Ex Parte McLaughlin et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10415194 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES McLAUGHLIN,
PAUL DAMIAN MAGUIRE,
and ERIC THOMAS McADAMS
__________

Appeal 2009-003785
Application 10/415,194
Technology Center 1700
___________

Decided:1June 30, 2009
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-003785
Application 10/415,194

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-8, 10-15, 22-26, and 29-35.2 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
Claims 1 and 7, reproduced below, are the only independent claims on
appeal.
1. A method for the reduction of impedance of a surface of
a silver electrode comprising

treating the surface with a chlorine plasma, and

maintaining the treated surface for use as the surface of
the silver electrode.

7. A method for the reduction of impedance of a surface of
a metal comprising

treating the surface with a chlorine plasma, and

maintaining the treated surface of the metal for use as a
surface of an electrode.

App. Br. 10, Claims Appendix (formatting added).3
The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 2, 7, 8, 10-15, 22-26, and 29-35 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Takahashi4 and
Buck.5

2 Claims 17 and 18 are also pending but have been withdrawn from
consideration.
3 Appeal Brief dated July 18, 2008.
4 Japanese document 11-135507A published May 21, 1999. Reference
herein is to the English translation of record in the instant Application.
5 US 6,294,062 B1 issued to Buck on September 25, 2001.
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Appeal 2009-003785
Application 10/415,194

(2) Claims 3-6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Takahashi, Buck, and Okuda.6
B ISSUE
Have the Appellants shown reversible error in the Examiner’s
conclusion that “maintaining the treated surface” as recited in method claims
1 and 7 would have been obvious to one of ordinary skill in the art in view
of the combined teachings of Takahashi and Buck?
C. FINDINGS OF FACT
1. Takahashi
Takahashi Figures 2(a) through 2(e), reproduced below, illustrate a
manufacturing process for a liquid crystal display device. Takahashi, para.
[0034].

Takahashi Figs. 2(a) through 2(e) depict a
manufacturing process.

6 US 5,874,174 issued to Okuda on February 23, 1999.
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Appeal 2009-003785
Application 10/415,194

As shown in Figure 2(a), a silver layer 106 is deposited on the surface
of an insulating film 103. Takahashi, para. [0037].
As shown in Figure 2(b), a mask is formed on the silver layer 106
using a photoresist 107. Takahashi, para. [0038].
The unmasked portion of the silver layer 106 is subsequently
removed. Specifically, as shown in Figure 2(c), the portion of the silver
layer 106 to be removed is converted to silver halide or silver oxide using
halogen gas plasma or oxygen plasma. In this embodiment, the portion of
the silver layer 106 to be removed is converted to AgCl 108 by anisotropic
chlorine plasma processing. Takahashi, para. [0039].
As shown in Figure 2(d), the AgCl 108 that is produced in the
previous step is dissolved and removed using an aqueous ammonia solution.
Takahashi, para. [0042].
2. Buck
Buck discloses a method and device for detecting and quantifying
biologically significant analytes in a liquid sample. Buck 1:9-11.
According to the disclosed method, the sample is contacted with a
reference electrode and at least first and second working electrodes. Buck
6:33-7:15.
In one embodiment, Buck employs a silver/silver chloride electrode
that is produced by a lithographic process and then electroplated with silver
and silver chloride according to standard techniques. Buck 26:63-27:1.
D. ANALYSIS
The Appellants argue that Takahashi teaches away from the claimed
subject matter because the surface of silver layer 106 is treated for the sole
purpose of removing it. App. Br. 5-6.
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Appeal 2009-003785
Application 10/415,194

In response, the Examiner contends that “maintaining the treated
surface for use as a surface of an electrode is an intended use limitation” and
“the treated surface of Takahashi can be used as an electrode prior to
additional processing.” Ans. 7.7
The Examiner’s position appears to misconstrue the language of
claims 1 and 7. The claims on appeal are not directed to an apparatus.
Rather, claim 1 recites a method comprising the steps of (1) treating a
surface of a silver electrode with a chlorine plasma and (2) maintaining the
treated surface. Similarly, claim 7 recites a method comprising the steps of
(1) treating a metal surface with a chlorine plasma and (2) maintaining the
treated surface. App. Br. 10, Claims Appendix.
Takahashi discloses a manufacturing process comprising the steps of
(1) treating a portion of the silver layer 106 using anisotropic chlorine
plasma processing and (2) removing, not maintaining, the treated portion of
the silver layer 106, i.e., AgCl layer 108. See Takahashi, paras. [0039],
[0042]. Significantly, the Examiner has failed to explain why the step of
“maintaining” the treated surface, as recited in claims 1 and 7, would have
been obvious to one of ordinary skill in the art in view of this disclosure in
Takahashi.
The Examiner also found that Buck teaches that silver/silver chloride
electrodes were known to be useful. Based on this teaching, the Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to maintain the treated silver surface in Takahashi. Ans. 3-4, 7.
The Appellants argue that one skilled in the art would not have found
it obvious to modify the Takahashi method according to the teachings in

7 Examiner’s Answer dated September 3, 2008.
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Appeal 2009-003785
Application 10/415,194

Buck because the teachings of Takahashi and Buck are unrelated. App. Br.
6.
With or without the teachings of Buck, we recognize that silver/silver
chloride electrodes were known at the time of the Appellants’ invention.
See, e.g., Spec. 1:8-12. That being said, the Examiner has failed to explain
why one of ordinary skill in the art would have found a silver chloride layer
useful in the device of Takahashi, especially in view of the fact that
Takahashi removes such a layer in the disclosed process. For this reason,
the Examiner has failed to establish that maintaining the AgCl layer 108 in
the process of Takahashi would have been obvious to one of ordinary skill in
the art.8 See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (legal
conclusion of obviousness must be supported by “some articulated reasoning
with some rational underpinning”).
In sum, the Appellants have shown reversible error in the Examiner’s
conclusion that “maintaining the treated surface” as recited in method claims
1 and 7 would have been obvious to one of ordinary skill in the art in view
of the combined teachings of Takahashi and Buck.
E. DECISION
The decision of the Examiner is reversed.

REVERSED

tc

8 The Examiner does not direct us to any teaching or suggestion in Okuda
regarding the “maintaining” step recited in claims 1 and 7. See Ans. 5-6.
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Appeal 2009-003785
Application 10/415,194

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