Ex Parte Teraguchi et al

Patent Trial and Appeal Board

Oct 17, 2017

13403063 (P.T.A.B. Oct. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/403,063 02/23/2012 Shinichi Teraguchi 880125-5013-US00 7414
134795 7590 10/19/2017
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
LINGARAJU, NAVIN B
ART UNIT PAPER NUMBER
2691
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
DCipdocket @ michaelbest. com
sbj ames @michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI TERAGUCHI,
MANABU KODATE, and SEONGHEE NOH
Appeal 2016-000413
Application 13/403,063
Technology Center 2600
Before JUSTIN BUSCH, JAMES W. DEJMEK, and JOYCE CRAIG,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims 41 and 58—77. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2016-000413
Application 13/403,063
CLAIMED SUBJECT MATTER
The claims relate generally to display devices that can switch between
displaying in two dimensions and three dimensions and further comprising a
touch sensor. Spec. 8:12—9:2, 27:11—24. Claims 41 and 58 are reproduced
below:
41. A display device comprising:
an alignment film between a liquid crystal layer and
a dielectric material layer in a cross-section of the display
device, said dielectric material layer and said liquid crystal
layer touching said alignment film;
driving electrodes between said dielectric material
layer and said alignment film in said cross-section of the
display device, said alignment film and said dielectric
material layer touching said driving electrodes,
wherein said alignment film physically isolates said
driving electrodes from said liquid crystal layer.
58. A display device comprising:
a pixel electrode between a circuit substrate and a
light-emitting layer, the light-emitting layer being
between a common electrode and the pixel electrode;
a first transparent substrate between the common
electrode and an adhesion layer, the adhesion layer and the
common electrode touching the first transparent substrate;
a second transparent substrate between a counter
electrode and the adhesion layer, the adhesion layer and
the counter electrode touching the second transparent
substrate.
REJECTIONS
Claim 74 stands rejected under 35U.S.C. § 112 | 1 as failing to
comply with the written description requirement. Final Act. 2—3.
Claim 61 stands rejected under 35 U.S.C. § 112 11 as failing to
comply with the enablement requirement. Final Act. 4.
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Claim 41 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Noguchi (US 2009/0256818 Al; Oct. 15, 2009). Final Act. 5-6.
Claims 58—62 stand rejected under 35 U.S.C. § 103(a) as unpatentable
in view of Son (US 2011/0096251 Al; Apr. 28, 2011) and Lee (US
2010/0134426 Al; June 3, 2010). Final Act. 7-10.
Claims 63—65, 67, and 69-76 stand rejected under 35 U.S.C. § 103(a)
as unpatentable in view of Son, Lee, and Noguchi. Final Act. 10-16.
Claims 66 and 68 stand rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Son, Lee, Noguchi, and Takahashi (US
2010/0157181 Al; June 24, 2010). Final Act. 16-17.
Claim 77 stands rejected under 35 U.S.C. § 103(a) as unpatentable in
view of Son, Lee, and Sanford (US 2011/0001706 Al; Jan. 6, 2011). Final
Act. 17-18.
ANALYSIS
Written Description Rejection of Claim 74
The Examiner rejects claim 74 under 35 U.S.C. § 1121 1 as failing to
comply with the written description requirement. Final Act. 2—3; Ans. 22—
24. Appellants have withdrawn traversal of the Examiner’s rejection. Reply
Br. 4. Accordingly, we summarily sustain the Examiner’s rejection of claim
74 under 35 U.S.C. § 11211.
