Ex Parte 7741642 et al

Patent Trial and Appeal Board

Mar 30, 2016

90020044 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/020,044 11/19/2013
31780 7590 03/31/2016
Robinson Intellectual Property Law Office, P,C,
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
FIRST NAMED INVENTOR
7741642
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.
0756-10309 8543
EXAMINER
PATEL, HETUL B
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
03/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
Appellant
Appeal2016-000747
Reexamination Control 90/020,044
Patent 7,741,642 B2
Technology Center 3900
Before MARC S. HOFF, BRADLEY W. BAUMEISTER, and
ERIC B. CHEN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-000747
Reexamination Control 90/020,044
Patent 7,741,642 B2
This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 7-15. Claims 1---6 have been cancelled and independent
claims 7, 10, and 13 have been amended during the reexamination
proceeding. We have jurisdiction under§§ 134(b) and 306.
An oral hearing was held on March 9, 2016. The record will include a
written transcript of the oral hearing.
We affirm-in-part and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
Reexamination Proceedings
On November 19, 2013, the Director of the U.S. Patent and
Trademark Office ordered reexamination of U.S. Patent No. 7,741,642 B2
(the '642 patent), assigned Reexamination Control No. 90/020,044.
The ; 642 patent, entitled "Semiconductor Device and Manufacturing
Method Thereof," issued June 22, 2010, to Tom Takayama, Junya
Maruyama, Yumiko Ohno, Masakazu Murakami, Toshiji Hamatani, Hideaki
Kuwabara, and Shunpei Yamazaki, filed February 5, 2007, based on
Application No. 11/702,058. The '642 patent is a division of Application
No. 10/697,941, filed on October 31, 2003, now U.S. Patent No. 7,180,093,
issued February 20, 2007.
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The '642 patent is said to be assigned to Semiconductor Energy
Laboratory Co., Ltd., said to be the assignee and real party in interest.
(App. Br. 4.) 1
The Claims
Independent claims 10 and 13, reproduced below with disputed
limitations in italics and with underlining and bracketing to indicate claim
amendments, are exemplary:
10. A display device comprising:
a substrate;
a magnetic sheet over the substrate;
an insulating film between the substrate and the magnetic
sheet;
a thin film transistor between the magnetic sheet and the
insulating film;
a light emitting element between the magnetic sheet and
the insulating film; [and]
an adhesive material between the magnetic sheet and the
light emitting element[,]; and
a layer between the adhesive material and the light
emitting element, the layer comprising a material selected from
the group consisting of strontium oxide, tin oxide,
fluoropolymer and tungsten,
wherein the light emitting element comprises a first
electrode, a second electrode, and a light emitting layer,
1 Throughout this Opinion we reference the Final Office Action, mailed
November 13, 2014 ("Final Act."); the Appeal Brief, filed May 13, 2015
("App. Br."); the Examiner's Answer, mailed June 3, 2015; ("Ans."); and
the Reply Br., filed July 24, 2015 ("Reply Br.").
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wherein the first electrode is electrically connected to the
thin film transistor, and
wherein the magnetic sheet comprises a material selected
from the group consisting of barium ferrite, strontium ferrite,
and rare earth magnet.
13. A display device comprising:
a magnetic sheet;
an adhesive material [adjacent to] over and in contact
with the magnetic sheet;
a layer over and in contact with the adhesive material,
the layer comprising a material selected from the group
consisting of strontium oxide, tin oxide, fluoropolymer and
tungsten;
an insulating film [adjacent to] over and in contact with
the [adhesive material] layer;
a thin film transistor [adjacent to] over the insulating
film; and
a pixel electrode over the thin film transistor, the pixel
electrode being electrically connected to the thin film
transistor,
wherein the magnetic sheet comprises a material selected
from the group consisting of barium ferrite, strontium ferrite,
and rare earth magnet.
The Rejections
Claims 7-9 and 13-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kinstler (US 5,005,306; issued Apr. 9, 1991), Utsunomiya
(US 6,814,832 B2; issued Nov. 9, 2004), and Campbell (Dean J. Campbell
et al., Chemistry with Refrigerator Magnets: From Modeling of Nanoscale
Characterization to Composite Fabrication, 76 J. CHEMICAL EDUC. 1205-11
(1999)).
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Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kinstler, Utsunomiya, Campbell, and Ishii (US 5,313,100; issued
May 17, 1994).
