Ex Parte Furst et al

Patent Trial and Appeal Board

Nov 21, 2014

11792619 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JENS FURST, DEBORA HENSELER, and
HAGEN KLAUSMANN
____________________

Appeal 2012-008317
Application 11/792,619
Technology Center 2800
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek review of the Examiner’s decision to reject claims 1–
3, 5–7, 10, 11, and 13–16. We have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a).
We AFFIRM-IN-PART and denominate our affirmance as involving
a NEW GROUND OF REJECTION.

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The invention relates to an organic-based electronic component
containing pixels (Title). According to the Specification, organic-based
electronic components in the form of photodiodes with at least one organic
semi-conductive or conductive layer embedded between two electrodes were
known in the art. Spec. 1 ¶ 2. Appellants add a grid electrode to reduce
crosstalk between illuminated pixels. Spec. 10 ¶ 2. Claim 1 is illustrative:
1. An electronic component comprising:
at least one active, organic semi-conductive or
conductive layer forming a layer system embedded between
two pixilated electrodes;
the layer system and the pixilated electrodes forming an
active region; and
an electrode in the form of a grid, the grid electrode
being located over the entire active region within the layer
system such that the grid electrode is embedded between the
two pixilated electrodes, the grid electrode being laterally offset
from the pixilated electrodes, wherein
the grid electrode is coated with a passivation layer,
defining individual or a plurality of pixels, and
the grid electrode is operated at a voltage which
counteracts a charge transfer along the layer system, or
crosstalk, of the individual pixels.
Claims Appendix at Br. 16.
The Examiner rejects the claims as follows:
A. Claim 1 under 35 U.S.C. §112 ¶ 2 as indefinite;
B. Claims 1, 3, 5, 6, 11, and 14–16 under 35 U.S.C. § 103(a) as
obvious over Takahara;1 and

1 Takahara, US 6,628,355 B1, patented Sept. 30, 2003.
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Application 11/792,619

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C. Claims 2, 7, 10, and 13 under 35 U.S.C. § 103(a) as obvious over
Takahara in view of Carballes.2

OPINION
Indefiniteness
The Examiner confines the indefiniteness rejection to claim 1,
determining that the location of the grid electrode is unclear because it
cannot be “over the entire active region” as well as “within the layer system”
and “laterally next to the pixilated electrode.” Ans. 5.
Because we determine that all the pending claims are indefinite and to
a greater extent than explained by the Examiner, we expand the rejection and
denominate it as a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). Our reasoning follows.
The second paragraph of 35 U.S.C. § 112 requires the specification
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112 ¶ 2.3 This portion of the statute requires the claims “be cast in
clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard,
751 F.3d 1307, 1313 (Fed. Cir. 2014). The standard is not one of exact
precision. What one must determine is whether the language is as precise as
the subject matter permits given the circumstances. Id.
Precision in claiming is not only dependent on the claim language
itself; it is dependent on the description of the invention in the Specification.
Although claims are not to be limited to specific embodiments set forth in

2 Carballes, US 4,202,000, patented May 6, 1980.
3 35 U.S.C. § 112 ¶ 2 remains in effect for applications filed before
September 16, 2012.
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the specification when it is does not appear that an applicant desired the
claims to be so limited, the specification is the single best guide to
determining the meaning of the claim terms. Phillips v. AWH Corp., 415
F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
Claims that lack precise referents in the specification and require
elaborate explanations extraneous to both the specification and the claims do
not meet the standard of precision required by the statute. In re Hammack,
427 F.2d 1378, 1381–82 (CCPA 1970). In fact, inconsistent use or unclear
use of the terms in the specification can even cause a claim that appears
clear on its face to become unclear and indefinite when read in light of the
specification. See In re Cohn, 438 F.2d 989, 1001 (CCPA 1971) (holding
claims indefinite because the claims were, in calling for sealing an oxide
surface with an alkali silicate to obtain an “opaque appearance,” inconsistent
with the specification which defined an “opaque finish” as a flat-appearing
finish which is not obtained when an alkali metal silicate is used as a
sealant.).
With the above in mind, we begin by summarizing, as best we can
given the inconsistent use of terms and idiomatic nature of Appellants’
Specification, the invention as presented in Appellants’ Specification and
informed by Appellants’ arguments.
Figures 1 and 2 are reproduced below as annotated by Appellants (Br.
6):
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Figure 1, on the left, shows a plan view of the left corner of a bottom
electrode layer of the prior art. Spec. 6 ¶ 2.

Figure 2, on the right, shows the same plan view with the addition
of grid electrode 5. Spec. 9 ¶ 1.

