Ex Parte Atallah

Patent Trial and Appeal Board

Mar 21, 2016

12889885 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/889,885 09/24/2010
22879 7590 03/23/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jean G. Atallah
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.
82263986 7186
EXAMINER
CHW ASZ, JADE R
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN G. AT ALLAH
Appeal2014-005044
Application 12/889,885
Technology Center 2800
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 seeks our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a film, a display device with
the film attached thereto, and a method for attaching the film to a display
device, wherein the film includes adhesive dots arranged on its rear surface
1 The Appellant states that "Hewlett-Packard Development Company, LP" is
the real party in interest (Appeal Brief filed December 1 7, 2013, hereinafter
"Appeal Br.," 2).
Appeal2014-005044
Application 12/889,885
to create a channel that permits fluid to flow parallel to the film and the
display device during the coupling of the film to the display device to reduce
the formation of fluid bubbles (Specification, hereinafter "Spec," Abst.;
i-fi-f 11, 14; see also Figs. 1--4). Representative claim 1 is reproduced from
page 15 of the Appeal Brief (Claims App.), with the key limitation at issue
indicated in italicized text, as follows:
1. A film comprising:
a rear surface to couple to a screen of a display
device; and
adhesive dots attached onto the rear surface of the
film at a distance from one another;
wherein fluid between the rear surface of the film
and the screen of the display device travels a channel
parallel to the film and the screen to exit at an outer edge
of the film in response to the rear surf ace of the film
coupling to the screen.
THE REJECTIONS
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Vetrovec et al. ("Vetrovec")2 and Ishiwatari et al.
("Ishiwatari"). 3 (Examiner's Answer mailed January 31, 2014, hereinafter
"Ans.," at 2; Final Office Action entered August 29, 2013, hereinafter "Final
Act.," 2-11.)
2 US 7,413,787 B2, issued August 19, 2008.
3 US 7,947,366 B2, issued May 24, 2011 (based on Application 11/687,841
filed March 19, 2007).
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Application 12/889,885
DISCUSSION
We affirm these rejections for essentially the findings and reasons set
forth in the Examiner's Answer and the Final Office Action. Nevertheless,
we add the following comments primarily for emphasis.
In arguing for reversal, the Appellant argues independent claims 1, 9,
and 16 together, focusing only on claim 1. Therefore, consistent with 37
C.F.R. § 41.37(c)(l)(iv), we confine our discussion to representative claim
1.
The Examiner found that Vetrovec describes a film comprising a rear
surface with pressure sensitive adhesive dots attached thereto at a distance
from one another (Final Act. at 2-3). Additionally, the Examiner found that
"although Vetrovec et al. does not explicitly disclose that the fluid travels
parallel to the two surfaces, such an action is implicitly disclosed during the
application of the film onto the display device" (Ans. 3). Based on these
findings, the Examiner concluded upon application of the film of Vetrovec,
"air will escape along a path parallel to the display device and the film out of
the side portions of the film" (id.).
Recognizing Vetrovec fails to explicitly disclose the fluid flow travels
a channel parallel to the film and the screen, the Examiner further found
Ishiwatari describes "an adhesive film comprising a plurality of holes
located around the periphery of the substrate such that a fluid can travel
parallel to two surfaces" (Final Act. 3). Based on this, the Examiner
concluded that "[i]t would have been obvious to a person of ordinary skill in
the art at the time the invention was made to modify the openings in the
adhesive of Vetrovec et al., as taught by Ishiwatari et al., in order to allow
fluid to escape through multiple paths" (id.).
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Application 12/889,885
The Appellant contends that "Vetrovec states that the microscopic
holes ... are installed perpendicular to the surface ... that can allow air to
be transported in a perpendicular fashion" through the film (Appeal Br. 7).
Additionally, with respect to the teachings of Ishiwatari, the Appellant
argues, inter alia, Ishiwatari is non-analogous art because it is neither from
the same field of endeavor nor is it "reasonably pertinent to the particular
problem with which the inventor was involved" (Br. 8-9).
We have fully considered the Appellant's arguments; however we
