Forrest, Stephen et al.

Patent Trials and Appeals Board

Sep 21, 2020

12974070 - (D) (P.T.A.B. Sep. 21, 2020)

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.
12/974,070 12/21/2010 Stephen Forrest 206157-0028-01US 3028
126542 7590 09/21/2020
Riverside Law LLP/Universal Display Corporation
Glenhardie Corporate, Center Glenhardie Two
1285 Drummers Lane, Suite 202
Wayne, PA 19087
EXAMINER
LUND, JEFFRIE ROBERT
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
dcoccia@riversidelaw.com
dockets@riversidelaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________
Ex parte STEPHEN FORREST
and RICHARD LUNT
______________
Appeal 2019-003567
Application 12/974,070
Technology Center 1700
______________
Before GEORGE C. BEST, ELIZABETH M. ROESEL, and
MICHAEL G. McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 6–19, 21–24, 26–28, 31, and 32 of
Application 12/974,070. Final Act. (January 25, 2018). We have jurisdiction
under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Regents of the University of
Michigan and the Trustees of Princeton University as the real parties in
interest. Appeal Br. 3.
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I. BACKGROUND
The ’070 Application describes systems and methods for the
deposition of materials on substrate using organic vapor jet deposition. Spec.
¶ 3. These systems and methods are useful for manufacturing organic light
emitting devices (OLEDs). Id. OLEDs are useful in applications such as flat
panel displays, illumination, and back lighting. Id. ¶ 6.
In particular, the systems described in the ’070 Application’s
Specification are used for organic vapor jet deposition (OVJD). Id. ¶ 11. In
these systems, an exhaust is present between adjacent nozzles. Id. According
to Appellant, “[i]t is believed that the exhaust reduces pressure in the region
of the nozzle openings and between the nozzles and substrate, leading to
improved resolution and deposition profiles.” Id.
Claim 1 is representative of the ’070 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A system comprising:
a substrate;
a plurality of nozzles each having an outlet disposed over
the substrate, each of the plurality of nozzles in fluid
communication with:
a source of organic material to be deposited on the
substrate; and
a source of non-reactive carrier gas adapted to
carry the organic material through the nozzle to the
substrate; and
an exhaust having an inlet disposed adjacent to a first
nozzle of the plurality of nozzles and to a second nozzle of the
plurality of nozzles;
wherein the substrate is separated from the outlets of the
plurality of nozzles by less than 100 microns;
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wherein the inlet of the exhaust is separated from the
substrate by a distance that is greater than a distance between
the first and second nozzle outlets and the substrate;
wherein the system is configured to deposit the same
organic material from the first nozzle and the second nozzle;
wherein the exhaust is configured to create an adjustable,
localized vacuum between the first nozzle and the second
nozzle; and
wherein the exhaust is in fluid communication with an
independent vacuum source.
Appeal Br. 17 (some indentation added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 6–13, 15–19, 21–24, 26–28, 31, and 32 are rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Kurokawa,2 Shtein,3 Lindner,4 and Gianoulakis.5 Final Act. 3.
2. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kurokawa, Shtein, Lindner, Gianoulakis, and
McLeod.6 Final Act. 9.
3. Claims 1, 2, 6–13, 15–19, 21–24, 26–28, 31, and 32 are rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Gianoulakis, Shtein, and Lindner. Final Act. 9–10.

