Ex Parte Hong

Patent Trial and Appeal Board

Dec 17, 2018

13240818 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/240,818 09/22/2011
58027 7590 12/19/2018
H.C. PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
FIRST NAMED INVENTOR
Jeremy Hong
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.
P7607USOO 4192
EXAMINER
CAPOZZI, CHARLES
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY HONG
Appeal2017-002131
Application 13/240, 818
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-3, 7, and 17-24, which constitute all the claims pending in this
1 In our Decision we refer to the Specification filed September 22, 2011
("Spec."), the Final Office Action appealed from dated October 15, 2015
("Final Act."), the Appeal Brief filed October 15, 2015 ("Appeal Br."), the
Examiner's Answer dated September 23, 2016 ("Ans.") and the Reply Brief
filed November 22, 2016 ("Reply Br.").
2 Appellant identifies Samsung Display Co., Ltd. as the real party in interest.
Appeal Br. 3.
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Application 13/240, 818
application. Claims 4--6 and 8-16 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The subject matter on appeal relates to a mask frame assembly and a
thin film deposition apparatus for depositing a patterned thin film on a
substrate. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A thin film deposition apparatus for depositing a patterned
thin film on a substrate, the deposition apparatus comprising:
a deposition chamber;
a deposition source arranged within and at a bottom of the
deposition chamber;
a mask frame assembly arranged within the deposition
chamber and interposed between the deposition source and the
substrate; and
a magnet arranged on an opposite side of the substrate
from the mask frame assembly to pull the mask frame assembly
towards the substrate, the mask frame assembly comprising:
a frame having an opening portion;
a supporting bar installed on the frame and across
the opening portion; and
a plurality of split masks installed on the frame
across the opening portion so as to cross the supporting
bar
' each of the split masks having two opposing end
portions that are welded to the frame at first welding
points, each of said split masks also being welded to the
supporting bar at second welding points where said each
split mask and the supporting bar cross each other;
wherein cut-out portions are formed in said each
split mask around each of said second welding points
where said each split mask is welded to the supporting bar,
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the cut-out portions to allow for a closer adherence of the
split masks to the substrate by the magnet in a vicinity of
the second welding points; and
wherein the cut-out portions being formed in pairs
about each of said second welding points, each pair of cut-
out portions converging toward an inner portion from an
outer portion of said each split mask.
Appeal Br. 56 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections3:
A. Claims 1, 2, 7, 17, 19, 20, 21, and 23 stand rejected under
35 U.S.C. § 112(b) as being indefinite for failing to
particularly point out and distinctly claim the subject
matter which the inventor regards as the invention. Final
Act. 4.
B. Claims 19, 21, and 22 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kang4 in view of
Sung5 and Bemer. 6 Id. at 8.
C. Claims 1-3, 7, 17, and 18 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Kang in view of Sung,
Bemer, and Hens. 7 Id. at 10.
3 The Examiner also determines that the term "deposition source" is written
in means-plus-function language under 35 U.S.C. § 112 (f) where "the term
'source' is merely a generic placeholder for the term 'means,"' but we need
not resolve that issue to resolve the issues in the above-captioned appeal.
Final Act. 3 ..
4 Chang Ho Kang, US 2003/0101932 Al, published June 5, 2003 ("Kang").
5 Sung et al., US 2010/0192856 Al, published August 5, 2010 ("Sung").
6 Bemer et al., US 4,806,820, issued February 21, 1989 ("Bemer").
7 Hens et al., US 2001/0054864 Al, published December 27, 2001 ("Hens").
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D. Claims 20, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kang in view of Sung,
Hens, and Beck. 8 Id. at 14.
Appellant seeks our review of Rejections A-D. See generally Appeal
Br. Appellant argues the claims subject to each rejection as a group. See id.
Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv)
(2013), we limit our discussion to the first claim recited for each rejection
and all other claims stand or fall together with those claims.