ANALYSIS
§ 103 Rejection-Kinstler, Utsunomiya, and Campbell
Claims 13-15
We are unpersuaded by Appellant's arguments (App. Br. 8-10; see
also Reply Br. 7-8) that the combination of Kinstler, Utsunomiya, and
Campbell would not have rendered obvious independent claim 13, which
includes the limitation "the pixel electrode being electrically connected to
the thin film transistor."
The Examiner found that Figure 5 of Utsunomiya, which illustrates a
connection diagram for an electro-optical display device formed using the
integrated circuits of Figures 4B-4C, corresponds to the limitation "the pixel
electrode being electrically connected to the thin film transistor." (Ans. 3-
4.) In particular, the Examiner found that "when the electro-optical (display)
device is build [sic] using the method of the first or second embodiments,
the element-forming layer 3, shown in Figs. 4B-4C, becomes a part of the
light emitting element/pixel electrode" (id.) because "these TFTs are used to
build the pixel electrodes, TFTs implicitly has to be electrically connected to
the pixel electrode" (id. at 4). We agree with the Examiner.
Utsunomiya relates to "a method for producing a semiconductor
device using a technique for transferring thin-film elements between
substrates." (Col. 1, 11. 10-12.) Figure 5 ofUtsunomiya illustrates an active
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matrix substrate for electro-optical device 40 (col. 4, 11. 6-8) for a fourth
embodiment (col. 16, 11. 1-2). In particularly, Figure 5 ofUtsunomiya
illustrates electro-optical (display) device 40, including "luminescent layers
OELD capable of emitting light through electroluminescent effects in each
pixel region G" (col. 16, 11. 3-5) and "thin-film transistors Tl to T4"
(col. 16, 11. 8-9). Utsunomiya explains that"[ e ]ither the method of transfer
in the first embodiment or in the second embodiment can be used to produce
the electro-optical device in this [fourth] embodiment." (Col. 16, 11. 23-26.)
In particular, Utsunomiya explains that
the active matrix circuit including pixel regions can be formed
on an element-forming substrate, and a resin substrate can be
formed to remove the transfer-related substrate as in the first
embodiment [i.e., Figure 4B], or a resin layer can be formed on
the resin-forming layer and cured to then remove the transfer-
related substrate as in the second embodiment [i.e., Figure 4C].
(Col. 16, 11. 26-32.)
Figure 4B ofUtsunomiya illustrates a cross-sectional view for a first
embodiment of integrated circuit 100 (col. 15, 11. 15-16), which includes
silicon layer 200, wiring layer 201, and element-forming layer 3, with resin
substrate 6 formed under element-forming layer 3 (col. 15, 11. 18-23).
Likewise, Figure 4C of Utsunomiya illustrates a cross-sectional view for a
second embodiment of integrated circuit 100 (col. 15, 11. 37-38), which
includes silicon layer 200, wiring layer 201, and element-forming layer 3,
with resin substrate 6 formed on an upper surface of element-forming layer 3
(col. 15, 11. 38--43).
Because Figure 5 of Utsunomiya illustrates that electro-optical
(display) device 40 includes luminescent layers OELD in each pixel region
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G, and that such electro-optical (display) device 40 is formed using either
the first or second embodiments (i.e., Figure 4B-4C), electro-optical
(display) device 40 would necessarily be connected to element-forming
layer 3 and thus, Utsunomiya teachers the limitation "the pixel electrode
being electrically connected to the thin film transistor."
Appellant argues that
[t]he Official Action provides no articulated rationale or cogent
line of reasoning that would have led one skilled in the art to
predictably make the integrated circuit of Fig. 4B-4C
(presumably alleged to correspond to the claimed "thin film
transistor") electrically connected to a light emitting device of
Fig. 5 (presumably alleged to correspond to the claimed "pixel
electrode").
(App. Br. 8-9.)
Appellant further argues that "Utsunomiya does not describe that the
third embodiment (specifically describing a MOS transistor for use in static
RAM) can be used in the fourth embodiment (describing an electro-optical
device) as alleged" and "Utsunomiya fails to teach or suggest that a MOS
transistor included in an integrated circuit such as LSI is necessarily
electrically connected to a pixel electrode." (App. Br. 10; see also Reply
Br. 7-8.)