Enablement Rejection of Claim 61
The Examiner rejects claim 61 under 35 U.S.C. § 11211 as failing to
comply with the enablement requirement. Final Act. 4; Ans. 25—27. Claim
61, which depends from independent claim 58, recites that the common
electrode, recited in claim 58, is a “metal film having a reflectivity.” The
Examiner concludes the Specification does not enable the common electrode
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being a metal film having a reflectivity because the recited common
electrode is between the light emitting layer and the display, such that “no
image reaches the viewing side of the display.” Final Act. 4. The Examiner
finds that “[i]n order for light from organic EL layer 12 [of Figure 1 of
Appellants’ Specification] to reach the viewer, common electrode 13a (and
all the layers above it) must be at least partially transparent.” Ans. 25; see
also Ans. 25—26 (finding that, if the recited common electrode “is made of a
reflective metal, only a small fraction of light generated by organic EL layer
12 would reach the viewer” (emphasis omitted)). The Examiner
acknowledges that the Specification discloses forming the common
electrode of “a metallic material having a reflectivity,” but concludes such a
disclosure is insufficient to enable a person of ordinary skill in the art to
make and use the invention recited in claim 61. Ans. 25; see also Ans. 27
(acknowledging that Lee discloses forming a common electrode of “a metal
layer made sufficiently thin so as to be transparent” (citing Lee 1 82)).
Appellants point to portions of the Specification describing forming
the common electrode of metallic material having a reflectivity. App. Br. 8—
10 (citing Spec. 10:22—11:6; Lee 1 82). Appellants further argue Figure 1 of
the Specification provides sufficient disclosure to enable claim 61. Reply
Br. 5—6; see also id. at 6 (explaining that the Specification explicitly
discloses the common electrode 13a of Figure 1 can be a metal film having a
reflectivity). Appellants contend the Examiner admits that some light
generated by the organic EL layer 12 would reach the viewer. Reply Br. 10
(quoting pages 25 through 26 of the Examiner’s Answer, which states that
“only a small fraction of light” would reach the viewer). Appellants thus
assert claim 61 is sufficiently enabled because a person of ordinary skill in
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the art would have been able to practice the invention of claim 61 without
needing to experiment. Reply Br. 11.
When rejecting a claim for lack of enablement, the United States
Patent and Trademark Office bears an initial burden of setting forth a
reasonable explanation as to why the Examiner believes the scope of
protection provided by the claim is not adequately enabled. In re Wright,
999 F.2d 1557, 1561—62 (Fed. Cir. 1993). The Examiner makes no attempt
to explain why it would require undue experimentation for one of ordinary
skill in the art to make and/or use the invention. Ans. 3. For example, the
Examiner does not address any of the Wands factors. See In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). Rather, the Examiner merely states that only
a small amount of light will reach the viewer and concludes that claim 61 is
not enabled. Even if it is not clear from Appellants’ disclosure exactly how
the common electrode may be formed of a reflective metal film and still
allow enough light to reach the viewer, as the Examiner maintains, it does
not necessarily follow that undue experimentation would be required to
make and use the claimed invention. Accordingly, we do not sustain the
Examiner’s rejection of claim 61 as lacking enablement.
Anticipation Rejection of Claim 41
Appellants argue the anticipation rejection of claim 41 is improper
because it relies on both Figures 4 and 6, which Appellants contend are
distinct embodiments. App. Br. 16—20; Reply Br. 12—17. In particular,
Appellants contend Noguchi’s disclosures indicate driving certain counter
electrodes differently with respect to Figures 4 and 6. App. Br. 17; Reply
Br. 13—14, 16—17. Appellants further argue nothing in Noguchi indicates
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that Figures 6A and 6B are related to Noguchi’s first embodiment. Reply
Br. 12-15.
The Examiner finds Noguchi discloses every limitation of independent
claim 41. Final Act. 5—6; Ans. 28—36. In particular, the Examiner finds the
elements depicted in Figures 4A-4D and Figure 6A, and the accompanying
description in paragraphs 55, 59, and 60, disclose each element recited in
claim 41. Final Act. 5—6. The Examiner explains that Figures 4 through 8
(particularly Figure 6) collectively “illustrate the concept of an electrode unit
(EU).” Ans. 29—30. The Examiner further explains that Figure 6A focuses
on a subset of the electrodes in Figure 4C, namely counter electrodes 43_1 to
43_5, to simplify the explanation of the principle of the disclosed driving
method. Ans. 31—32. The Examiner also points out that Noguchi explicitly
identifies which portions of its written description correspond to which
embodiments and Noguchi even clearly distinguishes variations within an
embodiment. Ans. 32.
