Ex Parte 5879958 et al

Patent Trial and Appeal Board

Jun 26, 2014

90011739 (P.T.A.B. Jun. 26, 2014)

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. 90/011,739 06/13/2011 5879958 17502.00076.US64 9997 30827 7590 06/27/2014 MCKENNA LONG & ALDRIDGE LLP 1900 K STREET, NW WASHINGTON, DC 20006 EXAMINER KIELIN, ERIK J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/27/2014 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte EIDOS Display, LLC Appellant ________________ Appeal 2013-007679 Reexamination Control 90/011,739 Patent 5,879,9581 Technology Center 3900 ________________ Before HOWARD B. BLANKENSHIP, STANLEY M. WEINBERG, and JEREMY J. CURCURI, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE Introduction This reexamination proceeding arose from a third-party request for ex parte reexamination filed on June 13, 2011. EIDOS Display, LLC (EIDOS), the owner of the patent under reexamination, appeals under 35 U.S.C. 1 The patent involved in this reexamination appeal proceeding (the “’958 Patent”) issued to Ken Kawahata et al. on March 9, 1999. Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 2 §§ 134(b) and 306 from the April 9, 2012 Final Rejection of claims 2-8, 13, and 14. Claim 1 is original. Proposed new claims 2-14 were presented in a February 28, 2012 Amendment (“Amendment”). The Examiner determined that claim 1 is confirmed and that new claims 9-12 are patentable. See April 9, 2012 Final Rejection 13. EIDOS expressly states that it is only appealing the rejection of claims 2, 3, and 6, and that it is not appealing the rejection of claims 4, 5, 7, 8, 13, and 14. App. Br. 1.2 . An oral hearing was conducted on November 6, 2013. A transcript (Tr.) of the hearing was made of record on January 16, 2014. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm. Related Proceeding EIDOS has informed us about the following judicial proceedings involving the ’958 Patent: EIDOS Display, LLC v. AU Optronics Corp., U.S. District Court for the Eastern District of Texas, Civil Action No. 6:11- cv-201. In papers filed with the Office on May 14, 2014, EIDOS has informed us that the Court entered a Final Judgment in favor of Defendants and against Plaintiffs finding that Claim 1 of the ‘958 Patent is invalid on the ground of 2 EIDOS relies on its Appeal Brief filed October 15, 2012 (App. Br.) and its Reply Brief filed April 15, 2013 (Reply Br.). However, we will not consider the Reply Brief because the Examiner did not enter it. See Office Communication mailed April 26, 2013 at 2. We will also not consider arguments presented for the first time at the oral hearing. See 37 C.F.R. § 41.47(e)(1) (“At the oral hearing, [appellant] may only . . . present argument that has been relied upon in the brief or reply brief” with an exception not applicable here. Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 3 indefiniteness; and that EIDOS has appealed the District Court’s Final Judgment to the United States Court of Appeals for the Federal Circuit. The Invention The invention relates to a method of producing an electro-optical device in which thin film transistors are formed, and, more particularly, a technique capable of reducing the number of photolithographic steps as compared with that of the prior art method. Spec., col. 1, ll. 10-14. Claims 1 and 2, illustrative of the claimed invention, are reproduced below (App. Br. 16-17, Claims App.): 1. A method for producing an electro-optical device in which an electro-optical material is put between a pair of substrates opposed to each other, at least a portion of opposing surfaces of the substrates is insulative, a plurality of source wirings and a plurality of gate wirings are formed crossing each other on the surface of one of said pair of substrates and a transparent pixel electrode and a thin film transistor are formed at each of the crossing points between the source wirings and the gate wirings, wherein the method comprises: a step G1 of forming a first metal film on the surface of said one substrate, a first photolithographic step G2 of patterning the first metal film to form a gate electrode and a gate wiring, a step G3 of forming a first insulator film, a semiconductor film and an ohmic contact film on the surface of said one substrate after the first photolithographic step, a second photolithographic step G4 of patterning the semiconductor active film and the ohmic contact film to form a semiconductor portion above the gate electrode in a state isolated from other portions, a step G5 of forming a second metal film on the surface of said one substrate after the second photolithographic step, Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 