Ex Parte Park

Patent Trial and Appeal Board

Aug 16, 2016

12707854 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121707,854 02/18/2010
58027 7590 08/18/2016
RC PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
FIRST NAMED INVENTOR
Sang-Hun PARK
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.
P4193USOO 3339
EXAMINER
SHAH,PRIYANKJ
ART UNIT PAPER NUMBER
2692
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SANG-HUN PARK
Appeal2015-000109
Application 12/707,854
Technology Center 2600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000109
Application 12/707,854
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-25 and 33-36. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
formatting added):
1. A flat panel display apparatus, comprising:
a substrate;
a display unit disposed on the substrate, the display unit
comprising a plurality of display elements;
a sealing unit disposed on the substrate surrounding an
edge of the display unit;
an alignment mark unit disposed between an emission
area of the display unit and the sealing unit; and
an encapsulation substrate sealed to the substrate by the
sealing unit and encapsulating the display unit and the
alignment mark unit, the encapsulation substrate comprising an
alignment mark recognition structure disposed in a portion of
the encapsulation substrate facing the alignment mark unit.
Rejections
The Examiner rejected claims 1, 3-5, 7, 8, 11, 13, 17, and 33 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Kondo
(US 2009/0091701 Al; published Apr. 9, 2009) and Watanabe et al. (US
6,295,107 Bl; issued Sept. 25, 2001). 1
1 Separate patentability is argued for claims 1 and 33. Separate patentability
is not argued for claims 3-5, 7, 8, 11, 13, and 1 7. Except for our ultimate
decision, claims 3-5, 7, 8, 11, 13, and 17 are not discussed further herein.
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Application 12/707,854
The Examiner rejected claims 18 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Takashima et al. (US
2009/0039772 Al; published Feb. 12, 2009), Kondo, and Ban et al. (US
2007/0058904 Al; published Mar. 15, 2007).2
The Examiner rejected claims 2, 6, 9, 10, 12, 14--16, 20-25, and 34--
36 under 35 U.S.C. § 103(a) as being unpatentable over of Kondo and
Watanabe in various combinations with other references, and Takashima,
Kondo, and Ban in various combinations with other references. 3
Appellant's Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he reference or references, when combined, must disclose or
suggest every claimed feature. See In re Vaeck, 947 F.2d 488,
20 USPQ2d 1438 (Fed. Cir. 1991).
App. Br. 6-7.
2 Separate patentability is not argued for claim 19. Except for our ultimate
decision, this claim is not discussed further herein.
3 Separate patentability is not argued for claims 2, 6, 9, 10, 12, 14--16, 20-
25, and 34--36. Rather, Appellant addresses these claims only by
referencing the arguments for the claims from which they depend. App. Br.
15. Thus, the rejections of these claims tum on our decision as to the parent
claims. Except for our ultimate decision, these claims are not discussed
further herein.
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Application 12/707,854
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) as Kondo teaches away from the claimed
"alignment mark unit disposed between an emission area of the display unit
and the sealing unit" requirement, because:
In a comparative example, Kondo teaches that a gap region 55a
may be provided to avoid a problem that an ultraviolet ray for
curing the seal material 52 can be blocked by a frame light-
shielding film 53 resulting in a seal material 52 not being cured
by overlapping a frame region 53a (Kondo: FIG. 8; i-f [0080]).
Kondo explicitly states "it is preferable that the gap region 55a
is formed as small as possible according to a manufacturing
tolerance of the seal material 52 and the frame light-shielding
film 53" (Kondo: i-f [0080]; emphasis added).
App. Br. 9.
[W]hile Kondo discloses an alignment mark 200c formed in a
gap region 55a, the nature of Kondo's disclosure (i.e., an
alignment mark 200c formed in a gap region 55a) in FIG. 8 as a
non-preferred comparative example[, it] must be considered in
conjunction with Kondo' s preferred embodiment of alignment
marks 200 being formed in comer regions 61 a as collectively
leading an ordinarily skilled artisan away from "an alignment
mark unit disposed between an emission area of the display unit
and the sealing unit", as recited in Appellant's claim 1. A
PHOSITA would not, in view of Kondo, form alignment marks
between an emission area and a sealing unit.
App. Br. 10.
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Application 12/707,854
3. Appellant contends that the Examiner erred in rejecting claim
33, an independent claim that requires, inter alia, an "encapsulation
substrate comprising an alignment mark recognition structure facing the
alignment mark unit within the sealed area," under 35 U.S.C. § 103(a)
because:
Kondo teaches that it is preferable not to form the alignment
mark 200 in the gap region 55a and that implementing an
alignment mark 200c in the gap region 55a would
disadvantageously not allow the image display region lOa to be
increased or a width of the gap region 55a to be decreased due
to the presence of the alignment mark 200c in the gap region
55a.
App. Br. 12.
4. Appellant also contends that the Examiner erred in rejecting
claim 33 under 35 U.S.C. § 103(a) because:
[A ]ny purported combination of the teachings of Kondo and
Watanabe would be unobvious and improperly involve
unpredictable changes to Kondo and/or Watanabe. . . . [I]t is
not clear how alignment marks would be placed in an area
where micro-lenses 106 are formed for allowing transmission
of light. As would be understood by a PH OS IT A,
implementing alignment marks in the sealed area in place of at
least some micro-lenses 106 may impair the transmission of
light within the sealed region.
App. Br. 12-13.
5. Appellant contends that the Examiner erred in rejecting claim
18, an independent claim that requires, inter alia, an "alignment mark
unit. .. disposed between an emission area of the display unit and the sealing
unit," and an "encapsulation substrate comprising an alignment mark
recognition structure disposed in a portion of the encapsulating substrate
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Application 12/707,854
facing the alignment mark unit with the sealed area," under
35 U.S.C. § 103(a) because:
Ban discloses providing alignment marks 104a on an end face
103 of a protruding portion of a lens member 101 (Ban: FIGS.
3, 13A-14C), but does not teach or suggest that alignment