Appellants are correct that an anticipation rejection is improper when
that rejection relies on disclosures from disparate embodiments. However,
we agree with and adopt the Examiner’s explanation and findings on pages
29 through 32 of the Answer regarding Noguchi’s disclosure—namely that
Figures 4 and 6 are directed to a single embodiment. In particular, we note
that Noguchi explicitly demarcates its different embodiments and describes
Figures 4 and 6 as being part of a single embodiment. See, e.g., Noguchi
H 48 (introducing the “First Embodiment” and Figures 4A-AD), 66
(introducing Figures 6A and 6B), 83 (introducing “Change 1” to the first
embodiment), 85 (introducing “Change 2” to the first embodiment), 86
(introducing the “Second Embodiment”). Moreover, paragraph 66 states
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that Figure 6A is “a top plan view of the electrode patterns adapted to show
a position as an object of detection.” Noguchi | 66. Thus, viewed in
context, Noguchi indicates that Figure 6A is a modified view of Figure 4.
Accordingly, Appellants have not persuaded us the Examiner improperly
relied on multiple embodiments to reject claim 41 as anticipated because we
disagree that Noguchi’s Figures 4 and 6 are directed to distinct
embodiments.
Claim 41 recites, in relevant part, an alignment film positioned between
a liquid crystal layer and a dielectric material layer. Claim 41 further requires
the alignment film to be in contact with (i.e., touch) the dielectric material
layer, liquid crystal layer, and driving electrodes. With respect to the recited
alignment film, the Examiner finds paragraph 59 of Noguchi discloses an
alignment film “disposed between liquid crystal layer 6 and counter substrate
4.” Final Act. 5. The Examiner explains that “the strip-shaped pattern of
counter electrode 43 is covered by an alignment film, resulting in counter
electrodes 43_1 -43_n” touching the alignment film, and the portion of “color
filter 42 that are exposed between each of electrodes 43_l-43_n are covered
by an alignment film, resulting in an alignment film formed between liquid
crystal layer 6 and color filter 42.” Final Act. 5—6; see also Ans. 33—36
(explaining how Noguchi’s alignment film placed above the liquid crystal
layer would be in contact with both the counter electrodes and the color filter).
Appellants argue Noguchi does not depict the recited “alignment
film” in Figure 4D and Noguchi does not disclose the recited alignment film
touches each of the dielectric layer, the driving electrodes, and the liquid
crystal layer. App. Br. 13—16; Reply Br. 18—21. Appellants concede that
Noguchi discloses an alignment film between the liquid crystal layer and the
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drive substrate, but contend Noguchi does not disclose that the recited
alignment film touches each of liquid crystal layer 6, counter electrodes 43,
and glass substrate 41/color filter 42. App. Br. 13; Reply Br. 19 (arguing
that the alignment film is omitted from Figure 4D and, thus, there is no
disclosure of the alignment film touching the other recited layers). Figure
4D of Noguchi is reproduced below:
Noguchi, Fig. 4D (depicting liquid crystal layer 6 and counter substrate 4,
which is composed of various layers, including counter electrodes 43, color
filter 42, and glass substrate 41). Appellants essentially argue that Noguchi
cannot expressly disclose its alignment film touching other layers because it
is not depicted in the figures and there is no explicit description of the
alignment layer “touching” any other layer. Appellants also argue the
Examiner has not provided evidence or rationale that the recited alignment
film is inherently present. App. Br. 13—16.
As an initial matter, and contrary to Appellants’ arguments, the
Examiner does not rely on inherency; rather, the Examiner finds Noguchi
expressly discloses the alignment film touching the various other layers, as
recited in claim 41. See Ans. 33. Moreover, “a reference can anticipate a
claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or
combined as in the claim, if a person of skill in the art, reading the reference,
would ‘at once envisage’ the claimed arrangement or combination.”
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
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Cir. 2015) (quoting In re Petering, 49 CCPA 993, 301 F.2d 676, 681
(1962)); see also In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (holding
that, in establishing anticipation under 35 U.S.C. § 102(b), “it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”). Thus, although Figure 4D does not depict the alignment film,
the Examiner provides a thorough explanation regarding why a person of
ordinary skill in the art would have understood (or “at once envisage[d]”)
that the disclosed alignment film, which is disposed “between the liquid
crystal layer 6 and the counter substrate 4,” is touching each of the liquid
crystal layer, the counter electrodes, and the color filter. See Ans. 33—36.