2 JP 2004 103630, published April 2, 2004.
3 US 2008/0233287 A1, published September 25, 2008.
4 US 5,122,394, issued June 16, 1992.
5 US 2006/0234514 A1, published October 19, 2006.
6 US 6,808,741 B1, issued October 26, 2004.
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4. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Gianoulakis, Shtein, Lindner, and McLeod.
Final Act. 14.
III. DISCUSSION
A. Rejection of claims 1, 2, 6–13, 15–19, 21–24, 26–28, 31, and 32
as unpatentable over the combination of Kurokawa, Shtein,
Lindner, and Gianoulakis
Appellant argues that this rejection should be reversed based upon the
Examiner’s failure to establish the prima facie obviousness of independent
claims 1 and 23. Appeal Br. 14. Dependent claims 2, 6–13, 15–19, 21, 22,
24, 26–28, 31, and 32 are alleged to be patentable based upon their
dependence from claims 1 and 23. Id. We, therefore, limit our discussion to
independent claims 1 and 23.
In rejecting claims 1 and 23 as unpatentable over the combination of
Kurokawa, Shtein, Lindner, and Gianoulakis, the Examiner found that
Kurokawa describes a system comprising a shower head having a plurality
of nozzles disposed over a substrate and having an exhaust inlet disposed
adjacent to a first nozzle and a second nozzle of the plurality of nozzles.
Final Act. 3. The Examiner also found that Shtein describes the use of a
nozzle to carry out deposition in a pattern of organic material on a substrate.
Id. at 4 (citing Shtein Figs. 6, 9, 10; ¶¶ 14, 56, 67, 79). The Examiner further
found that
[t]he motivation for supplying a source of organic material to
be deposited on the substrate and a non-reactive carrier gas . . .
to carry the organic material through the nozzle of Kurokawa et
al[.] is to enable the apparatus of Kurokawa et al[.] to deposit an
organic material on the substrate as taught by Shtein et al.
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The motivation for placing the substrate of Kurokawa et
al[.] less [than] the 100 [µm] from the nozzle is to reduce the
diffusion of the organic matter and improve the pixel edge
sharpness as taught by Shtein et al[.] (paragraph 0056).
Id. at 5.
Appellant argues that the Examiner has not established the prima facie
obviousness of claims 1 and 23 because (1) the Examiner erred by finding
that a person having ordinary skill in the art at the time of the invention
would have been motivated to use Kurokawa’s shower head in Shtein’s
organic vapor deposition process because Kurokawa has little technical
relevance to organic vapor deposition, (2) the Examiner erred by considering
claims 1 and 23 on an element by element basis, (3) a person having
ordinary skill in the art at the time of the invention would not have had a
reasonable expectation that Kurokawa’s shower head nozzles could be used
successfully in Shtein’s organic vapor deposition process to provide a
pattern of separate elements, and (4) “Appellant demonstrates improved
deposition of organic material into patterned separate elements . . . over a
similar nozzle design of Shtein/Forrest having no exhaust features.” App. Br.
11–14.
We address these arguments in turn. For the reasons set forth below,
we affirm the rejection of claims 1, 2, 6–13, 15–19, 21–24, 26–28, 31, and
32 over the combination of Kurokawa, Shtein, Lindner, and Gianoulakis.
1. No motivation to combine
Appellant argues that a person of ordinary skill in the art would not
have combined Kurokawa with Shtein because Kurokawa’s apparatus is
used to oxidize a substrate rather than deposit organic materials on the
substrate. Appeal Br. 11–12. According to Appellant, the rejection
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mistakenly equates Kurokawa’s oxide film formation process with Shtein’s
organic vapor deposition, but does not point to any teaching in the art that a
person of skill would have recognized the equivalence of these two
deposition processes. Id. at 12. In other words, Appellant is arguing that
Kurokawa is non-analogous art to the claimed invention.
We are not persuaded by this argument because Kurokawa is in the
inventor’s field of endeavor.
To rely upon a reference as a basis for an obviousness rejection, the
reference must either (1) be in the field of the inventor’s endeavor or (2) be
reasonably pertinent to the particular problem with which the inventor was
concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). The scope
of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616
F.3d 1231, 1238 (Fed. Cir. 2010).
The inventor’s field of endeavor is determined by considering the
explanations of the invention’s subject matter in the patent application,
“including the embodiments, function, and structure of the claimed
invention.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004); see also In re
Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (relying on specification to
determine applicant’s field of endeavor).
The ’070 Application’s Specification states that the invention “relates
to systems and methods for deposition of materials onto substrates utilizing
organic vapor jet deposition.” Spec. ¶ 3. Vapor jet deposition is one of a
plethora of related techniques for transforming a substrate either via reaction
of a gas phase entity with the substrate or by deposition of a material from
the gas phase onto the substrate. Before the substrate is subjected to a
deposition process, it is cleaned. For example, ozone can be used to oxidize
surface impurities. See, e.g., Surface Preparation for Film and Coating
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Deposition Processes, in Handbook of Deposition Technologies for Films
and Coatings: Science, Applications and Technology 103 (Peter M Martin,
ed., 2010).
As Appellant states, Kurokawa is concerned with uniform application
of ozone across a substrate surface. Appeal Br. 10. Kurokawa, therefore,
addresses a subject that would be of concern to a person of ordinary skill in
the art working in the field of OVJD. Thus, Kurokawa is within the
inventors’ field of endeavor.
We do not reverse the rejection of claims 1 and 23 on this basis.
2. Failure to consider claims as a whole
Appellant argues that the Examiner erred by failing to consider the
claims as a whole and by analyzing the claims on an element-by-element
basis. Appeal Br. 12–13. In particular, Appellant argues that the Examiner
relied upon Appellant’s own teachings to arrive at the combination of prior
art used in the rejection. Id. at 13.
This argument is not persuasive. The Examiner divides each claim
into individual elements for the purpose of explaining where the prior art
describes or suggests each claim element. At the end of the process, the
Examiner has found that each claim element is described or suggested by the
prior art. Thus, there are no differences between the prior art and the subject
matter of the claim as a whole.
To protect against the improper use of hindsight, the Examiner is
required to explain why a person having ordinary skill in the art at the time
of the invention would have had reason to combine the prior art’s teachings
in the manner proposed by the Examiner. In re Rouffet, 149 F.3d 1350, 1358
(Fed. Cir. 1998) (inferring “hindsight” when the specific understanding or
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principal within the knowledge of one of ordinary skill in the art leading to
modification of prior art to arrive at appellant’s claimed invention has not
been explained).
In this case, the Examiner stated that a person of ordinary skill in the
art would have combined Kurokawa and Shtein to use Shtein’s techniques
for depositing organic molecules in a pattern via Kurokawa’s apparatus.
Final Act. 5.
In short, Appellant has not demonstrated that the Examiner
improperly relied upon hindsight to formulate this rejection of claims 1 and
23. Thus, we do not reverse the rejection on this basis.
3. No reasonable expectation of success
Appellant argues that the rejection should be reversed because a
person having ordinary skill in the art at the time of the invention would not
have had a reasonable expectation of success in using Kurokawa’s nozzle in
Shtein’s organic vapor deposition process. Appeal Br. 13–14.
We are not persuaded by this argument. In rejecting claims 1 and 23,
the Examiner relies upon Kurokawa to describe the structure of the
nozzle/exhaust assembly and upon Shtein to describe the deposition of
organic materials through the nozzle assembly and the relative positioning of
the nozzle assembly and the substrate. Final Act. 3–4. In particular, Shtein
teaches that if the nozzle is separated from the substrate by only a few
microns, the organic material can be deposited in a pattern. Answer 19–21.
Appellant has not explained why a person of ordinary skill in the art at the
time of the invention would not have had a reasonable expectation that
Shtein’s teaching regarding the effect of spacing between the nozzle and the
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substrate would not have applied to organic vapor jet deposition using
Kurokawa’s nozzle/exhaust apparatus.
Thus, we do not reverse the rejection of claims 1 and 23 on this basis.
4. Improved results
Appellant argues that the subject matter of claims 1 and 23 is
patentable because Appellant has demonstrated improved deposition of
organic material into patterned separate elements over Shtein’s similar
nozzle design without exhaust features. Appeal Br. 14 (citing Spec. Fig. 15,
¶ 79).
This is not a sufficient basis for us to reverse the rejection of claims 1
and 23. An apparatus may represent an improvement over the prior art, but
evidence of the improved performance is only relevant to the question of
patentability if that improved performance is shown to be unexpected. As
the Federal Circuit’s predecessor stated:
[F]or a showing of “unexpected results” to be probative
