Ex Parte Accardi et al

Patent Trial and Appeal Board

Oct 12, 2017

13713576 (P.T.A.B. Oct. 12, 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.
13/713,576 12/13/2012 Corrado Accardi 1CT0662US01/852763.514 6078
38106 7590 10/16/2017
Need TP T aw Orniin T T P/NT fFP ORTOTNATTNOT
EXAMINER
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
WHITE, SADIE
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
10/16/2017 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):
Patentlnfo @ SeedIP. com
US PTOe Action @ S eedIP .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORRADO ACCARDI, STELLA LOVERSO,
SEBASTIANO RAVESI, and NOEMI GRAZIANA SPARTA
Appeal 2016-008345
Application lS/713,5761
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—6 and 13—16. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The Applicant and real party in interest is identified as Appellant,
STMicroelectronics S.R.L. App. Br. 2.
2 This decision makes reference to the Specification filed Dec. 13, 2012
(“Spec.”), the Final Office Action dated July 13, 2015 (“Final Act.”), the
Appeal Brief filed Dec. 30, 2015 (“App. Br.”), the Examiner’s Answer dated
July 11, 2016 (“Ans.”), and the Reply Brief filed Sept. 12, 2016 (“Reply
Br.”).
Appeal 2016-008345
Application 13/713,576
The subject matter of this appeal relates to an encapsulated flexible
electronic device such as a photovoltaic cell or a touch screen to be used in
flexible smart systems, comprising at least two cover sheets obtained by a
dry photoresist film. Spec. 1:5—11. Claim 1 is illustrative (disputed
elements italicized):
1. An encapsulated flexible electronic device comprising:
a flexible electronic device; and
a protective coating layer, a first cover sheet, and a second
cover sheet on the flexible electronic device, each of the
protective coating layer, first cover sheet, and second cover sheet
being a dry photoresist film having a pattern, said first and
second cover sheets being arranged on opposite surfaces of said
flexible electronic device.
App. Br. 19 (Claims Appendix).
The Examiner maintains, and Appellant appeals, the following
rejections:
1. Claims 1, 3, and 6 under 35 U.S.C. § 102(b) as anticipated by
Thaysen;
2. Claim 2 under 35 U.S.C. § 102(b) as anticipated by Thaysen as
evidenced by Roman;
3. Claims 1, 3—6, 13, 15, and 16 under 35 U.S.C. § 102(b) as
anticipated by Colvin as evidenced by Microchem; and
4. Claims 2 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Colvin in view of Ouchi.
Ans. 3—14; App. Br. 4.3
3 The rejection of claims 2 and 14 under 35 U.S.C. § 112, second paragraph,
stands withdrawn by the Examiner. Final Act. 2—3; Ans. 14.
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Application 13/713,576
OPINION
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejections for the reasons
provided in the Final Action and Answer. We add the following primarily
for emphasis. We also include a new ground of rejection.
Rejections 1 and 2: Anticipation by Thaysen
It is the Examiner’s position that claims 1,3, and 6 are anticipated by
Thaysen and that claim 2 is anticipated by Thaysen as evidenced by Roman
for the reasons stated on pages 3—5 of the Final Action.
In the Appeal Brief, Appellant argues the subject matter of claims 1,
3, and 6 as a group. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims
3 and 6 will stand or fall together with claim 1 on which they depend.
Appellant contends that the rejections are in error because “Thaysen
fails to teach a ‘dry photoresist film’, as recited in the claims.” App. Br. 13,
16. According to Appellant, “dry photoresist film” is a term of art that one
skilled in the art would understand to mean “a film of photoresist material
that is initially in a dry form and remains in the same dry form before and
after it is attached to a component of an electronic device.” Id. at 14.
Appellant relies upon the separate listing of photoresists in Appendix B and
the description of a dry film photoresist as starting off as a dry, sheet-like
material in Appendix C to show that it is a term of art. Id. The photoresist
disclosed by Thaysen is distinguished by Appellant on the basis that it is a
liquid photoresist that is originally wet and then dry in the final product. Id.
at 13—14 (citing Appendix A identifying SU-8 disclosed in Thaysen as a
liquid photoresist). Appellant further asserts that a dry photoresist has a
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Application 13/713,576
different chemical structure than the wet photoresists SU-8 and poly(methyl
methacrylate) (PMMA) because Appendix C evidences that “dry film
photoresists can replace ‘some soft lithographic materials like PDMS,
PMMA, etc.’” Id. at 14 (quoting Appendix C). With respect to claim 2,
Appellant further asserts that Roman does not cure this deficiency. Id. at 16.
