Thin Film Electronics ASA

Patent Trials and Appeals Board

Apr 9, 2020

14847999 - (D) (P.T.A.B. Apr. 9, 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.
14/847,999 09/08/2015 James Montague CLEEVES IDR0502D1C1 8406
36872 7590 04/09/2020
CENTRAL CALIFORNIA IP GROUP, P.C.
377 W. FALLBROOK AVENUE
#205
FRESNO, CA 93711
EXAMINER
SLUTSKER, JULIA
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
04/09/2020 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):
drewfortney@cencalip.com
records@cencalip.com
terrimahan@cencalip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES MONTAGUE CLEEVES, J. DEVIN MACKENZIE, and
ARVIND KAMATH
____________

Appeal 2019-002292
Application 14/847,999
Technology Center 2800
___________

Before KAREN M. HASTINGS, JEFFREY W. ABRAHAM and
MONTÉ T. SQUIRE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1–14 and 21–26. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Thin Films
Electronics ASA (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key limitation in dispute):
1. A device, comprising:
a) an electrically active substrate;
b) a dielectric layer thereon, configured to insulate
integrated circuitry from said electrically active substrate;
c) a plurality of diodes and a plurality of thin film
transistors on said dielectric layer, said plurality of diodes
having at least one first semiconductor layer in common with
said plurality of thin film transistors, said at least one first
semiconductor layer being formed from a liquid-phase ink
comprising silicon; and
d) a plurality of capacitors in electrical communication
with at least some of said plurality of diodes, said plurality of
capacitors having at least one metal layer in common with
contacts to said plurality of diodes and plurality of thin film
transistors.

Independent claim 12 is similar to claim 1 but further recites a
plurality of metal elements on or over the first semiconductor layer elements
Appeal Br. 56–57 (Claims Appendix).
Appellant’s arguments focus on the limitation emphasized above
which is common to both independent claims.

REJECTIONS
Claims 1–7, 10, 12, 14, and 21−25 are rejected under 35 U.S.C. § 103
as being unpatentable over Young (US 2006/0030084 A1; published
February 9, 2006) and Aoki et al. (US 6,884,700 B2; issued April 26, 2005).
Claim 8 is rejected under 35 U.S.C. § 103 over Young and Aoki,
further in view of Koyama (US 2005/0133605 A1; published June 23, 2005).
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Claim 9 is rejected under 35 U.S.C. § 103 over Young and Aoki,
further in view of Keen (US 2007/0210162 A1; published Sep. 13, 2007).
Claims 11 and 13 are rejected under 35 U.S.C. § 103 over Young and
Aoki, further in view of Dekker (US 2007/0108521 A1; published May 17,
2007).
The Non-Final Action appealed from also includes an
obviousness-type double patenting rejection of claims 1–14 and 21–26
(Non-Final Action 2–4). Appellant has filed a terminal disclaimer to
overcome that rejection (Reply Br. 27–28) but a clerical error appears to
have prevented the approval of the terminal disclaimer. Thus, we summarily
affirm the obviousness type double patenting rejection.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm
Examiner’s rejections for the reasons expressed in the Non-Final Office
Action and the Answer. We add the following for emphasis.
At the outset, we note that Appellant does not dispute or challenge
the Examiner’s determination that the claims are directed to products and
that the key limitation in dispute involves the process by which the
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product(s) were made. See generally Appeal Br.; Ans. It is well established
that, when a product recited in product-by-process format reasonably
appears to be the same as or obvious from a product of the prior art, the
burden is on applicant to show that the prior art product is in fact different
from the claimed product, even though the products may be made by
different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
Appellant argues that the claimed semiconductor layer element
formed by the liquid-phase ink process would have structural differences as
compared to one formed by other conventional methods because the liquid-
phase ink process would increase the amount of impurities and the liquid
flow dynamics could decrease uniformity of application (Appeal Br. 25–30;
Kamath Declaration filed Sept. 29, 2017, at 12).
This argument is not persuasive of reversible error in the Examiner’s
rejection. While the change in purity or uniformity of application of the
layer may indicate that the layers formed by liquid-phase ink process of the
invention or by other conventional methods are not identical (Kamath
Decl. ¶¶ 12, 16–20), this falls short of showing that such layers are
patentably distinct from each other. Thorpe, 777 F.2d at 697 (“The
patentability of a product does not depend on its method of production . . . If
the product in the product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.”) (emphasis added). Although