Figure 1 of Takahashi illustrates a similar arrangement, but explicitly
includes the alignment film, which is further evidence of how an ordinarily
skilled artisan would understand Noguchi’s Figure 4D and accompanying
description. See Takahashi, Fig. 1 (23). There—similar to the arrangement
in Noguchi—the alignment film is in contact with (i.e., touches) the liquid
crystal layer, electrodes (i.e., driving electrodes), and substrate (i.e.,
dielectric material layer). Takahashi 149, Fig. 1. Thus, we agree with and
adopt the Examiner’s findings. Accordingly, Appellants have not persuaded
us the Examiner erred in finding Noguchi discloses the recited alignment
film, arranged as claimed.
For the reasons discussed above, we are not persuaded the Examiner
erred in rejecting claim 41 as anticipated by Noguchi. Thus, we sustain the
Examiner’s rejection of claim 41.
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Obviousness Rejections
Claims 58—62 and 77
The Examiner rejects claims 58—62 as obvious in view of Son and Lee
and claim 77 as obvious in view of Son, Lee, and Sanford. Linal Act. 7—10,
17—18. In particular, the Examiner finds Son teaches or suggests every
limitation recited in claim 58, except Son teaches a liquid crystal panel
rather than an organic light-emitting display; thus, Son teaches a light-
modulating layer rather than the recited light-emitting layer, final Act. 7—8.
The Examiner finds Lee teaches or suggests the recited light-emitting layer
as well as the recited pixel electrode, circuit substrate, and common
electrode, with each of the layers arranged as claimed. Final Act. 8. The
Examiner concludes replacing Son’s liquid crystal panel with Lee’s light-
emitting layer would have been obvious to a person of ordinary skill in the
art at the time of invention in order to create a thinner overall display device.
Final Act. 8—9.
The First and Second Transparent Substrates
Claim 58 recites, inter alia, a first transparent substrate and a second
transparent substrate. Appellants acknowledge the Examiner does not rely
on Lee to teach these two substrates, but contend Son also fails to teach the
substrate layers identified by the Examiner are transparent. App. Br. 22—25;
see also App. Br. 28—29. In particular, Appellants argue the Examiner fails
to provide any reference or objective evidence to support the Examiner’s
explanation that the layers between the crystal layer and the viewer are
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required to be transparent such that a viewer is able to view the display
being generated by the liquid crystal layer. App. Br. 23.1
A prima facie case of obviousness is established when the prior art,
itself, would appear to have suggested the claimed subject matter to a person
of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA
1976). In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
We agree with the Examiner that “Son is directed to a touch-sensitive
display” and, to function as intended, at least some light from Son’s liquid
crystal layer, which is below the first and second substrate, must reach Son’s
liquid crystal lens layer (and the viewer), which are above the first and
second substrate. See Ans. 37. Specifically, there appears to be no dispute
that Son teaches the recited substrates arranged as claimed. Appellants’
1 Appellants also argue “Son fail[s] to set forth any articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness regarding a first [or second] transparent substrate being
necessarily present, not merely probably or possibly present, in Son.” App.
Br. 23—24. We note the Examiner finds Son, not a modification or
combination thereof, teaches or suggests the recited transparent substrates.
See Ans. 7—8. Thus, the question before us is not whether the Examiner
provides a reason with rational underpinning, but whether the Examiner
demonstrates sufficiently that Son itself teaches or suggests the recited
transparent substrates. Appellants assertions regarding requirements a
conclusion of obviousness are misplaced with respect to the Examiner’s
finding of facts regarding Son’s teachings and suggestions.
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contend Son does not explicitly state that the layers the Examiner relies on
as teaching the substrate are transparent. See, e.g., App. Br. 22. As
acknowledged by Appellants, the layers relied on as teaching the substrate
are between the light-emitting or light-modifying layer and the viewer. See
App. Br. 23. Accordingly, we find Son at least suggests that those layers are
transparent because a person of ordinary skill in the art would understand
that light transmission through these layers is important for providing a
functioning display device.