However, Utsunomiya expressly states that the "[ e ]ither the method of
transfer in the first embodiment or in the second embodiment can be used to
produce the electro-optical device in this [fourth] embodiment" (col. 16,
11. 23-26), and thus, electro-optical (display) device 40 would necessarily be
connected to element-forming layer 3. Furthermore, the rejection of claim
13 is not based upon combining the third embodiment of Utsunomiya with
the fourth embodiment of Utsunomiya (i.e., Figure 5).
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Therefore, we agree with the Examiner that the combination of
Kinstler, Utsunomiya, and Campbell would have rendered obvious
independent claim 13, which includes the limitation "the pixel electrode
being electrically connected to the thin film transistor."
We are further unpersuaded by Appellant's arguments (App. Br. 11;
see also Reply Br. 8-10) that the combination of Kinstler, Utsunomiya, and
Campbell would not have rendered obvious independent claim 13, which
includes the limitation "'a layer over and in contact with the adhesive
material."
The Examiner found that Figure 3 of Kinstler, which illustrates an
electroluminescent panel with a flexible magnetic panel, corresponds to the
limitation "a layer over and in contact with the adhesive material." (Final
Act. 6.) The Examiner concluded that "[i]t would have been obvious ... to
use the electroluminescent display taught by Utsunomiya in place of the
electroluminescent display (32) of Kinstler, resulting in a display device
having a magnetic sheet (30 in Fig. 3 of Kinstler) below and in contact with
an adhesive material." (Final Act. 7; see also Ans. 6.) We agree with the
Examiner.
Kinstler relates to an "illuminated vehicle display," in particular, "a
flexible electroluminescent panel removably attachable to the side of a
vehicle." (Col. 1, 11. 6-7.) Figures 3--4 of Kinstler illustrates
"electroluminescent panel 16 having a flexible magnetic panel 30 adhesively
attached to the bottom thereof and a flat flexible opaque panel 31 attached to
the top of the electroluminescent panel 32." (Col. 3, 11. 27-31.)
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As discussed previously, Figure 5 of Utsunomiya illustrates an active
matrix substrate for electro-optical device 40 (col. 4, 11. 6-8) produced using
a technique for transferring thin-film elements between substrates (col. 1,
11. 10-12), in particular, "peeling an element-forming layer from a heat-
resistant substrate to transfer the layer to another substrate" (col. 1, 11. 55-
56).
In the "Description of the Prior Art" section, Utsunomiya explains
that "[s]emiconductor devices produced with the use of the aforementioned
method of peeling include structures such as thin-film transistors and similar
element-forming layers, adhesive layers to which an adhesive has been
applied, and plastic substrates" (col. 1, 11. 36-39), however, "differences in
the coefficient of thermal expansion between the layers including the
adhesive can cause warping and cracks, possibly lowering the heat resistance
(reliability) of semiconductor application devices" (col. 1, 11. 46-49).
The combination of Kinstler and Utsunomiya is nothing more than
incorporating the known electro-optical device ofUtsunomiya (i.e.,
Figure 5) with the known illuminated vehicle display of Kinstler, to yield
predictable results. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Alternatively, combining Kinstler and Utsunomiya is no more than
the simple substitution of the known electro-optical device of Utsunomiya
(i.e., Figure 5) for the electroluminescent panel of Kinstler, to yield
predictable results. Id. at 417. Thus, we agree with the Examiner (Final
Act. 7; see also Ans. 6) that modifying Kinstler to include the electro-optical
device of Utsunomiya would have been obvious.
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Appellant argues that "[a]s the above technical problems of using
adhesive layers, Utsunomiya describes, for example, warping and cracks"
and "[a]s the solution of these technical problems, Utsunomiya discloses not
using the adhesive." (App. Br. 11.) Thus, Appellant argues,
if Utsunomiya were to be combined with Kinstler as alleged,
and then the adhesive applied to the device ofUtsunomiya, the
stated technical feature of Utsunomiya (i.e., not using the
adhesive) would be lost, and the overcome technical problem of
Utsunomiya (i.e., warping and cracks by the adhesive) would
not be solved.
(Id.; see also Reply Br. 8-10.)
However, Utsunomiya explains that the use of adhesive layers is
"somewhat inferior" due to warping and cracking after thermal processing.
(See col. 1, 11. 46-49.) This concern is not an issue in the Examiner's
combination ofUtsunomiya and Kinstler because the rejection is based upon
Utsunomiya's OELD being adhered to between Kinstler's panels 30, 31
after the OELD is constructed and after thermal processing is completed.