The electronic component shown in Figures 1 and 2 is a pixilated
detector panel with active matrix activation. Spec. 6 ¶ 3. Figure 1 shows the
prior art device having bottom electrode 1, “which is structured according to
the pixels, so individual pixels can be activated.” Spec. 8 ¶ 3. In Figure 1,
two pixels are labeled 10 and 20, respectively. A top electrode 2 is visible in
Figures 1 and 2 “only at the edge.” Id. The top electrode 2 is said to be
“plane and unstructured.” Id. Figures 1 and 2 also show contact point 4 at
which feedthrough from the photodiode to the transistor takes place. Gate
lines 12 and source lines 13 are also shown. Id.
The Specification discusses an alternate embodiment directed to a
passive matrix. Spec. 3 ¶ 4. In that embodiment, the two electrodes are
strip-like and perpendicular to each other. Id.
Figure 2 adds the grid electrode 5 to the structure of Figure 1. Spec. 9
¶ 1. The grid electrode is arranged in a grid structure between all pixel gaps.
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passivation layer 11. Spec. 10 ¶ 1. The grid electrode 5 separates pixels 10
and 20. Id.
Claim 1 requires “at least one active, organic semi-conductive or
conductive layer forming a layer system embedded between two pixilated
electrodes.” The claim also requires that “the layer system and the pixilated
electrodes form[] an active region.”
It is unclear which electrodes are the “pixilated” electrodes and what
area is the “active region.” These terms are neither clearly defined in the
Specification nor used to point out specific structures in the Figures.
The only place in the Specification using the term “pixilated
electrodes” is in the first paragraph on page 3. The Specification speaks of
“embedding” the “at least one active, organic semi-conductive or conductive
layer” between “two electrodes.” Spec. 3 ¶ 1. The next clause of the
sentence refers to “the pixilated electrodes” and seems to be referring to the
“two electrodes.” Id. Given the location of the active organic layer between
bottom electrode 1 and top electrode 2, it is reasonable to interpret the
recited “pixilated electrodes” as directed to the bottom electrode 1 and top
electrode 2. The problem is that when the claim is interpreted in this way, a
conflict arises with the portion of the claim directed to the grid electrode.
The portion of the claims directed to the grid electrode recites that the
grid electrode is “located over the entire active region within the layer
system such that the grid electrode is embedded between the two pixilated
electrodes, the grid electrode being laterally offset from the pixilated
electrodes.”
Grid electrode 5 is not “embedded between” the bottom electrode 1
and top electrode 2. As shown in Figure 4, grid electrode 5 is within the
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passivation layer 11 and below bottom electrode 1. Nor is grid electrode 5
“laterally offset” from the bottom electrode 1 and top electrode 2. Figure 2
depicts the grid electrode 5 as laterally offset from the gate line 12 and
source line 13.
With regard to the phrase “active region,” another ambiguity arises.
The first paragraph of page 3 of the Specification uses “active region” in the
same manner as the claim to refer to placing the grid electrode “over the
entire active region.” But at the bottom of page 4, the Specification talks of
“pixilated” as used to refer to the division of the at least one active layer into
first regions or pixels that can be activated. This portion of the Specification
seems to equate “active regions” with pixels, and not the entire layer. This
creates an ambiguity in the claim regarding the structure being referred to as
the “active region.” The word “entire” does not resolve the ambiguity
because it is not clear what structure represents the “entire active region.”
Perhaps the “entire active region” is the active layer, but this is not clear.
There are several other ambiguities in claim 1.
First, as evidenced by the dispute between the Examiner and
Appellants, it appears that “over” can have a number of different meanings.
Neither the Examiner nor Appellants cite any dictionary definition to
support their interpretation of the word. Thus, we do not have before us the
meaning that one of ordinary skill in the art would have attached to the
word.
Although the Appellants point to portions of the Specification and the
prior art that they argue support a broader meaning than given by the
Examiner, this is not enough to overcome the indefiniteness of the term.
The Specification does not make the intended meaning for the word “over”
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explicitly clear. In this circumstance, we decline to attempt to harmonize
Appellants’ interpretation with the Specification and prior art. “Such an
approach puts the burden in the wrong place. It is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997).
Second, because the extent of the “active region” is unclear, the
language “the grid electrode being located over the entire active region” is
unclear. The Specification at the bottom of page 4 appears to equate the
“active region” with a pixel such as pixel 10 shown in Figure 4. The grid
electrode 5 is shown in Figure 2 as extending across the entire layer system,
not just a single active region (pixel).
Third, it is unclear what is “within the layer system.” This
prepositional phrase may refer to the grid electrode, but it is also reasonable
to interpret it as referring to the more closely located object, i.e., the active
region. In other words, one can interpret the grid electrode as being “within
the layer system” or interpret the active region as being “within the layer
system.” The fact that there are two possible ways to interpret the clause
makes the claim language indefinite.
The dependent claims do not remedy the indefiniteness of claim 1.
Appellants have failed to set forth their claims and written description of the
invention in support of those claims in sufficiently precise manner to
reasonably apprise those of ordinary skill the boundaries of the invention
they seek to protect. Thus, we reject claims 1–3, 5–7, 10, 11, and 13–16
under 35 U.S.C. § 112 ¶ 2.

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Obviousness
With regard to the rejections of claims 1–3, 5–7, 10, 11, and 13–16
under 35 U.S.C. § 103(a) as obvious, we agree with Appellants that the
Examiner did not establish that Takahara describes a grid electrode. Br. 9–
11. The Examiner finds that Takahara teaches a grid in the form of an
electrode at 17 as shown in Figure 1 and Figure 11, but Takahara refers to 17
as a plurality of wires, col. 1, ll. 49–51, and shows these wires in Figure 11
as a series of parallel wires 17a and 17b perpendicular to wires 17c and 17d.
The Examiner acknowledges that the wires are separated by an insulating
film. Ans. 12. A grid electrode is an electrode in the shape of a grid, not a
series of perpendicular and non-electrically connected wires.

CONCLUSION
We do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a).
We sustain the rejection of claim 1 under 35 U.S.C. §112 ¶ 2, but
denominate it a new ground of rejection pursuant to 37 C.F.R. § 41.50(b)
and extend that rejection to the other pending claims.
DECISION
The Examiner’s decision is affirmed-in-part with the entry of the new
ground of rejection.

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
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paragraph 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 ground 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. . . .

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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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