Ex parte Zimmerman

Board of Patent Appeals and Interferences

Jun 3, 1998

08028047 (B.P.A.I. Jun. 3, 1998)

Application for patent filed March 8, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEVEN M. ZIMMERMAN
__________
Appeal No. 97-1932
Application 08/028,0471
__________
ON BRIEF
__________
Before URYNOWICZ, JERRY SMITH, and FLEMING, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 13-18 and 25-34.
Appeal No. 97-1932
Application 08/028,047
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Claims 1-5, 9-12 and 19-24 have been cancelled. Claims 6-8
have been allowed by the examiner.
The disclosed invention pertains to a field emission
display (FED) device. Such a device has a cathode emitter for
emitting electrons which are caused to impinge on an anode
layer by the application of an electric field. The anode
layer is attached to a transparent face plate having a
phosphor layer deposited thereon. The impingement of the
electrons on the phosphor layer causes light to be generated
which can be viewed through the face plate.
Representative claim 25 is reproduced as follows:
25. A field emission display (FED) device comprising:
a transparent face plate having a thin film phosphor
layer deposited thereon;
a conductive anode layer deposited on the phosphor layer;
at least one insulator layer serving as a spacer and
deposited on the anode layer;
a conductive extraction grid layer deposited upon the at
least one insulator layer, said conductive extraction grid
layer, said at least one insulator layer and said anode layer
being etched to form an array of vacuum space holes extending
to said phosphor layer;
an electron emitter layer molded in a form of an array of
lithographically-formed, sharply-pointed cathode structures, a
Appeal No. 97-1932
Application 08/028,047
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plurality of sharply-pointed cathode structures being provided
per picture element, said array of sharply pointed cathode
structures being separated from the extraction grid layer by a
second insulator layer, said electron emitter layer being
formed of a material for emitting electrons under influence of
an electric field; and
an envelope sealed to the face plate and enclosing the
emitter layer, said extraction grid layer and said phosphor
layer in a vacuum,
said transparent face plate, said thin film phosphor
layer, said conductive anode layer, said at least one
insulator layer, said conductive extraction grid layer and
said electron emitter layer forming a unitary, monolithic
structure.
The examiner relies on the following references:
Oess et al. (Oess) 4,020,381 Apr. 26, 1977
Shmulovich 4,626,739 Dec. 02, 1986
Kishino et al. (Kishino) 5,153,483 Oct. 06, 1992
The admitted prior art disclosed in appellant’s specification.