evidence of non-obviousness, it falls upon the applicant to at
least establish: (1) that there actually is a difference between the
results obtained through the claimed invention and those of the
prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972);
and (2) that the difference actually obtained would not have
been expected by one skilled in the art at the time of invention,
Id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971).
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (italics added).
In this case, Appellant does not present attorney argument, let alone
actual evidence, that the allegedly improved results would have been
unexpected by a person of ordinary skill in the art at the time of the
invention. See Appeal Br. 14.
Thus, we do not reverse the rejection of claims 1 and 23 on this basis.
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B. Rejection of claim 14 as unpatentable over the combination
Kurokawa, Shtein, Lindner, Gianoulakis, and McLeod
Appellant argues that claim 14 is patentable because it depends from
claim 1 and McLeod fails to cure the alleged deficiencies in the combination
of Kurokawa, Shtein, Lindner, and Gianoulakis. Appeal Br. 14–15.
For the reasons discussed in § III(A), we have affirmed the rejection
of claim 1 as obvious over the combination of Kurokawa, Shtein, Lindner,
and Gianoulakis. We, therefore, also affirm the rejection of claim 14 over
the combination of Kurokawa, Shtein, Lindner, Gianoulakis, and McLeod.
C. Rejection of claims 1, 2, 6–13, 15–19, 21–24, 26–28, 31, and 32
as unpatentable over Gianoulakis, Shtein, and Lindner
Appellant argues that this rejection should be reversed based upon the
Examiner’s failure to establish the prima facie obviousness of independent
claims 1 and 23. Appeal Br. 14. Dependent claims 2, 6–13, 15–19, 21, 22,
24, 26–28, 31, and 32 are alleged to be patentable based upon their
dependence from claims 1 and 23. Id. We, therefore, limit our discussion to
independent claims 1 and 23.
With respect to independent claims 1 and 23, Appellant’s complete
argument is reproduced below:
For the same reasons as outlined above with respect to
claims 1 and 23 and the summarized teachings of Kurokawa,
Shtein, Lind[n]er, and Gianoulakis, Appellant respectfully
submits that Gianoulakis, Shtein, and Lind[n]er fail to establish
a prima facie case for obviousness.
For at least the reasons set forth above, Appellant
submits that claims 1 and 23 are not obvious over Gianoulakis,
Shtein, and Lind[n]er. Claims 2, 6–13, 15–19, 21–22, 24, 26–
28, 31 and 32 all depend directly or indirectly from claims 1
and 23, and are therefore not obvious over Gianoulakis, Shtein,
and Lind[n]er at least for the reasons set forth above for claims
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1 and 23. Appellant therefore respectfully requests that the
rejection under section 103(a) be withdrawn.
Appeal Br. 15.
As we discussed in § III(A), Appellant argues that the rejection of
independent claims 1 and 23 as unpatentable over the combination of
Kurokawa, Shtein, Lindner, and Gianoulakis should be reversed for four
reasons.
The first of those reasons is particular to the combination of
Kurokawa and Shtein. Thus, it is not relevant to the rejection over the
combination of Gianoulakis, Shtein, and Lindner.
The remaining three arguments—failure to consider the claims as a
whole, no reasonable expectation of success, and improved results—were
not persuasive with respect to the rejection over Kurokawa, Shtein, Lindner,
and Gianoulakis. Nor are they persuasive with respect to this rejection.
We, therefore, affirm the rejection of claims 1, 2, 6–13, 15–19, 21–24,
26–28, 31, and 32 as unpatentable over the combination of Gianoulakis,
Shtein, and Lindner.
D. Rejection of claim 14 as unpatentable over the combination of
Gianoulakis, Shtein, Lindner, and McLeod
Appellant argues claim 14, which depends from claim 1, is allowable
over the combination of Gianoulakis, Shtein, Lindner, and McLeod for the
same reasons provided for claim 1. Appeal Br. 15.
For the reasons set forth above, we have affirmed the rejection of
claim 1 as unpatentable over the combination of Gianoulakis, Shtein, and
Lindner. Thus, we are not persuaded by Appellant’s arguments with respect
to claim 14. We, therefore, affirm the rejection of claim 14 as unpatentable
over the combination of Gianoulakis, Shtein, Lindner, and McLeod.
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6–13, 15–19,
21–24, 26–28, 31,
32
103(a) Kurokawa, Shtein, Lindner, Gianoulakis
1, 2, 6–13,
15–19, 21–
24, 26–28,
31, 32

14 103(a) Kurokawa, Shtein, Lindner, Gianoulakis, McLeod 14
1, 2, 6–13, 15–19,
21–24, 26–28, 31,
32
103(a) Gianoulakis, Shtein, Lindner,
1, 2, 6–13,
15–19, 21–
24, 26–28,
31, 32

14 103(a) Gianoulakis, Shtein, Lindner, McLeod 14
Overall Outcome
1, 2, 6–19,
21–24, 26–
28, 31, 32

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED