Ex Parte Sato et al

Board of Patent Appeals and Interferences

Aug 21, 2012

09771547 (B.P.A.I. Aug. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/771,547 01/30/2001 Toshiyuki Sato D-1059 8819
7590 08/21/2012
HAUPTMAN KANESAKA BERNER PATNET AGENTS, LLP
1700 Diagonal Road
Suite 310
Alexandria, VA 22314
EXAMINER
AGGARWAL, YOGESH K
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
08/21/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOSHIYUKI SATO and SATOSHI TOKUDA
____________
Appeal 2010-005112
Application 09/771,547
Technology Center 2600
____________

Before DEBRA K. STEPHENS, DAVID M. KOHUT and
RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005112
Application 09/771,547

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner‟s non-
final rejection of claims 1, 4, 5, and 7. (App. Br. 2). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants‟ inventions “relates to a radiation detector for industrial
and medical purposes, more particularly, a direct-converting-type radiation
detector using a converting layer for absorbing light or radiation to generate
a pair of electron-hole[s].” (Spec. ¶ [0001]).
Illustrative Claim
1. A radiation detector comprising:
an active matrix board including gate lines and data lines
arranged in a two-dimensional lattice shape, a plurality of high-
speed switching elements provided at respective lattice points
and connected to the gate lines and the data lines, each
switching element being formed of a polycrystalline silicon thin
film transistor and having a source electrode, pixel electrodes
connected to the source electrodes of the high-speed switching
elements, and charge storage capacitances, each being disposed
between the pixel electrode and a ground electrode; and
a converting layer, formed on the pixel electrodes, to
generate a pair of electron-holes by absorbing radiation, said
converting layer being formed of a vapor-deposited
polycrystalline film of CdTe or CdZnTe.

Prior Art Relied Upon
Ikeda US 6,403,965 B1 Jun. 11, 2002
Yamazaki US 2002/0163035 A1 Nov. 7, 2002
Appellants‟ Admitted Prior Art (AAPA)
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Rejections on Appeal
1. Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Appellants‟ “admitted prior art” in view of Ikeda.
(Ans. 4-5).
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Appellants‟ “admitted prior art” in view of Ikeda and
Yamazaki. (Ans. 6-7).

Examiner’s Findings and Conclusions
1. The Examiner finds that Ikeda teaches the motivation to
combine the teachings of Appellants‟ admitted prior art with Ikeda to use
poly-silicon as the TFT forming material in order to decrease the size of a
TFT so that the effective area of each pixel can be increased. (Ans. 6
(citing Ikeda 12:1-10)). In addition, because the peripheral circuits can be
prepared on the same glass substrate, it allows for a decrease in production
costs, including the costs for the peripheral circuits. (Id.)
2. The Examiner recognizes the incompatibility taught in
Appellants‟ admitted prior art—if a polycrystalline film of CdTe and
CdZnTe is formed as a converting layer, instead of amorphous selenium, a
film forming temperature higher than 300 degrees C° is required, but the
active matrix board made of TFT (thin-film transistor) amorphous silicon,
poses a problem because of the limited heat resistant temperature of 250
degrees C°. (Ans. 7). Thus, as the Examiner recognizes, the heart of
Appellants‟ invention is to form the switching elements from poly-
crystalline silicon TFT having a film-forming temperature of more than 300
degrees C° to combat the problem recognized in Appellants‟ admitted prior
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art. (Id.) The Examiner further recognizes that Ikeda teaches that the
purpose of using polysilicon to form the TFTs (i.e., the claimed “switching
elements”) is to decrease the size of a TFT so that the effective area of each
pixel can be increased. (Ans. 8 (citing Ikeda (Figures 1 and 2)). The
Examiner concludes, however, that while there must be motivation to make
the claimed invention, there is no requirement that the prior art provide the
same advantage or result as discovered by the Applicants to make the
claimed invention. (Ans. 10 (citing MPEP § 2144 and In re Linter, 458 F.2d
1013 (CCPA 1972)).

Appellants’ Contentions
Appellants contend that:
1. There is no suggestion or motivation in either Appellants‟
“admitted prior art” or Ikeda that would lead a person of ordinary skill in the
art to select the references and combine them in a way that would result in
the invention claimed by any of claims 1, 4, and 7 (App. Br. 7-8);
2. The Examiner used impermissible hindsight to arrive at the
proposed modification (App. Br. 11);
3. Ikeda does not teach or suggest the claim element “each
switching element being formed of a polycrystalline silicon thin film
transistor” as recited because the purpose of using polysilicon to form the
thin film resistor (“TFT”) is to reduce the size of the TFT so that the
effective area of each pixel can be increased. (App. Br. 9-10). According to
Appellants, the claimed invention is based on part in developing a solution
to the problem that there is an incompatibility between the film forming
temperature required for a polycrystalline film of CdTe and CdZnTe as a
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converting layer and the heat resistant temperature of TFTs formed from
amorphous silicon. (Reply Br. 5; See Ans. 7 (citing Appellants‟ “admitted
prior art” ¶ 10)). Thus, Appellants conclude, the problem disclosed in
Appellants‟ admitted prior art deters a person of ordinary skill from directly
forming a polycrystalline film of CdTe and CdZnTe on the active matrix
board formed from amorphous silicon, and does not lead a person of
ordinary skill to use poly-silicon as the material for TFTs. (Reply Br. 5-6).

II. ISSUES
1. Did the Examiner err in concluding that the combination of
Appellants‟ “admitted prior art” and Ikeda renders claims 1 unpatentable
because the recited limitations are not taught or suggested?
2. Did the Examiner improperly combine AAPA and Ikeda?

III. ANALYSIS
We have reviewed the Examiner‟s rejection in light of Appellants‟
contention that the Examiner has erred. We disagree with Appellants‟
conclusions and instead agree with and adopt the Examiner‟s findings and
conclusions. We highlight and address specific arguments for emphasis as
follows.
Claims 1, 4, and 7: 35 U.S.C. § 103(a) Rejection—Combination of
Appellants’ “admitted prior art” and Ikeda
We find that the Examiner has identified a reasonable motivation to
combine the “admitted prior art” and Ikeda. Specifically, Ikeda teaches
using poly-silicon as the material for TFTs in order to decrease the size of a
TFT so that the effective area of each pixel can be increased. (Ans. 6).
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Also, the Examiner explains that because the peripheral circuits can be
prepared on the same glass substrate, it is possible to decrease production
costs including the costs for the peripheral circuits. (Id. (citing Ikeda 12:1-
10)). We are not persuaded that the Examiner improperly used hindsight to
identify the motivation to combine.
In addition, it is of no matter that Ikeda teaches using poly-silicon for
the TFTs (the claimed “switching elements”) for a different purpose, i.e., to
decrease the size of TFTs (Ans. 8), than recognized by Appellants, i.e., to
increase the heat resistance of the active matrix board to withstand the film-
forming temperature required for a stable polycrystalline converting layer,
including CdTe and CdZnTe (Ans. 8 (citing Spec. ¶ [0029])). In In re
Lintner, the court stated:
The fact that appellant uses sugar for a different purpose does
not alter the conclusion that its use in a prior art composition
would be prima facie obvious from the purpose disclosed in the
references.

Differences between a patent applicant's and the prior art‟s
motivation for adding an element to a composition may be
reflected in the composition ultimately produced. A claimed
composition may possess unexpectedly superior properties or
advantages as compared to prior art compositions. In this way,
the conclusion of prima facie obviousness may be rebutted and
the claimed subject matter ultimately held to be legally
nonobvious.

In re Lintner, 458 F.2d at 1016 (emphasis added). See also 2 D. Chisum,
Patents, § 5.04[6] at 5-325 (1989) (“The fact that the prior art „suggests' the
modification for a different purpose is irrelevant to the issue of prima facie
obviousness though it is relevant to rebuttal of prima facie obviousness.”).
Therefore, we agree with the Examiner‟s findings that the combination of
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the “admitted prior art” and Ikeda teaches or suggests all the disputed
limitations of claims 1, 4, and 7.
Claim 5: 35 U.S.C. § 103(a) Rejection—Combination of Appellants’
“Admitted Prior Art,” Ikeda, and Yamazaki
Appellants argue that Yamazaki‟s disclosure does not rectify the
deficiencies of the “admitted prior art” and Ikeda as argued with respect to
claims 1, 4, and 7. (App. Br. 11-12). For the same reasons discussed above
with respect to claim 1, we agree with the Examiner‟s conclusion that the
combination of Appellants‟ “admitted prior art,” Ikeda, and Yamazaki
discloses all the disputed limitations of claim 5.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1, 4, 5, and 7 as being
unpatentable under 35 U.S.C. § 103(a) for the reasons discussed above.
Claims 1, 4, 5, and 7 are unpatentable.

V. DECISION
We affirm the Examiner‟s decision to reject claims 1, 4, 5, and 7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD