Ex Parte Do

Board of Patent Appeals and Interferences

Oct 27, 2009

10404348 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte MYUNG-HO DO ________________ Appeal 2009-000373 Application 10/404,348 Technology Center 2800 ________________ Decided: October 27, 2009 ________________ Before TERRY J. OWENS, CATHERINE Q. TIMM, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-000373 Application 10/404,348 2 A. Introduction1 Myung-Ho Do (“Do”) timely appeals under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-21, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. The subject matter on appeal relates to improved methods of making liquid crystal display (“LCD”) devices having a “black matrix” light shield. The black matrix is typically arranged as a frame around the liquid crystal display, covering items such as thin film transistors and electrical leads, as well as preventing light leakage at the edge of the cell. According to the 348 Specification, prior art fabrication methods, as shown in Figure 3, reproduced below {Fig. 3 shows a prior art method of scribing and cutting an LCD} 1 Application 10/404,348, Manufacturing Method for Liquid Crystal Display Device, filed 2 April 2003, claiming the benefit of an application filed in the Republic of Korea on 16 December 2002. The specification is referred to as the “348 Specification,” and is cited as “Spec.” The real party in interest is listed as LG Philips LCD Co., Ltd. (Appeal Brief, filed 24 May 2007 (“Br.”), 2.) 2 Office action mailed 11 April 2006 (“Final Rejection”; cited as “FR”). Appeal 2009-000373 Application 10/404,348 3 scribe and cut the substrates at line 42, resulting in cutting through the black matrix 40. The 348 Specification teaches that, when the black matrix comprises a metal, such as chromium, the matrix can rust when exposed to the atmosphere, resulting in degraded performance. The claimed invention involves scribing the substrates outside of the black matrix, as shown in Figure 5, which is reproduced below: {Figure 5 shows where the LCD is scribed in the claimed process} Thus, substrate 200 bearing black matrix 240 is cut beyond the black matrix, thereby avoiding a break in the black matrix material. In further embodiments, lower substrate 100, which typically carries thin film transistors and circuit leads (not shown) is larger than the upper substrate. Representative independent claims 1 and 17 are reproduced from the Claims Appendix to the Principal Brief on Appeal: 1. A method for manufacturing a liquid crystal display device, comprising: preparing first and second substrates having a plurality of cells, the first substrate having a black matrix and a color filter and the second substrate having a thin film transistor; forming first and second alignment layers on the first and second substrates; Appeal 2009-000373 Application 10/404,348 4 forming a seal pattern on one of the first and second substrates after forming the first and second alignment layers; forming spacers onto one of the first and second substrates within an area defined by the seal pattern; attaching the first and second substrates after forming the spacers; forming a first scribing line on the first substrate at an area outside of the black matrix so as not to corrode the black matrix; forming a second scribing line of the second substrate; and cutting the attached first and second substrates into a plurality of individual liquid crystal cells along the first and second scribing lines such that the first attached substrate is cut to a size smaller than the second attached substrate. (Claims App., Br. 30; paragraphing, indentation, and emphasis added.) 17. A method for manufacturing a liquid crystal display panel, comprising: forming a black matrix on a first region of an interior surface of a first substrate; forming a seal pattern on along a perimeter region of an interior surface of a second substrate; dropping liquid crystal material within the perimeter region of the second substrate; attaching the first and second substrates after dropping the liquid crystal material; forming a first scribing line on an exterior surface of the first substrate by a first distance from the first region and forming a second scribing line on an exterior surface of the second substrate by a second distance so as not to corrode the black matrix, Appeal 2009-000373 Application 10/404,348 5 the first distance is different than the second distance; and separating the attached first and second substrates into a liquid crystal cell along the first and second scribing lines. (Claims App., Br. 33; paragraphing and emphasis added.) Claim 7 differs from claim 17 in the way the cell is prepared for the introduction of the liquid crystal and the way the liquid crystal is introduced to the cell; but, as Do does not dispute these limitations, the details are not material in this appeal. Claim 7 further differs from claim 17 by the recitation that the second scribing line is “by a second distance from the first region” (emphasis added). The Examiner has maintained the following grounds of rejection:3 A. Claims 1-5 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue,4 Kodera,5 Saito,6 and Mishima.7 B. Claim 6 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, Mishima, and Grace.8 3 Examiner’s Answer mailed 17 October 2007. (“Ans.”). 4 Satoshi Inoue, Active Matrix Liquid Crystal Display Device having a Black Matrix and Protective Film in Self Alignment, U.S. Patent 6,275,273 B1 (14 August 2001). 5 Takumi Kodera et al., Method for Producing a Liquid Crystal Panel, U.S. Patent 6,195,149 B1 (27 February 2001). 6 Katsutoshi Saito et al., Liquid Crystal Display Device with Optical Shield Film, U.S. Patent 6,304,308 B1 (16 October 2001). 7 Yasuyuki Mishima and Shunsuke Morishita, Liquid Crystal Display Device, U.S. Patent 6,583,844 B1 (24 June 2003), based on an application filed 2 December 1999. Appeal 2009-000373 Application 10/404,348 6 C. Claims 7-11 and 13-15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, of Kodera, Saito, Mishima, and Choo.9 D. Claim 12 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, Mishima, Choo, and Holmberg.10 E. Claim 16 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, Mishima, Choo, and Park.11 F. Claims 17-19 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Tashiro12 and Kodera. G. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Tashiro, Kodera, and Holmberg. 8 Anthony J. Grace et al., Method of Making a Hybrid Display Device having a Rigid Substrate and a Flexible Substrate, U.S. Patent 6,727,970 B2 (27 April 2004), based on an application filed 24 September 2001. 9 Dae-ho Choo et al., Substrate and a Liquid Crystal Display Panel Capable of being Cut by Using a Laser and a Method for Manufacturing the Same, U.S. Patent 6,297,869 B1 (2 October 2001). 10 Scott H. Holmberg, Active Matrix End Protection and Testing Scheme, U.S. Patent 6,613,650 B1 (2 September 2003), based on an application filed 10 May 2000. 11 Sung-Il Park et al., Liquid Crystal Display Device Implementing Improved Electrical Lines and the Fabricating Method, U.S. Patent Application Publication US 2001/0026345 A1 (4 October 2001). 12 Kunihiro Tashiro, Liquid Crystal Display and Method of Fabricating the Same, U.S. Patent Application Publication US 2002/0196393 A1 (26 December 2002), based on an application filed 20 May 2002, which is a Division of an application filed 23 May 2000. Appeal 2009-000373 Application 10/404,348 7 Do argues against rejections A, C, and F, of independent claims 1, 7, and 17, respectively. In each case, no substantive separate argument is made for the patentability of the dependent claims. The arguments against rejections B, D and E, and G rely on the alleged failure of the rejection of the respective independent claim, coupled with the observation that the additional references do not cure the deficiencies of the principal rejection. In each argument, Do focuses on the italicized limitation, which relates to the scribing of the first and second substrates. Regarding each of rejections A and C, Do contends that none of the references teach or suggest the italicized limitations. (Br. 6; 13.) In particular, Do submits that “Kodera merely teaches two cuts are scribed on the outer surface of a substrate along liquid crystal injection openings.” (Id. at 6, last para; para. bridging 13-14.) Moreover, in Do’s view, “Saito absolutely does not disclose forming the black matrix before forming scribing lines.” (Id. at 7, ll. 6-7; 14, ll. 8-9.) Rather, according to Do, Saito teaches that “the upper substrate is already cut before the black matrix is formed.” (Id. at 7, ll. 7-8; 14.) Do urges that these alleged shortcomings are fatal because all the claims require that “the ‘first scribe line’ is formed after the ‘black matrix’ is formed.” (Id. at 7, l. 11.) The remaining references fail, according to Do, to cure these deficiencies. As for Rejection F, Do argues that Tashiro does not teach the scribing limitations (Br. 24-25), and that Kodera “is silent with respect to forming scribing lines ‘so as not to corrode the black matrix.’” (Id. at 25, first full para.) Appeal 2009-000373 Application 10/404,348 8 Do argues further that there is no motivation to combine the references, which, according to Do, are not concerned with the same problem to be solved. Rather, in Do’s view, the Examiner relied improperly on Do’s own disclosure in finding that the “so as not to corrode the black matrix” limitation is “implicitly” disclosed by the references. (Br. 18, last para; 25, last para.) B. Findings of Fact Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The 348 Specification 1. According to the 348 Specification, the “total process” for forming an LCD can be divided into forming layers on the substrates, forming the cell gap, and cutting the cell. (Spec. 6, ¶ [0007].) 2. The 348 Specification describes the cell cutting process as comprising two steps, a scribing process and a breaking process. (Spec. 13, ¶ [0031].) 3. In the scribing process, a scribing line is formed on the glass substrate with a diamond pen or a tungsten-carbide wheel. (Spec. 13, ¶ [0031].) 4. In the breaking process, “the glass substrate may be cut along the scribing line by slightly impacting the glass substrate.” (Spec. 13, ¶ [0031].) 5. The 348 Specification also teaches that a black matrix is commonly formed during the manufacture of LCDs to cover the active area, corresponding to the thin film transistor region and the inactive area Appeal 2009-000373 Application 10/404,348 9 corresponding to the region of links between gate and data lines to gate and data pads, respectively. (Spec. 5, ¶ [0006].) 6. The black matrix is said to prevent light from leaking out near the thin film transistor in the active area and from the nonactive area. (Spec. 5, ¶ [0006].) 7. According to the 348 Specification, black resins have been used in place of a Cr/CrOx dual layered structure to obtain lower production costs, but the adhesion of the black resins to the seal pattern between the substrates is said to be inferior. (Spec. 5-6, ¶ [0006].) 8. According to the 348 Specification, in the prior art methods, as shown in Fig. 3, reproduced supra at 2, a cell cutting line 42 passes through black matrix 40, such that, when the substrate is cut, “if the black matrix 40 includes the metal material, such as chromium (Cr), the cut section of the black matrix 40 is exposed to air.” (Spec. 7, ¶ [0008].)13 9. “[T]he exposed black matrix section may reacted with oxygen or air,” the 348 Specification continues, “thereby forming rust,” which “may cause an operational defect in the liquid crystal display device.” (Spec. 7, ¶ [0008].) 10. The 348 Specification teaches that these problems can be avoided if scribing line 242 is “disposed at a position outside of the black matrix 240 so that the black matrix 240 is not severed during a step of cell cutting” (Spec. 15 ¶ [0036]), as shown in Figure 6A, reproduced supra, at 3.) 13 Throughout this Opinion, labels of elements in figures are shown in bold, for clarity, regardless of the presentation in the text of the reference cited. Appeal 2009-000373 Application 10/404,348 10 Inoue 11. Inoue describes conventional liquid crystal display cells having various elements mentioned in the appealed claims, including first substrate 102 having black matrix regions 104, color filters 105, 106, and 107, alignment layer 118; second substrate 101, which bears thin film transistors 115 and alignment layer 117; and spacers 120 (Inoue col. 1, ll. 23-52; Fig. 1 (not shown here)); and sealing patterns, e.g., 1003, and other black matrix regions, e.g., 1004, in Fig. 10 (not shown here) (Inoue, col. 13, ll. 3-13). Kodera 12. Kodera describes liquid crystal panel manufacturing processes in which a plurality of individual liquid crystal cells are prepared (Fig. 11, not shown here; col. 8, l. 30 to col. 9, l. 11), wherein cuts or grooves are scribed into the first and second substrates defining segments (id. at col. 9, ll. 12-21), and the segments of the scribed substrates are removed (id. at ll. 22-41), enabling the injection of liquid crystal material into the empty panels (id. at ll. 52-55). 13. According to Kodera, the scribing can be done by rotating a roller like carbide blade called a “scriber” along the surface of the substrate. (Kodera, col. 4, ll. 1-5.) 14. Kodera teaches that pressure is applied to the surface cut “to further cut the cut portion” (Kodera, col. 3, ll. 63-67) after which the portion can be removed (id., col. 3, l. 67-col. 4, l. 1). Appeal 2009-000373 Application 10/404,348 11 Saito 15. According to Saito, Figure 9, shown below {Fig. 9 shows an LCD in plan view} shows the state of the LCD “prior to the cutoff process, wherein . . . CT1 and CT2 denote certain positions at which the glass substrates SUB1, SUB2 are to be cut, respectively.” (Saito, col. 11, ll. 1-5; emphasis added.) Appeal 2009-000373 Application 10/404,348 12 16. According to Saito, Figures 10a and 10b, reproduced below, {Figs. 10A and 10B show cross sections of the LCD panel shown in Fig. 9} show the state of the same LCD “after having completed a cut-off process of the upper and lower substrates SUB2, SUB1.” (Saito, col. 10, l. 66, to col. 11, l. 1.) 17. Saito describes an LCD comprising a substrate SUB2, which carries black matrix BM made of a film of aluminum, chromium, or equivalent (Saito, col. 15, ll. 36-38), color filters FIL(R), FIL(G), and FIL(B) (not shown), and alignment layer OR11; seal material SL and spacers SPC-S (id. at col. 10, ll. 10-11); and substrate SUB1, which carries thin film transistor TFT and alignment layer OR12 (id. at col. 11, ll. 52-55). 18. As shown in Figures 9 and 10, cut CT2 on substrate SUB2 is outside of the black matrix BM carried by SUB2, and cut CT1 on substrate SUB2 is still further outside of the black matrix BM. 19. Saito teaches that “[t]he shield film BM is also formed at the peripheral section to have a flat rectangular frame-like pattern which resembles a window frame in planar shape and is formed continuously with the pattern of the matrix section.” (Saito, col. 16, ll. 3-7.) Appeal 2009-000373 Application 10/404,348 13 20. Saito adds, “shield film BM is forced to reside inside of the edge of the upper transparent glass substrate SUB2 by approximately 0.3 to 1.0 mm and is formed to avoid passing through cut regions of the upper transparent glass substrate SUB2.” (Saito, col. 16, ll. 14-18; emphasis added.) 21. Saito also teaches, [i]n the manufacture of this liquid crystal panel, if it is of small size, then a single glass substrate is subject to simultaneous processing of a plurality of panels at one time and is the substrate then separated into plural pieces for throughput improvement; . . . in either case, the glass substrate is cut after having completed a series of specified process steps.” (Saito, col. 10, ll. 54-65.) Tashiro 22. Tashiro describes a liquid crystal display shown in Figures 1a and 1b, which are reproduced below: {Fig. 1a: LCD in plan view: Fig. 1b: LCD in cross section} 23. According to Tashiro, substrate 4 carries black matrix 8, formed from color filters 24, 26, and 28 (Tashiro, 10, ¶ [0178]), while substrate 16 carries Appeal 2009-000373 Application 10/404,348 14 a display array 10 comprising pixel areas 14 controlled by TFT 13 (id. at ¶ [0176]). 24. As shown in Figures 1a and 1b, substrate 4 surrounds black matrix BM, and is smaller than substrate 16. Other References We do not find it necessary to describe the remaining references, aside from noting that, as indicated by their titles, each is concerned with a liquid crystal display device and methods of making LCDs. C. Discussion As the Appellant, Do bears the procedural burden of showing harmful error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness”) (citation and internal quote omitted). Arguments not timely raised in the Principal Brief have been waived. 37 C.F.R. § 41.37(c)(1)(vii)(2009), second sentence. Do’s objection that the Examiner has failed to establish a motivation to combine the references appears to be based on a misapprehension of the thrust of the Examiner’s rejection. We understand the Examiner to have shown that the structures arising from the claimed processes were known to in the art prior Do’s invention. For example, LCDs, in which the black matrix is entirely within the edges of the first and second substrates, and the second substrate being larger than the first substrate, are shown in Figures 9 Appeal 2009-000373 Application 10/404,348 15 and 10 of Saito, and in Figures 1 and 1A of Tashiro. The Examiner has also shown that the method of scribing and then breaking substrates was also known in the prior art relevant to LCDs, as shown by Kodera and by Saito. (Appellants also describe this prior art process. (Spec. 13, ¶ [0031].)) We have no difficulty finding that persons having ordinary skill in the LCD art would have used various known methods of sizing substrates, such as those taught by Kodera to make LCD structures known in the prior art, such as those taught by Saito and Tashiro. Indeed, Do has not come forward with any credible evidence that those skilled in the art would have had any reason not to consider using the various methods of making liquid crystal displays to make the disclosed prior art structures. On the merits, with the exception of Saito, Do does not deny that the references teach the features on which the Examiner relies. In particular, Do has not contested that Inoue describes LCDs having the various elements recited in the first parts of the claims. The critical statement in Saito, on which both the Examiner and Do rely for their respective positions, is that “shield film BM . . . is formed to avoid passing through cut regions of the upper transparent glass substrate SUB2.” (Saito, col. 16, ll. 14-18.) Do’s reading, that this sentence teaches that the black matrix is applied after the substrate SUB2 has been cut, is not per se unreasonable. However, the most natural reading of the term “cut regions,” in light of Figure 9, which Saito describes as showing “the state [of the LCD] prior to the cutoff process,”14 encompasses the Examiner’s reading, that the substrate is cut after the