The Examiner finds that the SU-8 photoresist layers of Thaysen are in
the form of dry films in the final device and therefore disclose a “dry
photoresist film” as required by claim 1. Ans. 16. The Examiner further
responds that patentability of a claimed product is not dependent upon its
method of production or formation and that Appellant has not provided
evidence that the chemical composition or structure of the photoresist
material of Thaysen is different from the chemical composition or structure
of the “dry photoresist film” recited in claim 1. Id.
In the Reply Brief, Appellant contends that the Examiner’s
interpretation of “dry photoresist film” constitutes reversible error because
the Examiner provides “zero evidence” that one skilled in the art would
understand the term “dry photoresist film” does not include a structure
formed by the liquid photoresists of the prior art. Reply Br. 2—3.
We are not persuaded of reversible error in the Examiner’s rejection
of claims 1 and 2 as anticipated by Thaysen based on the cited record on
appeal. Claim 1 is directed to a device. As such, the limitations in claim 1
directed to the identity of the starting material and processing conditions are
only meaningful to the extent they serve to differentiate the claimed device
structure from the prior art device structure. See Burr v. Duryee, 68 U.S.
531, 570 (1863) (“A machine is a concrete thing, consisting of parts, or of
certain devices and combination of devices.”); In re Gardiner, 171 F.2d 313,
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Application 13/713,576
315—16 (CCPA 1948) (“It is trite to state that the patentability of apparatus
claims must be shown in the structure claimed and not merely upon a use,
function, or result thereof.”); In re Casey, 370 F.2d 576, 580 (CCPA 1967)
(“The claims in issue call for an apparatus or machine, viz. a tape dispensing
machine. The manner or method in which such machine is to be utilized is
not germane to the issue of patentability of the machine itself.”); In re Hack,
245 F.2d 246, 248 (CCPA 1957) (“These cases are merely expressive of the
principle that the grant of a patent on a composition or machine cannot be
predicated on a new use of that machine or composition.”).
Appellant has not provided evidence sufficient to show a patentable
difference in structure between the device of claim 1 and that suggested by
the prior art. Although Appellant’s evidence separately listing commercially
available dry film photoresist and liquid photoresist products may
distinguish the starting materials used in forming the claimed device, the
evidence does not adequately distinguish dry film photoresists and liquid
photoresists in a formed device, i.e., Thaysen’s device which has a dry
photoresist film that was made using an initially liquid photoresist is
patentably indistinguishable from the claimed device (and from the disclosed
device made from a dry film photoresist). Moreover, Appellant
acknowledges that the two are interchangeable. App. Br. 14 (“dry film
photoresists can replace ‘some soft lithographic materials like PDMS,
PMMA, etc.’”) (quoting Appendix C). Accordingly, we affirm the stated
rejections of claims 1—3 and 6 as anticipated by Thaysen alone or as
evidenced by Roman.
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Application 13/713,576
New Ground of Rejection Under 35 U.S.C. § 103(a)
To the extent that dry film photoresist is a term of art that represents a
structural difference in a device compared to a device formed with a liquid
photoresist as Appellant argues, we enter a new ground of rejection of
claims 1,3, and 6 under 35 U.S.C. § 103(a) over Thaysen as applied by the
Examiner (Final Act. 3 4) in view of Appellant’s evidence and admission
that dry film photoresists can replace known liquid photoresist materials
such as PMMA. App. Br. 14; Appendix C. “If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability.”
KSRInt! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
The operative question in such an obviousness analysis is “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. The Supreme Court has
recognized that “when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
Id. at 416 (citing United States v. Adams, 383 U.S. 39, 50—51 (1966)).
Based on the cited record in this appeal, we find the substitution of a
dry film photoresist for Thaysen’s liquid photoresist in the formation of the
claimed device would have been a predictable variation as evidenced by
Appellant’s Appendix C (http://memslibrary.com/guest-articles/51-
materials/66-dry-fihn-photoresist-for-microfluidics last accessed Sept. 22,
2015).
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Rejection 3: Anticipation by Colvin
It is the Examiner’s position that claims 1, 3—6, 13, 15, and 16 are
anticipated by Colvin as evidenced by Microchem for the reasons stated on
pages 5—13 of the Final Action.