The Common Electrode
Appellants further contend Son fails to teach a common electrode as
claimed. App. Br. 25—26. Appellants assert neither Son nor Lee teaches the
recited common electrode because Son does not explicitly disclose its
common electrode is arranged with respect to the other recited layers and
Lee fails to teach a common electrode that touches a first transparent
substrate. App. Br. 28—29. As the Examiner states, the rejection relies on
Lee for teaching a light-emitting layer between a common electrode and a
pixel electrode and relies on Son for teaching a first transparent substrate
between the common electrode and an adhesion layer. Ans. 38—39. The
Examiner finds “Son discloses that a common electrode is formed on the
entire surface of second substrate 120 that includes the black matrix and
color filter layer, i.e., the bottom surface.” Ans. 39 (citing Son | 64). We
agree with the Examiner that Son’s disclosure teaches or suggests, to a
person of ordinary skill in the art, forming the common electrode on the
surface of the composite substrate layer consisting of Son’s second substrate
120 and color filter layer 121. See Son | 64 (“second substrate 120 may
further include a common electrode formed on an entire surface including
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the b[l]ack matrix and the color filter layer”). This is consistent with a
similar configuration depicted in Figure 4 of Noguchi. See Noguchi | 55
(“The counter substrate 4 has a glass substrate 41, a color filter 42 formed on
one surface of the glass substrate 41, and a counter electrode 43 formed on
the color filter 42 (on the liquid crystal layer 6 side).”), Fig. 4D (depicting a
counter electrode between the color filter layer and the liquid crystal layer).
Moreover, claim 58 is rejected in view of the combination of Son and
Lee. Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee’s
invention to a person having ordinary skill in the art. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner finds Lee teaches a light-emitting layer between a
common electrode and a pixel electrode and the proposed combination of
Son and Lee replaces Son’s liquid crystal panel with Lee’s organic light-
emitting display. Final Act. 8—9. Appellants have not addressed this
combination. Specifically, Appellants have not argued that Lee fails to teach
the recited common electrode, only that Lee’s common electrode does not
touch a first transparent substrate. App. Br. 28. As the Examiner points out,
Son is relied on for teaching the transparent substrate. Thus, when
considering the combination, which replaces Son’s display with Lee’s
display, it is the combination of Son and Lee that teaches the common
electrode touching the transparent substrate.
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The Rationale for Combining Son and Lee
Finally, and contrary to Appellants’ argument that the Examiner’s
rationale for combining Son and Lee has no rational underpinning, App.
Br. 29—32, the Examiner articulates a reason with a rational underpinning for
combining the identified teachings of Son and Lee—namely, to create a
thinner device using Lee’s organic light-emitting display, thus eliminating
the need for a backlight and crossed polarizers. Final Act. 8—9; Ans. 42 43.
As discussed above, the Examiner finds Son teaches or suggests each
element, except Son teaches a light-modulating layer rather than a light-
emitting layer. Final Act. 7—8. The Examiner further explains that the
proposed combination relies on Lee, which has a similar arrangement as Son
but uses an organic light-emitting display. Ans. 40-43. Thus, the
combination merely requires a rationale for replacing Son’s liquid crystal
display with Lee’s organic light-emitting display. We are not persuaded the
Examiner’s explicit reason for using a light-emitting display (i.e., an overall
thinner device) lacks a rational underpinning.
Summary of Analysis of Rejection of Claims 58—62 and 77
For the reasons discussed above, Appellants have not persuaded us the
Examiner erred in finding the combination of Son and Lee teaches or
suggests the first and second transparent substrates and the common
electrode, as recited in claim 58. Nor have Appellants persuaded us the
Examiner’s rationale for combining Son and Lee lacks a rational
underpinning. Appellants do not argue claims 59—62 separately with
particularity. App. Br. 21 (stating “claims 58-62 stand or fall together”).
Appellants also do not argue independent claim 77, which stands rejected in
view of the combination of Son, Lee, and Sanford, separately with
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particularity. App. Br. 41 (stating “claim 77 stands or falls together with
claim 58”). Accordingly, we sustain the Examiner’s rejection of claims 58—
62 as obvious in view of the combination of Son and Lee, and of claim 77 as
obvious in view of the combination of Son, Lee, and Sanford.
