Ex Parte Maruyama et al

Patent Trial and Appeal Board

Dec 19, 2014

10821927 (P.T.A.B. Dec. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JUNYA MARUYAMA and SHUNPEI YAMAZAKI
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Appeal 2012-011078
Application 10/821,9271
Technology Center 2800
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL2

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision rejecting as unpatentable, under 35 U.S.C. § 103(a), claims 122–
124, 126, 137–140, 171, and 173 over Taniguchi3 in view of Ehara,4 and

1 According to Appellants, the Real Party in Interest is Semiconductor
Energy Laboratory Co., Ltd. (App. Br. 1).
2 Our decision refers to the Final Office Action (FR) mailed June 9, 2011,
Appellants’ Appeal Brief (App. Br.) filed March 9, 2012, the Examiner’s
Answer (Ans.) mailed May 24, 2012, Appellants’ Reply Brief (Reply Br.)
filed July 24, 2012, and Appellants’ Specification (Spec.).
3 US 5,239,228, patented August 24, 1993.
4 US 6,601,962 B1, patented August 5, 2003.
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claims 127–136, 172, 174–183 over Taniguchi in view of Ehara and
Ebisawa.5 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention is directed to a display device using an organic
light emitting element or diode (OLED) having an organic compound layer
sandwiched between two electrodes to produce light emission. Spec. 1:5–
12. Appellants further disclose that the light emitting device includes first
and second substrates with at least the light emitting layer interposed
therebetween, such that light is emitted through the second substrate. Id. at
15:1–5. An inner surface of the second substrate is provided with “minute
unevennesses” which according to Appellants prevents outside light “from
reflecting at the interface between the second substrate and a sealed space
[between the second substrate and the light emitting layer] and in an
interface between the second substrate and air.” Id. at 15:5-7.
Claim 122, reproduced below from the Claims Appendix of
Appellants’ Appeal Brief (italics added), is illustrative of the subject matter
on appeal:
122. An electronic appliance comprising:
a display panel, the display panel comprising:
a first substrate;
a light emitting element over the first substrate; and
a second substrate over the light emitting element,

5 US 6,284,342 B1, patented September 4, 2001.
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wherein minute unevennesses are formed on a bottom surface
of the second substrate,
wherein light emitted from the light emitting element is
outputted through the second substrate, and
wherein the light outputted through the second substrate passes
through the minute unevennesses.