2 The Appeal Brief relies upon the “Kamath Declaration” submitted on Sept.
29, 2017 (Appeal Br. 14; listed as “1.” on Appeal Br. 59). The evidence
Appendix of the Appeal Brief also lists two other declarations as 2 and 3
(listed on Appeal Br. 59)
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Appellant argues that the structural differences are distinct and non-obvious
(Appeal Br. 25–30), the determination of patentability is based on the
product itself and we do not find Appellant’s contentions regarding the level
of purity of the substance or the uniformity of the applied ink sufficient to
establish a patentable distinction in the structure. Rather, as the Examiner
finds (Non-Final Act. 5–8), the semiconductor layers common to the diodes
and thin film transistors of claims 1 and 12 encompass the structure
disclosed in Young. The claims also do not recite any impurity levels or
uniformity thresholds for any layer.
Moreover, it is not apparent why a diode which comprises silicon and
a lower level of other impurities would be considered patentably distinct
from one which comprises silicon and a higher level of other impurities
since in either case, the structure still functions as a diode. Thus, the
claimed “semiconductor layer being formed from a liquid-phase ink” is not
patentably distinct from the elements of Young. Accordingly, on this
record, Appellant has failed to demonstrate that a product made based on the
combination of Young and Aoki is patentably different than Appellant’s
claimed product. Cf. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255 (Fed. Cir. 1977).
Appellant further argues that the combination of Young and Aoki is
not obvious because the claimed invention provides unexpected results
(Appeal Br. 37–39; Reply Br. 12–15 (“[F]ilms formed from liquid-phase
inks have higher impurity levels and different chemical and physical
properties . . . [,][n]evertheless, devices made from such inks show
acceptable performance . . . . This result is surprising . . . .”)) and that the
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higher impurity levels would have “led away” from the combination (Appeal
Br. 39–42; Reply Br. 18–20).
Appellant’s arguments in this regard are not persuasive of reversible
error. Rather, a preponderance of the evidence supports the Examiner’s
finding (Ans. 10–12) that the resulting functional semiconductor layers and
elements would have been expected by Aoki and, in particular, based on
Aoki’s disclosure regarding using liquid-phase ink in semiconductor devices
(Aoki 1:45–55, 9:55–64), one of ordinary skill in the art would not have
been dissuaded from using the liquid-phase ink in other types of
semiconductor devices.
Appellant’s argument that the art “leads away” from the combination
and “it can be relatively challenging to form a thin film from a liquid-phase
silicon-containing ink” (Appeal Br. 40) is equally unpersuasive because it is
conclusory and unsupported by persuasive evidence in the record. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, the fact that it may
be challenging to form a thin film from a liquid-phase silicon-containing ink,
without more, does not teach away from combining the teachings of the
prior art in the manner claimed. Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (‟The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”). Contrary to what Appellant argues, as the Examiner
finds (Ans. 6, 12), a person of ordinary skill in the art would have had a
reasonable expectation of success for using the liquid-phase ink process
disclosed in Aoki for at least some of the semiconductor elements in Young
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because Aoki teaches using this process for manufacturing similar
semiconductor layers and/or elements, including thin film semiconductor
devices in an easy and inexpensive manner (Aoki, col. 9, ll. 56–62), which
would have been a benefit to be weighed against any loss in purity or
uniformity. Notably, even if a modification is viewed with disfavor by
some, that does not necessarily mean it is not obvious. In re Jansen, 525
F.2d 1059, 1061 (C.C.P.A. 1975) (noting that oral preparation with multiple
ingredients, characterized as “overkill” by some, was still an obvious
modification).
Further, regarding Appellant’s arguments of unexpected results,
Appellant has not demonstrated that the results are unexpected, namely,
there is no evidence that the uniformity and purity differences are not known
to be factors in the liquid-phase ink process of Aoki. In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“[T]he burden of showing unexpected results
rests on [the party] who asserts them.”); see also De Blauwe, 736 F.2d at 705
(“It is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice.”).
Moreover, although secondary considerations such as unexpected
results must be taken into account, they do not necessarily control the
obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554
F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and
other secondary considerations will not necessarily overcome a strong prima
facie showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007) (“[T]his secondary consideration does not overcome
the strong showing of obviousness in this case. Although secondary