4 a third photolithographic step G6 of patterning the second metal film and the ohmic contact film to form a source electrode, a drain electrode and a channel portion, a step G7 of forming a passivation film on the surface of said one substrate after the third photolithographic step, and a fourth photolithographic step G8 of patterning the passivation film to form a contact hole reaching the gate wiring, a contact hole reaching the drain electrode and a contact hole for source wiring and gate wiring connection terminals, a step G9 of forming a transparent conductive film on the surface of said one substrate after the fourth photolithographic step, and a fifth photolithographic step G10 of patterning the transparent conductive film to form a transparent pixel electrode. 2. The method according to claim 1, wherein the second metal film has a plurality of metal layers. The Rejections Claims 2-8, 13, and 14 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Rej. 5-9; Ans. 4-7. B. ANALYSIS Claims 2 and 3 When it filed the Amendment for claims 2 and 3, EIDOS asserted that it was supported by its Specification at col. 3, l. 64 to col. 4, l. 23 and at col. 25, ll. 42-53. See Amendment 6, cited at Ans. 4-5. For example, the cited column 25 states, in part, that “a second metal film 33 of a laminate structure comprising a conductive film made, for example, of Cr and a conductive Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 5 film made, for example, of Al is formed on the upper surface as shown in FIG. 7.” The Examiner finds that this citation provides only one example of a laminate, specifically Cr on Al. Therefore, these citations fail to provide sufficient support that the claimed second metal film (1) can be made of some unlimited number of metal layers, (2) can be made from any metals in the periodic table, and (3) can be made of any combination of metals. . . . Further in this regard, a single example of Cr on Al is not sufficient to claim the entire genus of all metals in any combination or any number of layers in the laminate greater than two metal layers. Ans. 5 (emphasis omitted). Based on that analysis, the Examiner finds that claims 2 and 3 introduced “new matter as claiming a laminate of unlimited number of metal layers of any metal of any identity in any combination, which is far beyond the scope for which support has been provided. . . . Based on the information Patentee provided, there appears to be support for only Cr on Al when the second metal film is a laminate.” Id. (emphasis omitted). EIDOS contends that its Specification supports “the use of Al, Ta, or Ti layer for the second metal film, and that one of ordinary skill in the art would understand the inventors of the ‘958 patent were in possession of a second metal film having a multi-layered structure than can include Al, Ta, or Ti.” App. Br. 9. We may assume that such subject matter is supported, without deciding that EIDOS is correct. Notably, however, this argument does not assert that the Specification discloses a second metal film comprising a multi-layered structure having all three metal films simultaneously. Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 6 EIDOS contends that claim 1, from which claim 2 depends, is related to the seventh embodiment and that “the Examiner’s assertion that the mere example of Cr on Al in another embodiment cannot be used as support for the claimed second metal film having a multi-layered structure is simply misplaced.” App. Br. 10. Although this argument suggests that multiple embodiments can be combined, the argument does not point to anything in the Specification (as opposed to attorney argument) showing that there can be such a combination and, if there is such a combination, that at least a three layer metal combination would be described. EIDOS also contends that one of ordinary skill in the art would understand the word “comprising” in the column 25 portion quoted above “is an open-ended term, [which] evidences that the disclosure of the ‘958 patent is not limited to two-stacked layers of Cr and Al and contemplates additional metal layers, as appropriate.” App. Br. 10. EIDOS again fails to provide any evidence that the Specification expressly contemplates more than a two-layer laminate. EIDOS also contends that “the factual inquiry must be also based on the conventional knowledge available to one of ordinary skill in the art at the time of the invention [because] what is conventional or well known to one of ordinary skill in the art need not be disclosed in detail.” App. Br. 10-11. EIDOS, however, has not provided any evidence of what was conventional and/or well known to one of ordinary skill in the art at the time of the invention. Along the same line, EIDOS contends that the claims are directed to “a predictable art, and the person of ordinary skill in the art would expect Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 7 little or no variation by forming a metal film with multiple layers,” and that “[o]ne of ordinary skill in the art would understand that merely adding additional metal layers, for example, below the aluminum layer, which was well known at the time of the invention, would not substantially change the principles behind achieving the aforementioned advantage of the ‘958 patent and expect no substantial variation by making such changes.” App. Br. 11- 12. EIDOS also contends that “source and drain electrodes formed with more than two metal layers were well known to those of ordinary skill in the liquid crystal display art at the time of the invention” and that “stacking two or more metal layers does not change the fundamental function of source and drain electrodes. . . .” App. Br. 11-12. Once again, EIDOS provides no evidence to support these contentions. At the oral hearing, EIDOS’ representative stated that “in the specification, we talk about two layers -- sometimes one layer, sometimes two layer[s]. But we also say it’s a laminate structure of two layers.” Tr. 6:10-12. EIDOS’ representative also expressly stated that “there was no disclosure of three metal layers.” Tr. 12:3. In effect, EIDOS contends that it would have been obvious to one of ordinary skill in the art that the second electrode laminate could comprise at least three metal layers. But, a description that merely renders an invention obvious does not satisfy the written description requirement under Section 112. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). EIDOS’ arguments regarding what purportedly would have been known to one of ordinary skill in the art are therefore not persuasive. Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 8 For all of the above reasons, we agree with the Examiner that there is insufficient support in the Specification for claims 2 and 3. Claim 6 Claim 6, also dependent from claim 1, recites “the first metal film has a plurality of conductive layers.” When it filed the Amendment for claim 6, EIDOS asserted that it was supported by its Specification at col. 54, lines 43-52. See Amendment 6, cited at Ans. 4-5. For example, the cited column refers to Figs. 158 to 167 and describes “a first metal film 471 formed from a conductive metal thin film made of a conductive material such as Cr, Ta, Mo and Al and a barrier film 472 made of a -Si(n+). . . .” Col. 54, ll. 44-47. The Examiner finds that “Fig. 158 does not show or otherwise indicate that the first metal film includes anything more than a single metal layer. In addition, a -Si(n+) is a semiconductor, not a metal; therefore, it is a misnomer to call a ‘first metal layer’ something that includes a non-metal layer.” Ans. 7. (emphasis omitted). EIDOS again contends that “one of ordinary skill in the art would understand that the inventors of the ‘958 patent were in possession of the first metal film having a plurality of metal layers at the time of the invention.” App. Br. 13. See also App. Br. 14 (“stacking two or more metal layers does not change the fundamental function of gate electrodes”). Again, EIDOS has not presented any evidence in support of these assertions or similar assertions. EIDOS also contends that claim 6 is supported by originally filed claim 19 which recited, in part, that “the first metal film used comprises a Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 9 conductive metal film and a barrier film.” App. Br. 13. EIDOS contends that the word “comprises” supports “any addition metal or conductive layers.” App. Br. 14. Similar to claim 2, the Examiner finds that “making the first metal film from two layers does not show possession of making it from an unlimited number of layers.” Ans. 21. We agree. CONCLUSION We are not persuaded of error in the Examiner’s finding that claims 2, 3, and 6 do not comply with the written description requirement of § 112, first paragraph. The rejections of claims 4, 5, 7, 8, 13, and 14 are summarily affirmed because those rejections were not appealed. DECISION The rejections of claims 2-8, 13, and 14 are affirmed. AFFIRMED Appeal 2013-007969 Reexamination Control 90/011,739 Patent 5,879,958 10 PATENT OWNER: MCKENNA LONG & ALDRIDGE LLP 1900 K STREET, N.W. WASHINGTON, DC 20006 THIRD PARTY REQUESTER: THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP 600 GALLERIA PARKWAY SUITE 1500 ATLANTA, GA 30339-5948