Therefore, we agree with the Examiner that the combination of
Kinstler, Utsunomiya, and Campbell would have rendered obvious
independent claim 13, which includes the limitation "a layer over and in
contact with the adhesive material."
Accordingly, we sustain the rejection of independent claim 13 under
35 U.S.C. § 103(a). Claims 14 and 15 depend from independent claim 13,
and Appellant has not presented any substantive arguments with respect to
these claims. Therefore, sustain the rejection of claims 14 and 15 under 35
U.S.C. § 103(a) for the same reasons discussed with respect to independent
claim 13.
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Claims 7-9
We are unpersuaded by Appellant's arguments (App. Br. 12-15; see
also Reply Br. 8-9) that the combination of Kinstler, Utsunomiya, and
Campbell would not have rendered obvious independent claim 7, which
includes the limitation "light emitting element over the insulating film."
The Examiner found that Figure 5 of Utsunomiya, which incorporates
Figure 4C of Utsunomiya, such that Figure 4C illustrates element-forming
layer (i.e., thin-film transistors Tl to T4 from Figure 5) over interlayer
insulating film, corresponds to the limitation "light emitting element are over
the insulating film." (Final Act. 10.) We agree with the Examiner.
As discussed previously, Figure 5 of Utsunomiya illustrates electro-
optical (display) device 40 (col. 6, 11. 1-2) including an OELD in each pixel
region G (col. 16, 11. 3-5) and electro-optical (display) device 40 formed
using the second embodiment, as illustrated in Figure 4C (col. 16, 11. 26-32).
In particular, Utsunomiya explains that "the method of transfer ... in the
second embodiment can be used to produce the electro-optical device in this
[fourth] embodiment." (Col. 16, 11. 23-26.) Utsunomiya further explains
that wiring layer 201 includes interlayer insulating film 214 (col. 15, 11. 38-
40, 24--28), such that interlayer insulating film 214 is in direct contact with
resin substrate 6 (Fig. 4C). Because Figure 5 of Utsunomiya illustrates
electro-optical (display) device 40, such electro-optical (display) device 40
being formed using the second embodiment (i.e., Figure 4C), and Figure 4C
of Utsunomiya illustrates insulating film 214 in direct contact with resin
substrate 6, Utsunomiya teaches the limitation "light emitting element over
the insulating film."
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Appellant argues that "because alleged element-forming layer 3 is
disclosed as part of an integrated circuit 100 including a memory cell array
101 and a transistor and not a light emitting element as claimed, the Patent
Office has failed to establish such spatial relationship." (App. Br. 14.)
However, as discussed previously, Utsunomiya expressly states that "the
method of transfer ... in the second embodiment can be used to produce the
electro-optical device in this [fourth] embodiment" (col. 16, 11. 23-26), and
thus, electro-optical (display) device 40 would necessarily be connected to
element-forming layer 3.
Therefore, we agree with the Examiner that the combination of
Kinstler, Utsunomiya, and Campbell would have rendered obvious
independent claim 7, which includes the limitation "light emitting element
over the insulating film."
Accordingly, we sustain the rejection of independent claim 7 under 35
U.S.C. § 103(a). Claims 8 and 9 depend from independent claim 7, and
Appellant has not presented any substantive arguments with respect to these
claims. Therefore, we likewise sustain the rejection of claims 8 and 9 under
35 U.S.C. § 103(a) for the same reasons discussed with respect to
independent claim 7.
§ 103 Rejection-Kinstler, Utsunomiya, Campbell, and Ishii
We are persuaded by Appellant's arguments (Reply Br. 10-11) that
the Examiner has not established that the combination of Kinstler,
Utsunomiya, Campbell, and Ishii would have rendered obvious independent
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claim 10, which includes the limitation "the pixel electrode being electrically
connected to the thin film transistor."
The Examiner found that the electroluminescent panel of Kinstler, as
illustrated in Figure 4, corresponds to the claimed "substrate." (Final
Act. 14.) In particular, the Examiner found that the claimed "substrate" is
"an inherent part of the electroluminescent panel 32 in Fig. 4." (Id.) We do
not agree.
As discussed previously, Figures 3--4 of Kinstler illustrate
"electroluminescent panel 16 having a flexible magnetic panel 30 adhesively
attached to the bottom thereof and a flat flexible opaque panel 31 attached to
the top of the electroluminescent panel 32." (Col. 3, 11. 27-31.) Although
the Examiner cited to electroluminescent panel 32 of Kinstler, the Examiner
has not established that the claimed "substrate" is necessarily present in
electroluminescent panel 32 of Kinstler. See In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999).