In the Appeal Brief, Appellant argues the subject matter of claims 1,
3—6, 13, 15, and 16 as a group. App. Br. 16—17. In accordance with 37
C.F.R. § 41.37(c)(l)(iv), claims 3—6, 13, 15, and 16 will stand or fall
together with claim 1.
Appellant argues that the Examiner erred because “Colvin fails to
teach or suggest that the material forming the encapsulating waveguide
material 12’ is initially in a dry form.” App. Br. 16. Appellant also argues
that the cited art fails to disclose “a flexible electronic device” and that the
Examiner’s finding that all materials have some degree of flexibility is not
supported by evidence. Id. at 17.
The Examiner responds by finding that “Colvin is ‘flexible,’ at least
because it comprises flexible materials (e.g. PMMA and thin layers of
glass).” Ans. 18. The Examiner also finds that the Specification does not
provide any special definition of the term “flexible” or how a material is
determined to be “flexible.” Id.
In the Reply Brief, Appellant contends that the Examiner’s
proposition that all materials have some degree of flexibility is unfounded
because it would encompass a granite slab which no person of ordinary skill
in the art would interpret as “flexible.” Reply Br. 3. Appellant also argues
that Colvin’s disclosure of an LED which functions to display light does not
disclose a “touch screen” as recited in dependent claim 5.
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Application 13/713,576
At the outset, we note that Appellant did not separately argue claim 5
in the Appeal Brief nor did Appellant argue in its Appeal Brief that an LED
does not function as the “touch screen” recited in claim 5. The sweeping
statement in the Appeal Brief that “[cjlaims 3-6 depend from claim 1 and are
believed to be allowable for the same reasons as discussed above for claim
1, as well as for the specific limitations recited in those claims” is
insufficient to state an issue for appeal. See 37 C.F.R. § 41.37(c)(iv)
(requiring, for each argument, “the basis therefor, with citations of the
statutes, regulations, authorities, and parts of the record relied on” and
further requiring that the “arguments shall explain why the examiner erred as
to each ground of rejection”); see also In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Appellant has not proffered a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. Therefore, we will not consider this new and untimely argument in
our assessment of the Examiner’s § 102 rejection based on Colvin.
37 C.F.R. §§41.37,41.41.
Appellant’s argument that the Examiner reversibly erred in rejecting
claim 1 as anticipated by Colvin because it fails to disclose a photoresist that
is initially in dry form, is unpersuasive for the same reasons discussed above
in connection with the rejection over Thaysen. We also are not persuaded
that the Examiner reversibly erred in finding that Colvin discloses a “flexible
electronic device” as recited in claim 1. Appellant’s analogy to granite is
inapposite because it does not rebut the Examiner’s finding that the materials
disclosed by Colvin, namely PMMA and thin layers of glass, are flexible
(Ans. 18). Based on the cited record in this appeal, we affirm the stated
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Application 13/713,576
rejection of claims 1, 3—6, 13, 15, and 16 as anticipated by Colvin as
evidenced by Microchem.
Rejection 4: Obviousness over Colvin and Ouchi
It is the Examiner’s position that Colvin and Ouchi suggest the subject
matter of claims 2 and 14 for the reasons stated on pages 13—14 of the Final
Action.
Appellant argues the subject matter of claims 2 and 14 as a group. In
accordance with 37 C.F.R. § 41.37(c)(l)(iv), claim 14 will stand or fall
together with claim 2.
In the Appeal Brief, Appellant argues that “Ouchi is silent regarding a
‘dry photoresist film’” and does not remedy the deficiencies of Colvin,
Microchem, and Roman discussed in connection with claims 1 and 13 and
therefore claims 2 and 14 are allowable for the same reasons. App. Br. 18.
Because we find that Colvin is not deficient in terms of disclosing the
recited “dry photoresist film” for the reasons discussed above, we likewise
affirm the Examiner’s decision to reject claims 2 and 14 under 35 U.S.C.
§ 103(a) over Colvin and Ouchi.
DECISION
For the foregoing reasons, we affirm all of the Examiner’s rejections
under 35 U.S.C. §§ 102(b) and 103(a) and enter a new ground of rejection of
claims 1,3, and 6 under 35 U.S.C. § 103(a) over Thaysen as evidenced by
Appendix C.
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Application 13/713,576
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal 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 proceeding
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. . . .
ORDER
AFFIRMED & NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, $ 41.50(b)
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