces remain separated but overlap over a distance as shown in, for instance, Figure 1, reproduced below: 10~ ...................................... ___________________ , ~"""""-···=··············· Figure 1 depicts a pair of separated first (11) and second (12) traces having a length of overlap 3 Lee et al., US 2012/0187821 Al, published July 26, 2012. 4 Petersen et al., US 2013/0050228 Al, published Feb. 28, 2013. 5 Mohindra et al., US 2013/0207924 Al, published Aug. 15, 2013. 2 Appeal2017-008261 Application 14/437,511 Claim 1 is the only independent claim and reads, with the limitation at issue on appeal highlighted, as follows: 1. An article comprising: a substrate having a first major surface; an electrical conductor pattern on the first major surface of the substrate, the electrical conductor pattern comprising: a plurality of separated pairs of separated first [ 11] and second [12] electrically conductive metallic traces, the first [11] and second [12] electrically conductive metallic traces of each pair of the plurality of pairs having a length of overlap relative to each other of at least 5 times their separation distance, and wherein there are at least 50 of the electrically conductive metallic traces/ cm2. Appeal Br. 23 (claims appendix) (emphasis added). OPINION Appellants have identified a reversible error in the Examiner's finding of the length of overlap required by claim 1 in pairs of traces taught by Lee. The Examiner finds that Lee's Figure 1 depicts areas where pairs of traces have a length of overlap relative to each other of at least 5 times their separation distance as required by claim 1. Final 3. 3 Appeal2017-008261 Application 14/437,511 We reproduce Figure 1 of Lee below: ls ~ . t~~":. ~~*'"'~:-·.:t;:,~l·~ .~v.:. :~>\;~~'~"~·~~' t ~ Figure 1 of Lee is an illustration of an electric conductive pattern with a straight line drawn thereon for use in a calculation of distance distribution ratio. As can be seen from Lee's Figure 1, the traces (shown as irregular lines moving from left to right) of the electric conductive pattern are neither configured in pairs nor are they regularly distanced from each other over any appreciable length. We agree with Appellant that Lee's irregularly spaced traces do not overlap for the lengths required by claim 1. Appeal Br. 5-7. This is because overlap is defined in the Specification in a way that excludes the irregularities of Lee. Appellant's Specification defines "overlap" as follows: The term overlap refers to portions of two adjacent separated electrically conductive metallic traces that make up a pair, as described herein, or that are each a member of separated but adjacent pairs, the electrically conductive traces being separated (physically and electrically) from each other in the plane of the substrate, the portions being approximately parallel with each 4 Appeal2017-008261 Application 14/437,511 other or maintaining an approximately constant separation from each other over the overlap distance (length). Spec. ,r 16 ( emphasis added). In response to Appellant's argument that Lee does not teach the required length of overlap, the Examiner determines that Lee's traces are "approximately parallel." Ans. 4--6. But we agree with Appellant that the Examiner is reading "approximately" too broadly. Reply Br. 3-7. Although claim terms must be given their broadest reasonable interpretation, the interpretation cannot be divorced from the Specification. In re Suitco Swface, 603 F.3d 1255, 1259 (Fed. Cir. 2010); see also In re Fout, 675 F.2d 297,300 (CCPA 1982) ("Claims must always be read in light of the specification."). Appellant's Specification conveys a meaning for "approximately" consistent with the ordinary meaning of "nearly correct or exact: close in value but not precise." Reply Br. 3 (quoting "Approximate." Merriam- Webster.com. Merriam-Webster, n.d. Web. 12 May 2017). Appellant's Figures 1--4 each show an embodiment of trace pairs having the required overlap. Spec. ,r,r 16-20. Each pair has portions overlapping one another in either a parallel relationship (Figs. 1-3) or in a relationship that maintains a constant separation (Fig. 4). Id. It is apparent from the Specification that "approximately" was added to take into account accidental variations from exactly parallel and exactly constant separation. "Approximately" does not encompass the intended variances in separation shown in Lee. The Examiner also determines Appellant's argument is not persuasive because Lee discloses that the conductive traces "may be formed of straight lines, or various modifications such as curved lines, wave lines and zigzag 5 Appeal2017-008261 Application 14/437,511 lines." Ans. 6 (quoting Lee ,r 60) (emphasis added). The Examiner infers that the traces of Lee's Figure 1 "may be formed of straight lines that do not cross each other" and, thus, "Lee discloses conductive traces that are approximately parallel and maintain an approximately constant separation distance from each other." Ans. 6. But paragraph 60 of Lee is not directed specifically to the Figure 1 embodiment, it is a general disclosure of line types preceding a more specific disclosure of various embodiments using the line types. Paragraph 61 discloses a specific embodiment with zigzag lines that are not in pairs maintained with a constant separation. See Lee Fig. 1. Other embodiments have straight lines, such as the embodiment of Figure 2, but these embodiments contain lines that cross each other. These lines are in physical contact and, thus, they are not separated pairs as required by claim 1. See Spec. ,r 16 (Defining "separated" as referring to traces that are "not in physical or in electrical contact with each other, except when, for example, electrically connected through the electrically conductive layer."). That Lee does not envision using non-crossing straight line pairs is further evidenced by Lee's disclosure that the pattern of traces is to be irregular to prevent the occurrence of the Moire phenomenon. Lee ,r 43. The Examiner has not established that Lee describes an embodiment with separated pairs of traces having lengths overlapping for the distance required by claim 1. The Examiner further finds that "in the event that it is determined that Lee does not explicitly disclose such limitation, then alternatively, Petersen discloses that the pitch, or the separation distance between adjacent conductive traces, can vary from less than 10 microns to 500 microns ([O 155]), therefore, the length of overlap relative to each other can be at least 6 Appeal2017-008261 Application 14/437,511 5 times the separation distance." Final 3--4. That the pitch between the traces can vary does not overcome the fact that Lee desires an irregular pattern of traces and the ordinary artisan would not have maintained an approximately parallel or constant separation between a portion of pairs of traces that has a length of at least time 5 the separation distance as required by claim 1 when following the teachings of Lee. The Examiner's reliance on Mohindra to reject claim 12 does not cure the deficiency discussed above. CONCLUSION In summary: 1-11, 13, 14 § 102(a) Lee 1-11, 13, 14 § 103(a) Lee, Petersen 12 § 103(a) Lee, Petersen, Mohindra Summar DECISION The Examiner's decision is reversed. REVERSED 7 1-11, 13, 14 1-11, 13, 14 12 1-14 Copy with citationCopy as parenthetical citation