Even if the Examiner is correct that electroluminescent panel 32 of
Kinstler inherently includes a "substrate," the Examiner has not indicated the
location of such "substrate" (e.g., facing either flat flexible opaque panel 31
or flexible magnetic panel 30) such that the remaining claim limitations of
"a magnetic sheet over the substrate" and "an insulating film between the
substrate and the magnetic sheet" are satisfied.
Thus, we are persuaded by Appellant's arguments that the burden of
establishing inherency "has not been met with respect to there necessarily
being a 'substrate' as part of panel 32" and
it is abundantly clear from Fig. 4 [of Kinstler] that even if such
a substrate were present in panel 32, the illustrated magnetic
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sheet 30 is shown below, and not above any such substrate, and
the relative location of any such substrate relative to other
claimed features has not been established.
(Reply Br. 11.)
Therefore, the Examiner has not established that the combination of
Kinstler, Utsunomiya, Campbell, and Ishii would have rendered obvious
independent claim 10, which includes the limitation "a substrate."
Accordingly, we do not sustain the rejection of independent claim 10
under 35 U.S.C. § 103(a). Claims 11 and 12 depend from independent
claim 10. We do not sustain the rejection of claims 11 and 12 under
35 U.S.C. § 103(a) for the same reasons discussed with respect to
independent claim 10.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection: claim 10 is rejected
under 35 U.S.C. § 103(a) as unpatentable over Kinstler, Utsunomiya, and
Campbell.
Figure 5 ofUtsunomiya illustrates electro-optical (display) device 40
(col. 4, 11. 6---8) including an OELD in each pixel region G (col. 16, 11. 3-5).
The OELD schematically depicted in Figure 5 may be combined with the
TFT circuit of either the Figure 4B or 4C embodiment (col. 16, 11. 23-31 ).
When Utsunomiya's electro-optical display 40 of Figure 5 is built on
Utsunomiya's first embodiment, as illustrated in Figure 4B (hereinafter
referred to together as "Utsunomiya's OELD device"), the combination of
Utsunomiya, Kinsler, and Campbell renders claim 10 obvious.
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As discussed supra, Figures 3--4 of Kinstler illustrate
"electroluminescent panel 16 having a flexible magnetic panel 30 adhesively
attached to the bottom thereof and a flat flexible opaque [stenciled] panel 31
attached to the top of the electroluminescent panel 32." (Col. 3, 11. 27-31.)
Accordingly, Kinstler's flat flexible opaque stenciled panel 31 corresponds
to the claimed "substrate," Kinstler's flexible magnetic panel 30 corresponds
to the claimed "magnetic sheet over the substrate," and the adhesive
attachment between flexible magnetic panel 30 and electroluminescent
panel 32 corresponds to the claimed "adhesive material."
For at least the reasons to combine proposed by the Examiner (e.g.,
Final Act. 17; see also id. at 12), it would have been obvious to one of
ordinary skill in the art to have specifically employed as Kinstler' s
electroluminescent panel 32, Utsunomiya's OELD device. More
specifically, claim 10 reads on the above combination when Utsunomiya's
OELD device is sandwiched in between Kinstler' s flexible magnetic
sheet 30 and stenciled substrate 31 such that Utsunomiya's resin transfer
substrate 6 is adhesively attached to Kinstler's magnetic sheet 30, and the
second electrode of the OELD elements are oriented in the direction of the
stenciled substrate 31 for light emission therethrough.
When Utsunomiya's OELD device is oriented in this manner, claim
10' s recited "insulating film between the substrate and the magnetic sheet"
reads on an insulating film of the OELD device that is neither depicted, nor
discussed by Utsunomiya, but which is either inherently or implicitly present
in the OELD device, or is at least obvious to add to the OELD device.
When the invention consists of an improvement on an old
machine the drawing must when possible exhibit, in one or
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more views, the improved portion itself, disconnected from the
old structure, and also in another view, so much only of the old
structure as will suffice to show the connection of the invention
therewith.