find the arguments do not reveal any reversible error in the Examiner's
factual findings, analysis and conclusions. In relying upon the theory of
inherency, "the [E]xaminer must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
The Examiner satisfied that initial burden here. As found by the
Examiner (Final Act. 2), Vetrovec discloses a film with adhesive dots
attached to its rear surface at a distance from one another, wherein the
adhesive dots may be applied "discontinuous[ly] ... in regular, irregular or
entirely random patterns" (col. 1, 11. 48--49, 56; col. 6, 11. 14--24). In view of
this teaching, we agree with the Examiner that the film with adhesive dots in
the disclosed pattern will necessarily form at least one channel as claimed,
the channel openings being present at the outer edge of the film to permit air
bubbles to escape.
Additionally, as found by the Examiner (id.), Vetrovec discloses or
suggests air will travel a channel between the rear surface and a display
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Application 12/889,885
surface and is thus vented during the coupling of the film to the display
surface (col. 1, 11. 48--49, 56; col 5, 11. 3-5, Fig. 4).
Therefore, we find that the Examiner has proffered sufficient technical
reasoning to support the conclusion that, during the coupling of the film to
the display surface, air will necessarily and implicitly travel[] a channel
parallel to the film and the screen to exit at an outer edge of the film" as
recited by the claims. In so concluding, we note that the Appellant has not
produced additional factual evidence rebutting the Examiner's findings and
conclusions. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (Once the
examiner presents evidence or reasoning tending to show inherency, the
burden of production shifts to the Appellant.) Additionally, we find the
Examiner has found this limitation at issue is disclosed or suggested in the
prior art reference, and the Appellant's mere assertions to the contrary are
insufficient to identify a reversible error. See Ex parte Belinne, No 2009-
004693, 2009 WL 2477843 (BPAI 2009) (informative) ("[W]e find that the
Examiner has made extensive specific fact finding ... with respect to each
of the argued claims. Appellant's argument ... repeatedly restates elements
of the claim language and simply argues that the elements are missing from
the reference. However, Appellant do not present any arguments to explain
why the Examiner's explicit fact finding is in error"). See also 37 C.F.R. §
41.37(c)(l)(vii) (nothing that an argument that merely points out what a
claim recites is unpersuasive).
In response to the Examiner's position that air implicitly escapes
through parallel channels at the edge of the film as required by the claims,
the Appellant contends that "Vetrovec describes the use of microscopic
holes in the surface of the film to allow air to escape through perforations on
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Application 12/889,885
the surface of the film" and, therefore, Vetrovec "does not disclose the air
escaping through parallel channels out the edge of the film" (Reply Brief,
filed March 6, 2014, hereinafter Reply Br., 3). While Vetrovek discloses
using microscopic holes in a perpendicular alignment, Vetrovek also
discloses embodiments with blocked holes and specifically discloses "the
pattern for microscopic holes 27 can be uncoordinated with the patterns for
adhesive 24, and can be regular, irregular, or random" (col 6, 11. 29-30, 44--
46). Moreover, we find that the claims do not foreclose additional avenues
for venting of fluid, such as the perpendicular microscopic holes as taught by
Vetrovek, and thus are unpersuaded by these arguments. Additionally, while
parallel flow is not specifically disclosed by Vetrovek, a reference may be
relied upon for all that it would have reasonably suggested to one having
ordinary skill the art. Merck & Co. v. Biocraft Labs., Inc., 87 4 F .2d 804,
807 (Fed. Cir. 1989) ("the mere absence from the prior art of a teaching or a
limitation recited in the patent at issue is insufficient for a conclusion of
no no bviousness").
In so holding, we need not reach the Appellant's arguments with
respect to Ishiwatari, including whether Ishiwatari is non-analogous art,
because we find the Examiner's findings, analysis and conclusions with
respect to Vetrovek alone are dispositive of this Appeal as to claim 1.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 1-20 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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