Ex Parte Kazlas et al

Patent Trial and Appeal Board

Oct 31, 2016

12987418 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/987,418 01/10/2011
26245 7590 11/02/2016
E INK CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
1000 Technology Park Drive
Billerica, MA 01821-4165
FIRST NAMED INVENTOR
Peter T. Kazlas
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.
H-360DIV 8491
EXAMINER
NGUYEN, KHIEM D
ART UNIT PAPER NUMBER
2823
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
IP@eink.com
dcole@eink.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER T. KAZLAS, JOANNA F. AU, YU CHEN,
andNATHANR. KANE
Appeal2015-004408
Application 12/987,418
Technology Center 2800
Before JEFFREY T. SMITH, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In our Decision below we refer to the Specification filed January 10, 2011
(Spec.), the Final Office Action appealed from mailed September 3, 2013
(Final Act.), the Appeal Brief filed October 3, 2014 (Br.), and the
Examiner's Answer mailed December 26, 2014 (Ans.).
Appeal2015-004408
Application 12/987,418
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1--4 under 35 U.S.C. § 103(a) as follows 3 :
1. Claims 1 and 2 over Harris4 and Yu5; and
2. Claims 3 and 4 over Harris, Yu, and Nagayama. 6
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a process for forming a plurality of
electronic components on a polymeric material coating a metal substrate.
Claim 1 is illustrative:
1. A process for forming a plurality of electronic
components on a polymeric material coating a metal substrate,
the process comprising forming a plurality of discrete areas of
polymeric material on the metal substrate and thereafter forming
the plurality of electronic components including at least one thin
film transistor on the discrete areas of polymeric material.
Claims App'x at Br. 15.
Appellants do not separately argue the patentability of dependent
claims 2--4. Br. 11-13. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), and
based upon the lack of arguments directed to the subsidiary rejection, claims
2--4 will stand or fall together with independent claim 1.
2 Appellants identify E Ink Corporation as the real party in interest. Br. 3.
3 The Appeal Brief includes anticipation by Jacobson et al., US 6,323,989 as
a ground of rejection to be reviewed. Br. 8. This appears to be a
typographical error as Jacobson is not included in the Final Rejection or in
Appellants' argument. Id. at 9.
4 Harris, US 6,127,725, issued Oct. 3, 2000.
5 Yu, US 6,300,612 Bl, issued Oct. 9, 2001.
6 Nagayama et al., US 5,701,055, issued Dec. 23, 1997 ("Nagayama").
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Appeal2015-004408
Application 12/987,418
OPfNION
Regarding claim 1, the Examiner finds that Harris teaches forming a
plurality of discrete areas of insulator material on a metal substrate and
thereafter forming a plurality of electronic components including at least one
thin film transistor on the discrete areas of insulator material. Final Act. 2-3
(citing Harris 6:23-7 :22, Fig. 7, items 24, 52). The Examiner further finds
that Harris teaches glass or sapphire as examples of the insulator material
and not polymeric material, but Yu discloses forming a plurality of thin film
transistors on an insulator material wherein the insulator material is glass or
a polymeric material. Id. at 3 (citing Harris 6:42, 8:2; Yu 7:9-20). The
Examiner also finds that it would have been obvious for one having ordinary
skill in the art to modify the method of Harris with polymeric material of Yu
because evidences that "insulator materials such as glass and polymeric
material are interchangeable ... in the process for manufacturing [a]
semiconductor device." Id.
Appellants contend that the Examiner's rejection of claim 1 is in error
because "[g]lass and sapphire insulators are well adapted for use in the
Harris process; polymeric insulators are not" and assert that Harris' s
omission of polymeric insulators was deliberate and not "simple ignorance
of Harris regarding such insulators" because "the scanning carbon dioxide
laser which Harris proposes to use would appear highly problematic" for
polymeric particles. Br. 12-13. Appellants concede that "Yu does describe
forming a 'semiconductor device' on a polymeric insulator" but contend "no
skilled worker would modify Harris in view of Yu" because Yu's
"semiconductor device is a photodiode, not a thin film transistor." Id. at 13.
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Appeal2015-004408
Application 12/987,418
Additionally, Appellants note that "Yu is not forming a semiconductor
device on a polymeric layer on a metal substrate." Id.
The Examiner responds that "Harris does not specifically exclude
polymeric materials as the substrate material" and that "one of ordinary skill
in the art would control the conditions of the scanning carbon dioxide laser
for the specific material comprising the substrate so as not to damage the
substrate material." Ans. 7. The Examiner also finds that "one of ordinary
skill in the art would be motivated to interchange the glass material for the
polymeric material of Yu if a flexible substrate is desired" as taught by Yu.
Id. at 7-8 (citing Yu 9: 17-26). The Examiner further finds that Yu teaches
that "polymeric material can be used for thin film transistors" as well as
glass or sapphire. Id. at 9 (citing Yu 21:1-10).
We are not persuaded by Appellants' arguments and find that the
preponderance of the evidence supports the rejection of claim 1 for the
reasons provided by the Examiner in the Final Action and the Answer. Final
Act. 2--4; Ans. 2-10. We add the following for emphasis.
Both Harris and Yu describe forming thin film transistors on a
substrate and further describe features of the claimed process having the
benefit of adding flexibility to the product formed. Ans. 6 (citing Harris
7: 16-22), 8 (citing Yu 9: 17-26). Yu establishes the interchangeability of
polymeric material for the glass or sapphire taught in Harris and, specifically
their use with thin film transistors. Ans. 9 (citing Yu 21:1-10). "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellants have not shown that it
would have been beyond the skill of one having ordinary skill in the art to
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Appeal2015-004408
Application 12/987,418
control the conditions of Harris' s scanning carbon dioxide laser given the
materials used in the substrate, specifically polymeric material. Nor have
Appellants shown that the substitution of Yu's polymeric material for
Harris' s glass or sapphire would have been unpredictable. Therefore, the
preponderance of the evidence on this record supports the rejection of claim
1 over the combination of Harris and Yu.
In sum, Appellants have not persuaded us of a reversible error in the
Examiner's finding that insulator materials such as glass and polymeric
material are interchangeable in view of Yu.
CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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