marks are disposed between an emission area of a display unit
and a sealing unit.
App. Br. 14; emphasis omitted.
Issue on Appeal
Did the Examiner err in rejecting claims 1, 18, and 33 as being
obvious for the reasons argued by Appellant?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
Although we find the Examiner's response in the Answer (Ans. 2-10) 4 to be
decidedly unhelpful, we disagree with Appellant's conclusions.
As to Appellant's above contention 1, we disagree. Appellant cites to
the venerable Vaeck decision by the Court of Appeals without
4 For example, the Examiner cites to MPEP 2131. 05 for a proposition and
analysis in "the context of anticipation analysis as applied herein," all of
which is irrelevant for the obviousness rejection at issue (Ans. 3--4), and the
Examiner repeatedly references In re Keller, 642 F .2d 413 (CCP A 1981)
("cannot show nonobviousness by attacking references individually") (Ans.
5 and 7), yet we find the holding in Keller to have no pertinent relevance to
addressing these particular arguments by Appellant. Further, the Examiner
does not cite Keller as to arguments where it does have pertinence (as
discussed below).
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Application 12/707,854
acknowledging that this holding was modified by the Court's holding in
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellant's argument
fails because it does not account for the impact of the KSR decision, in
which the Court repudiated any requirement for such a "teaching or
suggestion" to show obviousness. KSR, 550 U.S. at 415 ("We begin by
rejecting the rigid approach of the Court of Appeals."). Rather, the
requirement is only that the Examiner show "the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains." KSR,
550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418
("[T]he analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ."). We conclude that the Examiner articulates just such a showing
in the rejection from which this appeal is taken. Final Act. 2-5.
As to Appellant's above contention 2, we disagree. Appellant argues,
"Kondo explicitly states 'it is preferable that the gap region 55a is formed
as small as possible"' (App. Br. 9) and therefore Kondo is "leading an
ordinarily skilled artisan away from 'an alignment mark unit disposed
between an emission area of the display unit and the sealing unit."' (App.
Br. 10). We disagree. "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference ... would be led in a
direction divergent from the path that was taken by the applicant." In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001). A reference does not teach
away if it merely expresses a general preference for an alternative invention
from amongst options available to the ordinarily skilled artisan, and the
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Application 12/707,854
reference does not discredit or otherwise discourage investigation into the
invention claimed. In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). We
do not find a teaching away in the situation here presented before this Board.
Appellant insists that at most it can be argued, "FIG. 8 as a non-
preferred comparative example must be considered" (App. Br. 10).
However, we find that being a less effective alternative is not a teaching
away. "A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994);
see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (no teaching
away when Appellant failed "to cite any reference suggesting that the
claimed invention would be unlikely to work using electrical circuitry ...
only that it may be inferior for certain purposes.") Although Kondo may
disclose the advantages of an alignment mark outside the gap region, it does
not teach away from the use of an alignment mark inside the gap region.
Therefore Appellant's argument that Kondo teaches away from the asserted
combination is not persuasive of Examiner error.
As to Appellant's above contention 3, we disagree with Appellant's
argument for the same reasons discussed above with respect to contention 2.
We adopt the Examiner's findings and reasons in the rejection of claim 33.
Final Act. 9-11.
As to Appellant's above contention 4, Appellant concludes that a
POSIT A at the time of invention did not possess the knowledge or skills
necessary to combine the teachings of Kondo and Watanabe to realize "how
alignment marks would be placed in an area where micro-lenses 106 are
formed for allowing transmission of light" (App. Br. 12) of independent
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Application 12/707,854
claim 33. We disagree. Appellant's own specification uses a high level
description of the alignment marks/lens system (Spec. pp. 10-11, i-fi-1 55-58),
and then relies on the knowledge of the artisan to provide enablement of the
invention. Appellant is arguing that the rejection fails because it relies on
essentially the same artisan knowledge as Appellant's own disclosure. We
are not persuaded by this argument.
As to Appellant's above contention 5, we disagree. Appellant argues
that Ban "does not teach or suggest that alignment marks are disposed
between an emission area of a display unit and a sealing unit." App. Br.
14. However, the Examiner did not cite Ban for the limitation. Rather, the
Examiner cited Kondo for teaching "an alignment mark unit (200c) formed
between an emission area of the display unit (lOa) and the sealing unit (52)."
Final Act. 13.
We conclude that Appellant's argument ignores the actual reasoning
of the Examiner's rejections. Instead Appellant attacks the Ban reference
singly for lacking a teaching that the Examiner relied on a combination of
references to show. It is well established that one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). The effect of
Appellant's argument is to raise and then knock down a straw man rejection
of claim 1 that was never made by the Examiner, in that the Examiner did
not rely solely on Ban as argued. In other words, Appellant argues
Examiner findings that were never made. This form of argument is
inherently unpersuasive to show Examiner error. Our reviewing court
requires that references must be read, not in isolation, but for what they
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fairly teach in combination with the prior art as a whole. Merck, 800 F.2d at
1097 (Fed. Cir. 1986).
CONCLUSION
(1) The Examiner has not erred in rejecting claims 1-25 and 33-36
as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-25 and 33-36 are not patentable.
DECISION
The Examiner's rejections of claims 1-25 and 33-36 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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