OPINION
Rejection A-Indefiniteness (claims 1, 2, 7, 17, 19, 20, 21, and 23)
The Examiner rejects claims 1 and 19 as indefinite (Final Act. 5, 6)
because claims 1 and 19 require cut-out portions "to allow for a closer
adherence of the split masks to the substrate." Appeal Br. 56 (emphasis
added). The Examiner explains that the term "closer" is indefinite because
as used in claim 1, it "compares the state of adherence to unknown
conditions" and the standard for measuring the degree of adherence cannot
be ascertained. Id.
Appellant argues that relative terminology and terms of degree are
permitted and not indefinite when a person of ordinary skill in the art would
have understood what is claimed. Appeal Br. 14. Appellant explains that
the Specification provides sufficient information to understand the term
"closely adhered," that is, "to allow the mask strips to flex towards the
8 Beck et al., US 6,615,962 B2, issued September 9, 2003 ("Beck").
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substrate so that the patterns on the mask strips can be arranged closer to the
substrate than if there were no cut out portions present." Id.
We are not persuaded of reversible error by the Examiner. Section
112 requires that "the claims particularly point[] out and distinctly claim[]
the subject matter which the inventor regards as the invention." 35 U.S.C.
§ 112(b ). "As the statutory language of 'particular[ity ]' and 'distinct[ ness ]'
indicates, claims are required to be cast in clear-as opposed to ambiguous,
vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014). Exact precision is not required. The test for determining the question
of indefiniteness may be formulated as whether the claims "set out and
circumscribe a particular area with a reasonable degree of precision and
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
regard to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, an applicant is required to use language as
precise as the subject matter reasonably permits. Id. During prosecution, a
claim is examined for compliance with 35 U.S.C. § 112, ,r 2 by determining
whether the claim meets threshold requirements of clarity and precision.
In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009). In determining
whether a particular claim is definite, the claim's language must be analyzed
in light of the content of the particular application, the prior art's teaching,
and the interpretation that would be given to the claim's language by a
person of ordinary skill in the art at the time the invention was made. Id.
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We agree with the Examiner that the term "closer adherence" is a term
of comparison that suggests "an adjustment in adherence between the masks
and substrate." Ans. 64; see Final Act. 5. "Closer adherence" is not, as
Appellants suggest, merely a relative term or a term of degree, but rather a
comparative term where the standard for comparison is unknown. Id. This
is clear from Appellants' arguments, which articulate that the comparison is
to a mask without cutout portions. See Appeal Br. 14 (urging that including
a cut-out portion allows the mask strips to flex towards the substrate "so that
the patterns on the mask strips can be arranged closer to the substrate than if
there were no cutout portions present in the vicinity of the welds"). The
comparative language is not included in the claim and, although it is
appropriate to interpret specific terms and phrases used in the claims in light
of the Specification, we do not read limitations from the Specification into
the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
("[L ]imitations are not to be read into the claims from the specification.")
and Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(en bane)
("[T]he line between construing terms and importing limitations can be
discerned with reasonable certainty and predictability if the court's focus
remains on understanding how a person of ordinary skill in the art would
understand the claim terms. For instance, although the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.").
Here, during the administrative process, Appellant has the opportunity
and responsibility to remove ambiguities in the meaning of claim terms by
amending the application to notify the public of claim scope. In re Zietz,
893 F.2d 319,321 (Fed. Cir. 1989)("During patent prosecution when claims
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can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed."). Therefore, we affirm the
Examiner's rejection of claims 1 and 19 as indefinite.
Next, the Examiner rejects claims 2 and 21 as indefinite (Final Act. 5,
7), claims 2 and 21 require "the split masks and the supporting bar crossing
each other at points." Appeal Br. 56, 57 (emphasis added). The Examiner
explains that "it is unclear whether the limitation is referring to the point or
the welding point recited in claim 1, or different points." Final Act. 5.
According to the Examiner because both terms use similar language,
confusion exists. Ans. 66.
Appellant, for its part, argues that the recitation of "at points" does not
include "said" or "the" therefore should be understood as a new element.
Appeal Br. 16. Appellant asserts that "at points" is fully supported by
description in the Specification and drawings. Id. ( citing Spec. 3 ("the
plurality of split masks are fixed to the supporting bar at points where the
plurality of split masks and the supporting bar cross" and "the supporting bar
may cross each other at points between the plurality of deposition patterns"),
4 ("the split masks and the supporting bar may be installed while crossing
each other at points between the plurality of deposition patterns"), 6 ("the
supporting bars 130 are fixed to each other by spot welding at points where
the split masks 110 and the supporting bars 130 cross")).
We agree with Appellant that "at points" when read in light of the
claims, Specification, and the Figures, provides reasonable clarity and
definiteness sufficient to identify reversible error in the Examiner's
rejection. To begin, the claims themselves adequately distinguish the
different "points" claimed by describing where each "point" is positioned on
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the mask frame assembly. According to the claims, the "first welding
points" are positioned at the opposing end portions of each split. Appeal Br.
56. The "second welding points" weld the split mask to the supporting bar
and "cut-out portions are formed ... around each of said second welding
points." Id. In contrast, the "at points" of claims 2 and 21 are located where
"the split masks and supporting bar cross[] each other ... [and] between
neighboring ones of the plurality of deposition patterns." Id. at 56-57.
Appellant provides annotated Figure 3, reproduced below, to illustrate the
distinction between the different "points" claimed.
Annotated Figure 3 "is a plan view illustrating the structure of a split mask
of the mask frame assembly illustrated in Fig. 1." Spec. 5. Figure 3 shows a
plurality split masks 110 installed on a frame and across supporting bar 130.
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The split mask is welded to the frame at the first welding points 115. Id. at
6. The split mask is welded to the supporting bar at second welding points
113 and cut-out portions 112 are formed about each of the second welding
points. Id. at 7. And lastly, the split masks 110 and supporting bars 130
cross "at points," identified by Appellant as the "rectangular area" above,
and between neighboring deposition patterns 111. Id. at 4. Thus, we do not
sustain the Examiner's rejection of claims 2 and 21 for reciting "at points."
However, claims 2 and 21 remain indefinite by virtue of their dependence
from claims 1 and 19.
Lastly, the Examiner rejects claim 7, 17, 20, and 23 as indefinite
(Final Act. 5) because the claims recite "cut-out portions to allow portions of
the split masks in a vicinity of the welding points to better adhere to the
substrate." Appeal Br. 57 (emphasis added). As a result, the Examiner
explains that "better" is similar to claims using words like "superior" and
such terms "provide[] no guidance as to what constitutes a better state of
adherence." Final Act. 5-6.
Appellant urges that "better adhere," like "closer adherence" above, is
not indefinite simply because it employs relative terminology and terms of
degree. Appeal Br. 15. Appellant asserts that the term "better adhere" is
supported by the Specification. Id. ( citing Spec. ,r,r 44, 48, 49, and 55).
Appellant explains that the cut-out portions permit the "mask strips to flex
towards the substrate so that the patterns on the mask strips can better
adhere to the substrate than if there were no cutout portions present .... "
Id. ( emphasis added). Therefore, Appellant reasons the person of ordinary
skill in the art would readily understand what is claimed when read in light
of the Specification. Id.
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We find Appellant's argument unpersuasive of reversible error. As
the Examiner determines, "better adhere," like "closer adherence" discussed
above, is a comparative term for which no point of comparison is provided.
Ans. 65 ("what constitutes a better or superior state of adherence?").
Therefore, for the same reasons discussed above, we affirm the Examiner's
rejection of claims 7, 17, 20, and 23 as indefinite.
Rejection B-Obviousness (claims 19, 21, and 22)
The Examiner rejects claims 19, 21, and 22 as obvious over the
combination of Kang, Sung, and Bemer. Final Act. 8. The Examiner finds
that Kang teaches a thin film deposition apparatus similar to that claimed,
but also finds that Kang does not teach a "supporting bar." Id. at 8-9. The
Examiner further finds that Sung, also teaching a thin film deposition
apparatus, describes a supporting bar that prevents deformation of the mask
due to sagging. Id. at 9. The Examiner acknowledges that the combination
of Kang and Sung fails to describe "cut out portions" around each welding
point P, but the Examiner finds Bemer teaches analogous mask assemblies
and describes cut outs for benefit of relieving stress. Id. at 10-11.
Appellant presents numerous arguments. See Appeal Br. 18-26.
Because we find Appellant's argument that Bemer is nonanalogous art
persuasive, we do not reach these other arguments.
Appellant argues that there is no reason to combine Kang and Sung
with Bemer because Bemer is directed to a shadow mask placed over a
cathode ray tube and therefore is not in the same field of endeavor. Appeal
Br. 24--25. In addition, Appellant explains that Bemer is not reasonably
pertinent to the problem faced by the inventor because Bemer's slits "are
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included to relieve stress caused by thermal treatment or blackening of the
shadow mask, thereby minimizing distortion." Id. at 26. Appellant asserts,
in contrast, the instant claims include the cut-out portions in order to
"provide for better adhesion between Appellant's deposition mask and
substrate." Id.
"The analogous art inquiry is a factual one, requiring inquiry into the
similarities of the problems and the closeness of the subject matter as viewed
by a person of ordinary skill." Scientific Plastic Prods., Inc. v. Biotage AB,
766 F.3d 1355, 1360 (Fed. Cir. 2014), cert. denied 135 S. Ct. 2380 (2015);
see also In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Art is non-
analogous unless it is: ( 1) from the same field of endeavor as the claimed
invention; or (2) reasonably pertinent to the particular problem faced by the
inventor. In re Bigio, 381 F.3d at 1325; In re Wood, 599 F.2d 1032, 1036
(CCPA 1979). Thus, an art citation that is not from the same field of
endeavor as a claimed invention must nevertheless be "reasonably pertinent"
to the problem addressed by the inventor to be considered analogous. Art is
"reasonably pertinent" when it would "logically commend itself' to an
inventor's attention in considering his problem. In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379--80 (Fed. Cir. 2007)(citing In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992)); see also MPEP § 2141.0l(a).
Conversely, when art is directed to a different purpose than a claimed
invention, an inventor would have less motivation or occasion to consider it.
See Clay, 966 F.2d at 658-59.
We find Appellant's arguments persuasive of reversible error by the
Examiner. We acknowledge the Examiner's position that each of Kang,
Sung, and Bemer relate to mask assemblies (Ans. 23), but those masks are
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for very different purposes-that is, Kang and Sung are deposition masks
useful for thin film deposition techniques (like those claimed) where Bemer
is a shadow mask for a cathode ray tube useful in focusing electron beams
on a display screen. Therefore, while broadly characterized as masks, these
masks cannot be fairly said to be in the "same field of endeavor."
Further, we are not convinced that Bemer is "reasonably pertinent" to
the problem addressed by the Appellant such that the skilled artisan would
look to the teachings of Bemer in solving the instant problem. Bemer
explains that "the shadow mask 1 is shown to have ... cutouts 11 as shown
particularly in 4b formed in the flange 13 for the purpose of stress relief'
during thermal treatment processes. Bemer, col. 2, 11. 48-51; see also
Transcript of Oral Argument, held September 25, 2018 ("Transcript"), 9
(because of the high temperatures experienced in Bemer, cutouts were
placed "around the weld point to relieve the thermal expansion force which
are not at issue in our invention at all"); see also id. at 10 ("The purpose of
the Bemer cutout is to reduce stress of the weld to prevent detaching
between the mask and frame due to thermal expansion ... there [are] no
thermal expansion issues in the claimed deposition mask."). The cut-out
portions of Appellant's claims, rather than providing room for thermal
expansion, are designed to allow the deposition mask to be attracted, through
magnetic forces, and held closely to the surface of a substrate-i.e., the
deposition mask is held to the supporting bar by welds but is allowed to pull
away from cross bar due to the flexibility provided by the cut-out portions.
Spec. 3. In particular, the Specification explains
if the partial cutting portions 112a are formed ... a binding force
which fixes the portions of the split masks 110 around the
welding points 113 becomes weak, that is, portions of the split
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masks 110 near the deposition patterns 111 are separated from
the welding points 113 via the partial cutting portions 112a to
some extent, and thus the split masks 110 are easily pulled
toward substrate 200 by a magnetic force of the magnet 300.
Id. at 8; see also Transcript 13 ("portions of the split mask near the
deposition patterns are separated from the welding point via the partial
cutting portions to some extend"). Therefore, the problems faced by
Appellant are different from those in Bemer.
Rejection C- Obviousness (claims 1-3, 7, 17, and 18)
The Examiner rejects claims 1-3, 7, 17, and 18 as obvious over the
combination of Kang, Sung, Bemer, and Hens. Final Act. 10. The
Examiner relies on Bemer for the same teachings as described above ( and
rejected) in Rejection B. Therefore, for the reasons discussed above for
Rejection B, we do not sustain the Examiner's rejection of claims 1-3, 7, 17,
and 18.
Rejection D- Obviousness (claims 20, 23, and 24)
The Examiner rejects claims 20, 23, and 24 as obvious over the
combination of Kang, Sung, Hens, and Back. Final Act. 14. Claim 20 (and
claims 23 and 24 by virtue of their dependence) each require "the cut-out
portion having a U-shape which surrounds the welding point." Appeal Br.
59. The Examiner relies on Kang and Sung in a similar manner described
above for Rejection B. See e.g., Final Act. 14--15. The Examiner finds that
Hens teaches cut-out portions around welding points in order to relieve
stress. Id. at 15. The Examiner also finds that Back describes providing slits
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around rivets or welding points to reduce stiffness and that a variety of slit
shapes may be used, including U-shaped slits. Id. at 16.
As Appellant argues (Final Act. 42--45), Hens (similar to Bemer) is
directed to a shadow mask for a television tube and is therefore not
analogous art because Hens is not in the same field of endeavor as the
claimed invention. Further, the cut-out portions of Hens are provided
around the welded portions of the shadow mask so that the diaphragm parts
will not deform under the stress of thermal expansion. Hens ,r 10 ("the
comer sections show a much larger expansion ... [ and] the slits in between
different welding points ensure that the welds cannot shear"); see also id. ,r
30 (describing temperatures of about 450 °C as causing expansion and "[i]n
the absence of the slits 23, stress occurs between the welds 22 leading to
shearing of these welds."). Therefore, the purpose of the cutouts of Hens
(like that of Bemer) is not "reasonably pertinent" such that it would
"logically commend itself' to an inventor's attention in considering his
problem. Icon Health and Fitness, 496 F.3d at 1379--80. Therefore, we do
not sustain the Examiner's rejection of claims 20, 23, and 24.
CONCLUSION
Appellant failed to identify a reversible error in the Examiner's
rejection of claims 1, 2, 7, 17, 19, 20, 21, and 23 under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention.
Appellant has identified a reversible error in the Examiner's rejection
of claims 19, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Kang
in view of Sung and Bemer.
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Appellant has identified a reversible error in the Examiner's rejection
of claims 1-3, 7, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over
Kang in view of Sung, Bemer, and Hens.
Appellant has identified a reversible error in the Examiner's rejection
of claims 20, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over Kang
in view of Sung, Hens, and Beck.
DECISION
For the above reasons, the Examiner's rejection of claims 1-3, 7, and
17-24 is affirmed-in-part.
AFFIRMED-IN-PART
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