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considerations must be taken into account, they do not necessarily control
the obviousness conclusion.”). Here, the case of obviousness established by
the Examiner is strong such that when the teachings of the prior art are
weighed against Appellant’s alleged showing of unexpected results, the
preponderance of the evidence of record nonetheless still weighs in favor of
a conclusion of obviousness.
Appellant also argues the Examiner’s rejection should be reversed
because neither Young nor Aoki disclose or suggest forming the claimed
diodes or thin film transistors with liquid-phase ink. Appeal Br. 16–24,
31–33; Reply Br. 20–24. This argument is not persuasive because the
rejection is based on the combination of Young and Aoki and not what
Appellant contends each reference teaches individually. One cannot show
non-obviousness by attacking references individually where the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413,425
(CCPA1981).
As the Examiner finds and explains (Ans. 3–7), Aoki explicitly
teaches using liquid-phase ink and a person of ordinary skill would have had
reason to modify Young based on Aoki’s teachings to make the components
of Young, including the diodes and thin film transistors, using the
liquid-phase ink process. Appellant does not provide persuasive reasoning
or persuasive evidence why one of ordinary skill in the art would not have,
using no more than ordinary creativity, predictably used a known
liquid-phase ink process as exemplified in Aoki to make the semiconductor
layers or elements of Young. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir.
2009) (citing In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988))
(“Obviousness does not require absolute predictability of success . . . all that
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is required is a reasonable expectation of success.”). As we “take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ,” we find a person of ordinary skill in the art would have,
within their level of skill, made the semiconductor elements of Young using
the liquid-phase ink process, based on the combined teachings of the applied
prior art for reasons articulated by the Examiner (see generally Ans.). KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth
by the Supreme Court, the PTO must take account of “the inferences and
creative steps,” as well as routine steps, that an ordinary artisan would
employ)); In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom).
The Kamath Declaration relied upon in the Appeal Brief is equally
unpersuasive and does not indicate reversible error in the Examiner’s
rejection. It is largely conclusory and does not persuasively rebut the
Examiner’s findings regarding the collective teachings of the prior art and
what those teachings would have suggested to one of ordinary skill, and,
therefore, does not outweigh the evidence cited in support of the Examiner’s
conclusion of obviousness. Velander v. Garner, 348 F.3d 1359, 1371 (Fed.
Cir. 2003) (“In giving more weight to prior publications than to subsequent
conclusory statements by experts, the Board acted well within [its]
discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010)
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(explaining the Board has discretion to give more weight to one item of
evidence over another “unless no reasonable trier of fact could have done
so.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004) (“[T]he Board is entitled to weigh the declarations and conclude that
the lack of factual corroboration warrants discounting the opinions expressed
in the declarations.”).
Regarding dependent claims 11 and 13, Appellant contends that the
substrate 10 of Dekker is separate from the antenna 6 which extends over the
substrate 10 (Appeal Br. 52–53; Reply Br. 26). The Examiner responds that
the antenna 6 of Dekker can be considered a metal foil, and that the substrate
comprises that metal foil (Ans. 16). The language of claim 11 and 13
includes the open ended term “comprising,” thus indicating that other
intervening layers can be considered to be part of the substrate. Thus,
Appellant has not shown error in the Examiner’s determination that the
limitation “substrate comprises a metal foil” encompasses the prior art
modification of Young and Aoki by Dekker.
To the extent Appellant presents any substantive arguments for any of
the remaining dependent claims, we do not find these arguments persuasive
of reversible error based on the Examiner’s fact-finding and reasoning
provided at pages 12–17 of the Answer, which are supported by a
preponderance of the evidence. Appellant’s arguments in this regard are
misplaced because, as previously discussed above, they fail to account for
“the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418.
Accordingly, we sustain the § 103 rejections of all of the claims on
appeal.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14, 21–26 Double Patenting 1–14, 21–26

1–7, 10, 12,
14, 21–25 103 Young, Aoki
1–7, 10, 12,
14, 21–25

8 103 Young, Aoki, Koyama 8

9 103 Young, Aoki, Keen 9
11, 13 103 Young, Aoki, Dekker 11, 13

Overall
Outcome
1–14, 21–26

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