matrix has been applied. Indeed, Do appears to at least recognize the 14 Saito, col. 11, ll. 1-5 (emphasis added). Appeal 2009-000373 Application 10/404,348 16 possibility of the Examiner’s interpretation, repeating numerous times, that “[w]hile Saito may disclose forming the black matrix before a cutting process, Saito does not describe how the cutting process is performed.” (Br. 7, ll. 5-6; 10, ll. 12-13; 14, ll. 6-7; 17, last line, to 18, l. 1; 21, last line, to 22, l. 1; Reply Br. 5, ll. 2-3; 10, ll. 7-8; 15, ll. 20-21; 21, ll. 12-13; 27, ll. 4-5; emphasis added.) The silence of Saito on the cutting method is of no moment in view of the teachings of Kodera regarding scribing and breaking, and the disclosure in the 348 Specification that the cell cutting process of scribing and breaking is standard in the art (Spec. 6, ¶ [0007], last sentence.) Moreover, on the present record, Saito’s teaching that “the glass substrate is cut after having completed a series of specified process steps” (Saito, col. 10, ll. 64-65) would have been understood by a person skilled in the art to provide for considerable flexibility in when the substrates could be cut. In this regard, the Examiner also relies on Kodera for teaching, inter alia, that multiple liquid crystal elements can be prepared on a single pair of substrates (FR 3), as well as Kodera’s teachings of scribing and cutting substrates of liquid crystal cells at various stages of assembly. An obviousness rejection based on a combination of references cannot be defeated by attacking the references one by one, as Do has done. Do’s objection that “there is no indication in Saito that CT1 and CT2 are anything other than imaginary lines” (Reply Br. 6, ll. 6-7) is without merit. Do does not explain why such lines, even if merely imaginary, would not have suggested, as the Examiner found, making the panels, including depositing the black matrix, prior to scribing and breaking the substrates along those lines. Appeal 2009-000373 Application 10/404,348 17 Do’s further objection, that the Examiner’s reliance on the 348 Specification for the “implicit” avoidance of corrosion of the black matrix (e.g., Br. 7, last para.), is also without merit. First, there is no evidence that the scribing, per se, contributes to corrosion of the black matrix: rather, corrosion arises due to exposure of the black matrix to atmospheric oxygen after breaking the substrate in such a way that the black matrix is also broken and exposed. Moreover, the seal provided by Saito (Figures 9 and 10A, element SL) would appear to provide superior protection to the black matrix than is provided in Figures 5, 6, and 8 of the 348 Specification, which do not show the edge of the black matrix being shielded from atmospheric oxygen. In summary, we find the weight of the evidence is that a person having ordinary skill in the art would have had a reasonable expectation of successfully making liquid crystal display panels by scribing and breaking the substrates after the black matrix was formed, as suggested by Saito in combination with the other references relied on to reject claims 1 and 7. We conclude that Do has not shown harmful error in this aspect of the Examiner’s rejections. Similarly, regarding the rejection of claim 17 in view of the combined teachings of Tashiro and Kodera, we find Do’s objections unpersuasive of harmful error. For the reasons given supra, Do has not come forward with credible evidence that a person having ordinary skill in the art would not have been motivated to make the LCD structure taught by Tashiro in Figures 1a and 1b using the scribing technique taught by Kodera to cut substrates of liquid crystal displays in various states of construction. Appeal 2009-000373 Application 10/404,348 18 Finally, we note that Do has not argued for patentability based on unexpected results or other secondary indicia of patentability. D. Order We AFFIRM the rejection of claims 1-5 under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, and Mishima. We AFFIRM the rejection of claim 6 under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, Mishima, and Grace. We AFFIRM the rejection of claims 7-11 and 13-15 under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, Mishima, and Choo. We AFFIRM the rejection of claim 12 under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, Mishima, Choo, and Holmberg. We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) in view of the combined teachings of Inoue, Kodera, Saito, Mishima, Choo, and Park. We AFFIRM the rejection of claims 17-19 under 35 U.S.C. § 103(a) in view of the combined teachings of Tashiro and Kodera. Appeal 2009-000373 Application 10/404,348 19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED kmm MCKENNA LONG & ALDRIDGE LLP 1900 K STREET, NW WASHINGTON, DC 20006