Claims 25, 26 and 29-34 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the teachings of Oess in view
of Kishino. Claims 27 and 28 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Oess and
Kishino and further in view of the admitted prior art. Claims
13 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Kishino in view of
Appeal No. 97-1932
Application 08/028,047
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Shmulovich. Finally, claims 15-18 stand rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of
Kishino and Shmulovich and further in view of the admitted
prior art.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record
before us, that the collective evidence relied upon and the
level of skill in the particular art would have suggested to
one of ordinary skill in the art the obviousness of the
Appeal No. 97-1932
Application 08/028,047
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invention as set forth in claims 25-34. We reach the opposite
conclusion with respect to claims 13-18. Accordingly, we
affirm-in-part.
Appellant has nominally indicated that the claims do
not stand or fall together [brief, pages 4-6], but he has not
specifically argued the limitations of each of the claims as
required by 37 CFR § 1.192. The extent of appellant’s
arguments, with respect to each of the different rejections,
appears on pages 13-14 and 18-19 of the brief wherein it is
stated what is recited in each of the claims and then it is
baldly asserted that the prior art does not teach or suggest
the features of these claims with no analysis or discussion of
obviousness whatsoever. Simply pointing out what a claim
requires with no attempt to point out how the claims
additionally patentably distinguish over the prior art does
not amount to a separate argument for patentability. See In
re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed.
Cir. 1987). At the time appellant’s brief was filed, 37 CFR §
1.192(c)(7) required that the argument explain
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Application 08/028,047
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“why the claims...are believed to be separately patentable.
Merely pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.” Appellant’s arguments fail to satisfy this
requirement as a basis to have the claims considered
separately for patentability. Since appellant is considered
to have made no appropriate separate arguments for
patentability, all claims within each separate rejection will
stand or fall together. Note In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d
989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
We consider first the rejection of claims 25, 26 and
29-34 under 35 U.S.C. § 103 as unpatentable over Oess in view
of Kishino. As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
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Application 08/028,047
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the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
The examiner has pointed out the teachings of Oess,
has pointed out the perceived differences between Oess and the
claimed invention, and has reasonably indicated how and why
Oess would have been modified and/or combined with Kishino to
arrive at the claimed invention. The examiner has, therefore,
at least satisfied the burden of presenting a prima facie case
of obviousness. The burden is, therefore, upon appellant to
come forward with evidence or arguments which persuasively
rebut the examiner's prima facie case of obviousness.
Appellant has presented several arguments in response to the
examiner’s rejection. Therefore, we consider obviousness
based upon the totality of the evidence and the relative
persuasiveness of the arguments.
Appeal No. 97-1932
Application 08/028,047
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The examiner basically relies on Oess for teaching all
the features of independent claim 25 except for the plurality
of sharply-pointed cathode structures for each picture
element. Oess discloses a single “sharply-pointed” cathode
structure for each picture element. Kishino teaches the
desirability of using a plurality of sharply-pointed cathode
structures for each picture element. In the examiner’s view,
it would have been obvious to incorporate Kishino’s plural
cathode structure into Oess’ display device.
Appellant argues that the rejection is wrong as a
matter of law because Oess is not directed to field emission
displays and the combination of Oess with Kishino would
degrade the performance of the Oess display [brief, pages 9-
10]. The examiner disagrees with both of these contentions.
We are not persuaded by either of appellant’s arguments for
reasons which follow.
With respect to the first point argued by appellant,
we do not agree that the combination of Oess and Kishino
hinges as a matter of law on whether Oess is directed to an
FED. The question is whether Oess and Kishino are
Appeal No. 97-1932
Application 08/028,047
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sufficiently similar that the proposed combination of their
teachings would have been suggested to the artisan. Both
references relate to a display device which operates by
impinging electrons emitted from a cathode emitter onto an
anode attached to a phosphor layer. We are of the view that
the specific manner in which the electrons are created is not
fatal to the combination of these teachings. Thus, the Oess
teaching of thermionic cathodes does not preclude a cathode-
anode relationship as taught by Kishino. We agree with the
examiner that Kishino would have suggested to the artisan the
obviousness of using a plurality of sharply-pointed cathode
structures for each picture element of Oess.
With respect to the second point argued by appellant,
we do not agree with appellant that the modification of Oess
with Kishino would necessarily degrade the performance of the
Oess display. The examiner also disputes this contention, and
appellant offers no evidence which would support this bare
allegation. The examiner’s principle that plural cathodes
would increase the display of each picture element is
apparently correct as suggested by Kishino, and would appear
Appeal No. 97-1932
Application 08/028,047
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to be suggested for any type of display using a cathode and an
anode such as taught by Oess. Therefore, we are not persuaded
by appellant that the examiner’s proposed combination would
not work.
Appellant argues that the combination proposed by the
examiner comes only from a hindsight reconstruction of the
invention [brief, page 11]. We do not agree. The examiner
cites Kishino for the sole purpose of suggesting a plurality
of cathode structures for each picture element. Kishino
clearly suggests that each picture element of a display can
have a variable number of emitters [see column 4, lines 65-
68]. Therefore, the theory used by the examiner is clearly
suggested by the applied references and is not based only on
hindsight.
Appellant argues that the rejection is wrong as a
matter of fact because Figure 3 of Oess does not teach a
monolithic structure as claimed [brief, page 12]. Figure 3 is
described as an exploded view of a portion of Figure 2 [column
2]. Oess discloses that “[a]s shown in FIG. 2, the structure
is monolithic” [column 5, line 13]. Therefore, Figure 3 is
Appeal No. 97-1932
Application 08/028,047
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simply an exploded view of a monolithic structure.
Appellant’s argument that Oess does not teach or suggest a
monolithic structure is simply incorrect.
Since appellant has not persuaded us of error in the
examiner’s rejection of independent claim 25, we sustain the
rejection of claim 25. For reasons discussed above, claims 26
and 29-34 stand or fall with claim 25. Therefore, we also
sustain the rejection of claims 26 and 29-34.
We now consider the rejection of claims 27 and 28
under 35 U.S.C. § 103 as unpatentable over Oess in view of
Kishino and the admitted prior art. These claims relate to
the phosphor layer, and the examiner applies the admitted
prior art to teach the specifics of the phosphor layer.
Appellant argues that the admitted prior art does not teach a
monolithic structure [brief, page 14]. As noted above,
however, the monolithic structure is taught by Oess.
Appellant also simply asserts that the recitations of claims
27 and 28 are not suggested by the combination of references,
but appellant offers no further discussion in support of this
assertion. Since appellant has not persuaded us of error in
Appeal No. 97-1932
Application 08/028,047
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the rejection of claims 27 and 28, we sustain the rejection of
these claims as formulated by the examiner.
We now consider the rejection of claims 13 and 14
under 35 U.S.C. § 103 as unpatentable over Kishino and
Shmulovich. The examiner cites Kishino as teaching a display
screen having a transparent face plate, a conductive layer and
a phosphor layer. The examiner notes that Kishino does not
disclose the presence of pockets filled with the conductive
and phosphor layers [answer, page 4]. The examiner cites
Shmulovich as teaching the pocket recitations of independent
claim 13 and contends that it would have been obvious to
modify the Kishino face plate to have pockets as taught by
Shmulovich [Id.].
Appellant argues that Shmulovich uses a reflective
conductive layer rather than the transparent conductive layer
as recited in claim 13 [brief, pages 16-17]. The examiner
responded to this argument by stating that “it would have been
obvious to one of ordinary skill in the art to use a
transparent conductive layer in the modified display device of
Kishino and Shmulovich since the modified display device is a
Appeal No. 97-1932
Application 08/028,047
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direct display device” [answer, page 8]. Appellant filed a
reply brief disputing the obviousness of changing the
reflective conductive layer of Shmulovich to a transparent
conductive layer. According to appellant, the state of the
prior art would have suggested that the phosphor layer and
conductive layer in Shmulovich be interchanged if the
conductive layer were transparent rather than reflective as
disclosed in Shmulovich [reply brief, pages 4-5]. The
examiner did not respond to the reply brief filed by
appellant.
As we noted above, obviousness is determined on the
evidence and the relative persuasiveness of the arguments.
Appellant has presented a persuasive argument as to why a
transparent conductive layer in Shmulovich would not be placed
between the phosphor layer and the face plate. The examiner
has not addressed this argument of appellant. Since we agree
with appellant that a legitimate challenge to the obviousness
of claims 13 and 14 has been raised, and since the examiner
has offered no rationale beyond the mere conclusion of
Appeal No. 97-1932
Application 08/028,047
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obviousness, we do not sustain the rejection of claims 13 and
14 as formulated by the examiner on the record before us.
We now consider the rejection of claims 15-18 under
35 U.S.C. § 103 as unpatentable over Kishino in view of
Shmulovich and the admitted prior art. These claims all
depend from independent claim 13 just discussed. The admitted
prior art which is additionally applied against these claims
was not cited by the examiner for the purpose of demonstrating
the obviousness of replacing the Shmulovich reflective layer
with a transparent layer. Therefore, the admitted prior art
does not make up for the deficiency noted above in the
rejection of claim 13. Therefore, we do not sustain the
rejection of claims 15-18 for the same reasons discussed above
with respect to claim 13.
In summary, we have sustained the rejection of claims
25-34, but we have not sustained the rejection of claims 13-
18. Thus, the decision of the examiner rejecting claims 13-18
and 25-34 is affirmed-in-part.
Appeal No. 97-1932
Application 08/028,047
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Stanley M. Urynowicz, Jr. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Michael R. Fleming )
Administrative Patent Judge )
C. Lamont Whitham
Whitham & Marhoeffer
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