Ex Parte Hong et al

Patent Trial and Appeal Board

Dec 15, 2014

12143255 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WANG-SU HONG and JAE-HOON KIM
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Appeal 2013-000582
Application 12/143,255
Technology Center 2800
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Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–10 and 22–23 under 35 U.S.C. § 103(a) as being
unpatentable based on at least the combined prior art of Kim (US Pub.
2006/0209246 A1, published Sept. 21, 2006)1 and Park (US Pub.
2006/0139538 A1, published June 29, 2006).2 We have jurisdiction under
35 U.S.C. § 6(b).

1 Kim and the current application on appeal share a common assignee, to
Samsung Electronics Co., Ltd. (App. Br. 3).
2 The rejection of claims 2–10 and 23 also includes Kishimoto et al. (US
6,339,462 B1, issued Jan. 15, 2002)(Final Rejection 6–11).
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Claim 1, the sole independent claim, is illustrative of the claimed
subject matter (emphasis added):
1. A liquid crystal display device, comprising:
a first substrate comprising a first insulating substrate, a first thin film
positioned on the first insulating substrate, and a first alignment layer
positioned on the first thin film, the first alignment layer comprising a first
exposing area that exposes the first thin film;
a second substrate facing the first substrate and comprising a second
insulating substrate;
a spacer positioned between the first substrate and the second
substrate, the spacer comprising at least a part that corresponds to the first
exposing area; and
a liquid crystal layer positioned between the first substrate and the
second substrate,
wherein a chemical affinity of the first thin film for a material of the
spacer is greater than a chemical affinity of the first thin film for the liquid
crystal layer, and
wherein a chemical affinity of the first alignment layer for the liquid
crystal layer is greater than a chemical affinity of the first alignment layer
for the material of the spacer.

OPINION
We reverse the rejections.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
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knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
We need to address only the independent claim 1, which requires that
the “chemical affinity of the first thin film for a material of the spacer is
greater than a chemical affinity of the first thin film for the liquid crystal
layer” and the “chemical affinity of the first alignment layer for the liquid
crystal layer is greater than a chemical affinity of the first alignment layer
for the material of the spacer”.
The Examiner relies on Kim de facto alone or in combination with
Parks to suggest the claimed limitations in dispute (Answer 6–8, 15). The
Examiner relies explicitly on the NOA-65 material discussed in [0046] of
Kim as being a possible material for the spacer, and notes since that is a
possible spacer material described in the present application, it would have
the recited affinity (Answer 15).3 Appellants, on the other hand, argue that
the Examiner’s position relies upon a misreading of Kim and state
[T]he monomers of paragraph [0046] of Kim are taught to be
used to form the high molecular weight layer 331, but are not
taught to be used to form the spacer 321. In fact, the spacer 321
is formed before the high molecular weight layer 331 is formed,
and both elements are taught to be formed using different
processes and materials.

3 We note to the extent that the Examiner appears to be relying upon
inherency, inherency “may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), quoting In re Oelrich,
666 F.2d 578, 581 (CCPA 1981). An inherent characteristic must be
inevitable. See Oelrich, 666 F.2d at 581.
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In addition, as would be apparent to one of ordinary skill
in the art, it would be impossible to properly form the spacer
321 using the anisotropic phase-separation of Kim. Specifically,
it would be impossible to form the spacer 321 to have the
required height and pattern, since these features are impossible
to control using such a process, which forms substantially
uniform phases.
Therefore, paragraphs [0045]-[0046] fail to support the
Examiner’s assertion that the same monomers are used to form
the high molecular weight layer 331 and the spacer 321.
Accordingly, the Examiner's assertion that an examination of
the chemical affinity of the high molecular layer 331 would
demonstrate the chemical affinity of the material of the spacer
is a conclusory statement that is completely unsubstantiated by
the disclosure of Kim.

(App. Br. 8.)
A preponderance of the evidence supports the Appellants’ position
that the Examiner is misreading Kim’s disclosure in order to arrive at the
conclusion that the material of the spacer may be made of NOA-65.
Moreover, as pointed out by Appellants, while the Examiner further relies
upon Parks to describe that the alignment layer material has good affinity
with the liquid crystal molecules, this does not teach or suggest the relative
affinity of the spacer material as recited in claim 1 (Reply Br. 11). The
Examiner states
[I]t would have been obvious to one or ordinary skill in the art
to recognize that an alignment layer would need to have a
greater chemical affinity for the liquid crystal layer than it
would for the monomer material of the spacer 321 of Kim in
order to prevent the monomers of the material of the spacer 321
that also forms the high molecular weight layer 331 from
forming a layer between the alignment layer (Kim: 23, Fig. 3)
and the liquid crystal layer (Kim: 3, Fig. 3) of Kim, which
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would consequently interfere with the purpose of the alignment
layer to align the liquid crystal molecules.

(Ans. 21–22.)
Appellants, however, contend that
[I]t is the relative buoyancies of the high molecular weight layer
331 and the liquid crystal layer 3 that result in the formation of
the high molecular weight layer 331 on the upper substrate 210.
Therefore, regardless of the relative affinities of the various
elements, a layer of the high molecular weight material would
not form between the alignment layer 23 and the liquid crystal
layer 3, due to displacement by the liquid crystal layer 3
resulting from the phase-separation, as is asserted by the
Examiner.
As such, the Examiner's assertion that the location of the
high molecular weight layer 331 is due to relative chemical
affinities and not the effects of gravity/relative buoyancies is
clearly in error and is unsupported by the cited art.

(Reply Br. 12.)

A preponderance of the evidence supports Appellants’ position that
the Examiner’s reasoning has not adequately established that the applied
prior art teaches or suggests the required relative chemical affinities of the
materials of the first thin film, the spacer, the liquid crystal layer, and the
first alignment layer as recited in Appellants’ claim 1.
On the record before us, the Examiner has not shown that each and
every limitation of the claim is either described or suggested by the prior art
or would have been obvious based on the knowledge of the ordinary artisan.
See In re Fine, 837 F.2d at 1074; see also In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a
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factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). The fact finder must be
aware “of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
Accordingly, we reverse the rejections.
ORDER
It is ordered that the Examiner’s decision is reversed.
REVERSED

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