ANALYSIS
We sustain the above rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments well expressed by the
Examiner in the Final Office Action and the Answer. The following
comments are added for emphasis.
Appellants do not separately argue the claims on appeal.
Accordingly, we select independent claim 122 as representative and address
Appellants’ arguments by reference to this claim. 37 C.F.R. § 41.37(c)(iv).
The remaining claims stand or fall with claim 122.
The Examiner finds, and Appellants do not dispute, that Taniguchi
discloses an electronic appliance as claimed except for the provision of
minute unevennesses formed on a bottom surface of the second substrate
through which emitted light passes. FR 2. To remedy this deficiency, the
Examiner turns to Ehara, finding that Ehara discloses a light emitting device
with minute unevennesses (notches 11a) formed on the surface of a
transparent guide plate 1 through which light passes to improve the
uniformity of the light intensity distribution from the guide plate. Id. at 3.
The Examiner concludes it would have been obvious to provide Taniguchi’s
display panel with minute unevennesses formed on the bottom surface of the
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second substrate [transparent sealing glass plate 51] to improve the
uniformity of light intensity distribution from the substrate. Id.
Appellants contend that Ehara’s notches 11a as shown in Figure 1 do
not correspond to the minute unevennesses of the claims. App. Br. 4. In this
regard, Appellants note the exemplary dimensions on the order of 0.1 µm to
0.3 µm set forth in the Specification for the minute unevennesses. Id. at 4–
5; Reply Br. 2. Appellants further argue that although Ehara is silent on the
dimensions of the notches, “[i]f one were to assume that the light source has
dimensions on the order of 1 cm, this would put the dimensions of the
notches at 1 mm or so, which is several orders of magnitude away from the
exemplary dimensions of the minute unevennesses described in the
specification.” App. Br. 5.
We disagree. As noted by the Examiner, Ehara does not disclose that
the drawings including Figure 1 are to scale and, therefore, use of the
drawings to estimate dimensions is improper. See Ans. 5–6. We find no
evidentiary support in the record for Appellants’ assertion that “it is well
known that the scale of these chips [Ehara’s LEDs] would be on the order of
one centimeter (as opposed to one millimeter or 10 centimeters.” See Reply
Br. 1. Moreover, as Appellants note, the dimensions disclosed in their
Specification are “exemplary,” thereby acknowledging that the Specification
fails to define the meaning of “minute.” See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“The specification
acts as a dictionary when it expressly defines terms used in the claims or
when it defines terms by implication.”) We also find no recitation in claim
122 requiring “minute unevennesses” to be on the order of 0.1 µm to 0.3
µm. Limitations not appearing in the claims cannot be relied upon for
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patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Accordingly,
we are not persuaded that Appellants have shown the Examiner’s finding
that Ehara’s notches correspond to the minute unevennesses of claim 122 to
be erroneous.
Appellants further contend it would not have been obvious to have
provided Ehara’s notches on Taniguchi’s sealing glass plate 51 because (1)
Ehara’s notches improve the light intensity distribution in the particular
structural arrangement of Ehara; (2) nothing in Ehara indicates that these
notches would improve performance of Taniguchi’s display panel; and (3)
providing notches in Taniguchi’s display panel would actually degrade its
performance. App. Br. 5. In support of this contention, Appellants note
Ehara’s notches are in the shape of triangular pyramids with inclined
surfaces facing toward a reflector 4 such that light refracts toward the
reflector which reflects the light toward the light emitting surface 12 to
provide increased light output. Id. Appellants further argue that since
Taniguchi does not provide a reflector at an edge of the sealing plate 51 but
instead emits light straight through the plate, use of Ehara’s notches would
actually direct light away toward the side of the plate rather than through its
top, thereby degrading performance. Id. at 5–6.
We do not find Appellants’ argument persuasive. Appellants’
argument presumes that the Examiner’s combination of Taniguchi and Ehara
proposes to bodily incorporate Ehara’s notches on the side of Taniguchi’s
sealing plate. Ans. 7. However, “it is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). “Claims
may be obvious in view of a combination of references, even if the features
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of one reference cannot be substituted physically into the structure of the
other reference.” Orthopedic Equipment Co., Inc. v. U.S., 702 F.2d 1005,
1013 (Fed. Cir. 1983). We find, as did the Examiner, that one skilled in the
art when applying the teachings of Ehara, would have applied notches to the
bottom surface of Taniguchi’s sealing plate 51 because that is the surface
adjacent to light emitting device that corresponds to Ehara’s surface 10.
With regard to Appellants’ argument that doing so would actually
degrade performance, we disagree. Although Ehara teaches the provision of
a reflector 4 and the benefit of directionally refracting emitted light toward
the reflector, as Appellants acknowledge, these features are specific to
Ehara’s arrangement of the LED being disposed at a right angle to the
display direction. However, as the Examiner finds, Ehara’s teaching more
generally is that providing refracting notches at the interface between the
LED and the display panel will improve the uniformity of the light passing
through the display panel. In this regard, we note Ehara teaches a number of
shape variations for the notches including non-directional notches. Ehara,
Figures 13–16.
Based on the foregoing, we find that providing the bottom of
Taniguchi’s sealing plate 51 with the notches or minute unevennesses
disclosed in Ehara, as proposed by the Examiner, would have been expected
to improve uniformity in the light intensity distribution from Taniguchi’s
plate. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”). Appellants have failed to establish otherwise.
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Appellants further argue that Taniguchi teaches away from the
proposed combination with Ehara “through its recitation of the need for a
flat surface.” App. Br. 7 (citing to Taniguchi, 2:61–64). The Examiner
responds that “‘flat’ is not the same as ‘smooth’ and the notches of Ehara
could readily be incorporated into the structure of Taniguchi while still
maintaining a ‘flat’ surface.” Ans. 8. Appellants urge that the Examiner’s
position is without support and not consistent with “an established
definition.” Reply Br. 3. Further, Appellants argue that “Taniguchi
nowhere indicates that the recitation of a flat surface is meant to apply to a
surface that is not smooth, let alone one that includes notches of the scale
contemplated by Ehara.” Id.
Regarding Appellants’ teaching away argument, it has been held that
"[w]hat the prior art teaches and whether it teaches toward or away from the
claimed invention ... is a determination of fact." Para-Ordnance Mfg., Inc. v.
SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). “A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Further, references in a combination may be said to teach away where their
combined teachings would produce a “seemingly inoperative device.” See
In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969). Teaching an alternative
or equivalent method, however, does not teach away from the use of a
claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Initially, we note that Taniguchi’s silence as to the provision of
notches as contemplated by Ehara is not dispositive as the rejection is based
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on a combination of Taniguchi and Ehara. Further, neither the Examiner nor
Appellants provide a citation for their respective interpretations of
Taniguchi’s teachings regarding “flat” as used in that reference. We find
Taniguchi’s teaching that the bottom of the sealing plate “should be flat” in
order to obtain a multicolor display of good quality is equivocal, indicating
that a “flat” surface is preferred.6 We find the term “flat” has a number of
definitions, none of which conclusively exclude the surface having minute
unevennesses or notches. See http://dictionary.reference.com/browse/flat,
accessed on December 3, 2014.7 Further, as explained above, Appellants
have not shown that providing notches on the bottom surface of Taniguchi’s
sealing plate would detrimentally affect the operation of the display device.
Indeed, Ehara teaches these notches would provide a more uniform
distribution of light passing through the panel. Therefore, we are not
persuaded that Taniguchi’s teaching that the bottom surface of the sealing
plate “should be flat” teaches away from the Examiner’s proposed
combination of Taniguchi and Ehara.

ORDER

Upon consideration of the record, and for the reasons given above and
in the Answer, it is

6 The fact that only dependent claims 3 and 4 of Taniguchi require a sealing
plate with a flat bottom surface further supports this finding.
7 Various definitions of “flat,” which has a stable meaning over time, include
(1) horizontally level: “a flat roof”; (2) level, even, or without unevenness of
surface, as land or tabletops; (3) having a surface that is without marked
projections or depressions: “a broad, flat face”; . . . (7) having a generally
level shape or appearance; not deep or thick: “a flat plate.”
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ORDERED that the decision of the Examiner rejecting claims 122–
124, 126–140, and 171–183 under 35 U.S.C. § 103(a) as unpatentable over
Taniguchi, Ehara, and Ebisawa is affirmed; and
FURTHER ORDERED that 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).

AFFIRMED

[kmm]