37 C.F.R. § l.83(b); accord MPEP § 608.02(b).
More specifically, Figure 5 ofUtsunomiya depicts the OELD element
being electrically connected to one of a source/ drain region of TFT 3. As
such, one of ordinary skill in the art reviewing the schematic drawing of
Figure 5 in combination with the first TFT embodiment of Figure 4B would
understand that the first electrode of the recited light emitting element either
corresponds to (1) the source/drain wiring layer 215 of Figure 4B or (2)
possibly a separate wiring layer trace disposed over wiring layer 215 and
electrically connected thereto. The OELD light emitting layer would be
formed over the first electrode. The second electrode-which Figure 5
depicts being connected to ground-would be formed on top of the light
emitting layer.
One of ordinary skill in the art also would understand that
Utsunomiya's OELD device would further include an additional insulating
film or passivating layer over the second electrode. Although not depicted
in the schematic drawing of Figure 5, one of ordinary skill would understand
this additional insulating film to be inherently, implicitly, or obviously
present because a semiconductor device's overlying conductive wiring
layers (such as Utsunomiya' s disclosed second electrode) conventionally are
subsequently coated with an insulating film to protect the device from the
environment and to prevent the conductive wiring layers from shorting. The
fact that such an undepicted insulating film would, in fact, be included over
the OELD element's depicted second electrode is evidenced by the fact that
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Utsunomiya does depict in the non-schematic structural drawing of Figure
4 B, a protective insulating film 202 formed over metal wiring layer 215 "for
protecting [wiring layer 215 of] the wiring layer 201." (E.g., col. 15, 11. 25-
33.)
Turning to the remainder of the claim limitations, Figure 4B of
Utsunomiya illustrates a cross-sectional view for a second embodiment of
integrated circuit 100 (col. 15, 11. 14--15) such that "[a] circuit is formed in
the wiring layer 201 by means of a well region 210, semiconductor region
doped with impurities and forming a source or drain, a gate insulating film
212, a gate wiring film 213, an interlayer insulating film 214, and a metal
wiring layer 215" (col. 15, 11. 24--28). Utsunomiya further refers to such
circuit as a thin-film transistor. (Col. 15, 11. 28-30.) Figure 4B of
Utsunomiya also illustrates resin substrate 6 formed under element-forming
layer 3. (Col. 15, 11. 18-20.)
Accordingly, wiring layer 201, well region 210, gate insulating
film 212, gate wiring film 213, and metal wiring layer 215 ofUtsunomiya
collectively correspond to the claimed "thin film transistor." The OELD in
each pixel region G ofUtsunomiya, as illustrated in Figure 5, corresponds to
the claimed "light emitting element." And resin substrate 6 of Utsunomiya
corresponds to the claimed "a layer ... comprising a material selected from
the group consisting of strontium oxide, tin oxide, fluoropolymer and
tungsten."
Campbell explains that a common refrigerator magnet "typically
contain[s] magnetic strontium ferrite (SrFe12019) particles dispersed in the
elastomer Hypalon." (P. 1205, para. 3.) Accordingly, Campbell teaches the
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limitation "wherein the magnetic sheet comprises a material selected from
the group consisting of ... strontium ferrite ... "
Again, combining Kinstler and Utsunomiya is no more than the
simple substitution of the known electro-optical device ofUtsunomiya (i.e.,
Figures 4B and 5) for the known electroluminescent panel of Kinstler, to
yield predictable results. See KSR, 550 U.S. at 417. Furthermore,
combining Campbell with Kinstler and Utsunomiya merely entails the
simple substitution of the known strontium ferrite magnet of Campbell for
the known flexible magnetic panel of Kinstler, to yield predictable results.
Id.
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), then, we reject
independent claim 10 as unpatentable over Kinstler, Utsunomiya, and
Campbell under 35 U.S.C. § 103(a).
Because the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination, we have not reviewed dependent claims
11 and 12 to the extent necessary to determine whether the combination of
Kinstler, Utsunomiya, and Campbell renders any of these claims obvious.
We leave it to the Examiner to determine the appropriateness of any further
rejections of dependent claims 11 and 12 under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a "new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Appeal2016-000747
Reexamination Control 90/020,044
Patent 7,741,642 B2
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
DECISION
The Examiner's decision rejecting claims 7-9 and 13-15 is affirmed.
The Examiner's decision rejecting claims 10-12 is reversed.
A new ground of rejection has been entered under 37 C.F.R.
§ 41.50(b) for claim 10, rejected under 35 U.S.C. § 103(a) as unpatentable
over Kinstler, Utsunomiya, and Campbell.
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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