David Scott. Thompson et al.

Patent Trials and Appeals Board

Jan 14, 2020

13516400 - (D) (P.T.A.B. Jan. 14, 2020)

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.
13/516,400 06/15/2012 David Scott Thompson 65945US007 4998
32692 7590 01/14/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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 DAVID SCOTT THOMPSON, ROBERT S. DAVIDSON,
DAVID A. BERRY, HUANG CHIN HUNG, and AUDREY A. SHERMAN
Appeal 2019-002356
Application 13/516,400
Technology Center 1700
Before JAMES C. HOUSEL, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 under 35 U.S.C. § 103(a) as
unpatentable over Lin (US 6,562,175 B1, iss. May 13, 2003) in view of
Kroupa (US 4,511,620, iss. Apr. 16, 1985). Ans. 3–5. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as 3M Company
(formerly known as Minnesota Mining and Manufacturing Company) and its
affiliate 3M Innovation Properties Company. Appeal Br. 2.
Appeal 2019-002356
Application 13/516,400

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We REVERSE.2
CLAIMED SUBJECT MATTER
The claims are directed to a display panel assembly. Spec. 1:1, Title.
Claim 1, reproduced below from the Claims Appendix to the Appeal Brief,
is illustrative of the claimed subject matter (the limitation at issue is
italicized):
1. A display panel assembly comprising:
a display panel;
a substantially transparent optical substrate; and
a cured optical bonding layer prepared from a curable
layer, wherein the curable layer consists essentially of a curable
composition, wherein the curable composition comprises first
and second compositions that are individually curable, and
disposed between and filling the gap between the display panel
and the substantially transparent optical substrate, the optical
bonding layer comprising a first region comprising the first
curable composition and a second region substantially
surrounding the first region, wherein the second region
comprises the second curable composition that is cured by
hydrosilylation of a first silicon-containing resin comprising
aliphatic unsaturation and a second silicon-containing resin
comprising silicon-bonded hydrogen, and the hardness of the
second region is greater than that of the first.

2 Our Decision refers to the Specification (“Spec.”) filed June 15, 2012,
Appellant’s Appeal Brief (“Appeal Br.”) filed Oct. 22, 2018, the
Examiner’s Answer (“Ans.”) dated Nov. 29, 2018, and the Reply Brief
(“Reply Br.”) filed Jan. 24, 2019.

Appeal 2019-002356
Application 13/516,400

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OPINION
The dispositive issue before us in this appeal is whether Appellant has
identified reversible error in the Examiner’s finding that Lin teaches first and
second compositions that “fill[] the gap between the display panel and the
substantially transparent optical substrate,” as required by claim 1. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). After review of the Examiner’s
and Appellant’s opposing positions and the appeal record before us, we
determine that Appellant’s arguments are sufficient to identify reversible
error in the Examiner’s obviousness rejection. Accordingly, we reverse the
stated obviousness rejection for the reasons set forth, in pertinent part, in the
Appeal and Reply Briefs.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
The Examiner finds, in relevant part, that Lin teaches a display panel
assembly comprising a glass substrate, a frame seal material (optical
bonding layer) comprising a size-controlling material (second composition)
and a UV glue (first composition), and another substrate (display panel) used
to seal the assembly, wherein the size-controlling material may be a silicon
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rubber that is harder than the UV glue. Ans. 3. The Examiner finds that Lin’s
size-controlling material surrounds the UV glue, and that “[a] gap is
inherently formed without a bonding material, however small, in the
thickness direction, since the two substrates can slide off of each other
without the bonding materials.” Id. Further, the Examiner finds that Lin
discloses that the size-controlling material limits the out-diffusion of the UV
glue, thereby keeping the UV glue from flowing out from the outer edges of
the substrates during the sealing process. Id. at 4. The Examiner also finds
that the term “gap” does not have any associated dimensions such that “any
portion bonding the two substrates together at the edge would meet the
claimed limitations.” Id. at 5. Therefore, the Examiner finds that Lin’s
bonding material (size-controlling material and UV glue) would fill the gap
between the substrates. Id. at 4.
In contrast, Appellant argues that Lin’s UV glue stays only on the
edges of the two substrates, rather than being disposed between and filling
the gap between the two substrates. Appeal Br. 3–4. Appellant contends that
the purpose of Lin’s size-controlling material is to restrain the UV glue to
the edge of the assembly. Id. at 4. Appellant asserts that Lin’s method
prevents the UV glue from filling the gap between the two substrates by
constraining it to the edges only. Id. at 4, 5. Appellant further contends that
the present claims require that the optical bonding layer fills the gap between
the display panel and the substantially transparent optical substrate, i.e.,
“within the entire space between the two substrates.” Reply Br. 2–3.
Thus, the dispute here centers on the proper interpretation of “filling
the gap between the display panel and the substantially transparent optical
substrate” as recited in claim 1. Although claims should be given their
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broadest reasonable interpretation during examination, claims must be
interpreted as one of ordinary skill in the art would in light of the
Specification. See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)
(“Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach.”); In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir.
1983) (“It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”).
We note that a “gap” is generally defined to be “an empty space or
opening in the middle of something or between two things.” See
https://dictionary.cambridge.org/us/dictionary/english/gap, (last visited
January 9, 2020). In addition, “to fill” is generally defined to be “to put a
substance into an empty space.” See
https://dictionary.cambridge.org/us/dictionary/english/fill, (last visited
January 9, 2020). Applying these two definitions, taken together in the
context of this case, “filling the gap between the display panel and the
substantially transparent optical substrate” means to put or place the curable
composition in the empty space between the panel and the substrate.
This interpretation is consistent with the Specification. Appellant
discloses that a band 250b of the second composition surrounds a first
composition 240 on a major surface of a first optical substrate such that
when a second optical substrate is placed on the first substrate, “[t]he first
and/or second compositions spread out and mix together.” Spec. 9:4–17,
referring to Fig. 2B. More specifically, Appellant discloses a similar
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embodiment in which the optical bonding layer extends to the perimeter of
at least one of the substrates, such that “the gap between the substrates is
substantially filled with the first and second compositions.” Id. at 11:7–11,
referring to Fig. 3A. Similarly, Appellant discloses another embodiment
wherein “the optical bonding layer substantially fills the gap to the edges of
the substrates.” Id. 12:12–20, referring to Fig. 4C. These disclosures are
consistent with our interpretation of “filling the gap” as meaning that the
empty space between the panel and substrate is filled or occupied by the
curable composition, which is subsequently cured.
On the other hand, Lin does not fill the gap between the substrates
with the size-controlling material and UV glue. As Appellant contends,
Lin’s size-controlling structures 12, 14, 16, 18 set forth in Figures 3A–3D
and UV glue 9, in cooperation with the frame seal material 5, confine or
corral the UV glue to the edges, more specifically to the corners, of the
substrates. At best, Lin’s size-controlling structures, UV glue, and frame seal
material bridge, rather than fill, the gap between the substrates. We thus hold
that the Examiner’s interpretation of the claim recitation regarding the
curable composition filling the gap between the panel and the substrate, and
the corresponding finding that Lin meets this recitation, are erroneous.
Therefore, the Examiner’s obviousness conclusion lacks the requisite
factual basis to be sustained. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
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CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1–3 under 35 U.S.C. § 103(a) as unpatentable over Lin in view of
Kroupa is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1–3 103(a) Lin, Kroupa 1–3

REVERSED