Dependent Claims 63—76
Appellants argue claims 63—65, 67, and 69-76 are patentable for the
same reasons asserted with respect to independent claim 58, from which
they ultimately depend, and because neither the combination of Son and Lee
nor Noguchi teaches or suggests “the adhesion layer and the counter
electrode touching the second transparent substrate along with the liquid
crystal layer and the counter electrode touching the first alignment film.”
App. Br. 32—34; Reply Br. 34—36. The Examiner does not find either the
combination of Son and Lee or Noguchi alone teaches or suggests the
disputed aspects of claim 63. final Act. 7—11; Ans. 44-45. Rather, the
Examiner finds the combination of Son and Lee teaches or suggests “the
adhesion layer,” recited in claim 58, and Noguchi teaches or suggests the
recited alignment film, as recited in claim 63.” final Act. 7—11; Ans. 44-45.
Thus, the Examiner relies on the combination of Son, Lee, and Noguchi as
teaching the disputed aspects of claim 63. See final Act. 7—11; Ans. 44-45.
Similarly, Appellants argue dependent claims 66 and 68, which
ultimately depend from claim 63, are patentable for the same reasons
asserted with respect to claim 63 (including the reasons asserted with respect
to claim 58, from which claim 63 depends), and because neither the
combination of Son, Lee, and Noguchi nor Takahashi alone teaches or
suggests “the adhesion layer and the counter electrode touching the second
transparent substrate along with the liquid crystal layer and the counter
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electrode touching the first alignment film, wherein the first alignment film
is a polyimide.” App. Br. 36, 38—39; Reply Br. 36—37. The Examiner does
not find either the combination of Son, Lee, and Noguchi or Takahashi alone
teaches or suggests the disputed aspects of claims 66 and 68. Final Act. 7—
11, 16—17; Ans. 46. Rather, the Examiner finds the combination of Son,
Lee, and Noguchi teaches or suggests “the adhesion layer and the counter
electrode touching the second transparent substrate along with the liquid
crystal layer and the counter electrode touching the first alignment film,”
recited in claim 63, and Takahashi teaches or suggests an “alignment film is
a polymide.” Final Act. 7—11, 16—17; Ans. 46. Thus, the Examiner relies on
the combination of Son, Lee, Noguchi, and Takahashi as teaching the
disputed aspects of claims 66 and 68. See Final Act. 7—11, 16—17; Ans. 46.
As the Examiner states, non-obviousness cannot be established by
attacking references individually where, as here, the ground of
unpatentability is based upon the teachings of a combination of
references. Ans. 44 (citing Keller, 642 F.2d at 426). Rather, the test for
obviousness is whether the combination of references, taken as a whole,
would have suggested the patentee’s invention to a person having ordinary
skill in the art. Merck, 800 F.2d at 1097. Thus, Appellants’ arguments are
not persuasive.
Summary
For the reasons discussed above, we: (1) summarily affirm the
Examiner’s rejection of claim 74 under 35 U.S.C. § 112 11 for failing to
comply with the written description requirement; reverse the Examiner’s
rejection of claim 61 under 35 U.S.C. 112 11 for lack of enablement;
(3) sustain the Examiner’s rejection of claim 41 under 35 U.S.C. § 102(b) as
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anticipated by Noguchi; (4) sustain the Examiner’s rejection of claims 58—62
under 35 U.S.C. § 103(a) as obvious in view of Son and Lee; (5) sustain the
Examiner’s rejection of claims 63—65, 67, and 69—76 under 35 U.S.C.
§ 103(a) as obvious in view of Son, Lee, and Noguchi; (6) affirm the
Examiner’s rejection of claims 66 and 68 under 35 U.S.C. § 103(a) as
obvious in view of Son, Lee, Noguchi, and Takahashi; and (7) affirm the
Examiner’s rejection of claim 77 under 35 U.S.C. § 103(a) as obvious in
view of Son, Lee, and Sanford.
DECISION
We affirm the Examiner’s decision to reject claims 41 and 58—77.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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