Ex parte ABEN et al.

Board of Patent Appeals and Interferences

Apr 28, 2000

08325015 (B.P.A.I. Apr. 28, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GERARDUS V.A. ABEN and
LEO H.M. KRINGS
____________
Appeal No. 1998-0870
Application No. 08/325,015
____________
ON BRIEF
____________
Before JOHN D. SMITH, WALTZ, and DELMENDO, Administrative Patent
Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 1 through 9, which
are all of the claims pending in this application.
According to appellants, the invention is directed to a
display device having a display screen provided with an
antistatic, light-absorbing coating and to a method of
Appeal No. 1998-0870
Application No. 08/325,015
We apply the version of this rule in effect at the time of the filing1
of the appeal brief.
2
manufacturing an antistatic, light-absorbing coating on a
display screen of a display device (Brief, page 2).
37 C.F.R. § 1.192(c)(7)(1995) reads as follows:1
“Grouping of claims. For each ground of
rejection which appellant contests and which
applies to a group of two or more claims, the
Board shall select a single claim from the group
and shall decide the appeal as to the ground of
rejection on the basis of that claim alone
unless a statement is included that the claims
of the group do not stand or fall together and,
in the argument under paragraph (c)(8) of this
section, appellant explains why the claims of
the group 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.”
(Bolded emphasis added.)
Thus, under the above rule, two requirements must be met in
order to have different sets of claims considered separately
in an appeal. First, the appeal brief must positively state
that the claims do not stand or fall together. Second, the
appeal brief must explain why the claims are separately
patentable. Merely reciting what the claims cover is not
sufficient.
Appeal No. 1998-0870
Application No. 08/325,015
Cf. Ex parte Schier, 21 USPQ2d 1016, 1019 (Bd. Pat. App. & Int. 1991).2
We note that the copy of claim 1 in the appendix to the Brief does not3
correspond identically to claim 1 presented in the Amendment filed September
10, 1996. Claim 1 reproduced here corresponds to amended claim 1 presented in
3
In the case before us, Appellants failed to positively
indicate that the claims do not stand or fall together.
Instead, appellants stated as follows: “Claims 1-9 are
patentable for similar reasons and stand together” (Brief,
page 5). The examiner interpreted appellants’ statement to
mean that “claims 1-9 stand or fall together” (Answer, page
3). Although appellants had ample opportunity to dispute the
examiner’s interpretation, they did not do so. Therefore,2
consistent with 37 C.F.R. § 1.192(c)(7) and (c)(8), we select
claim 1 from the group of claims and decide this appeal as to
the ground of rejection on the basis of claim 1 alone.
Claim 1 is illustrative of the subject matter on appeal
and is reproduced below:
1. A display device comprising a display screen
having an antistatic, light-absorbing coating which
contains latex particles of electrconductive [sic]
polypyrrole, characterized in that the coating
predominately consists of a homogeneous mixture of
said latex particles of polypyrrole, a steric
stabilizer for said particles of polypyrrole and
antimony-doped tin oxide particles.3
Appeal No. 1998-0870
Application No. 08/325,015
the aforementioned Amendment.
4
The examiner has relied upon the following references as
evidence of obviousness:
Armes et al. (Armes) 4,959,162 Sept. 25, 1990
Wessling et al. (Wessling) 5,476,612 Dec. 19, 1995
(Filed Nov. 9, 1992)
De Boer 533,256 Mar. 24, 1993
(Published European Patent Application)
Kinoshita et al. (Kinoshita) 585,819 Mar.
9, 1994
(Published European Patent Application)
The issue presented before us is whether the examiner
correctly rejected claims 1 through 9 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Kinoshita, De
Boer, Armes and Wessling (Answer, page 4). Based on our
review of the entire record, we affirm the examiner’s
rejection essentially for the reasons stated in the Answer.
We add the following comments for emphasis and completeness.
OPINION
We begin our consideration of the issue before us by
determining the scope of any contested claimed subject matter.
Appeal No. 1998-0870
Application No. 08/325,015
5
Gechter v. Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d
1030, 1032, 1035 n.3(Fed. Cir. 1997); In re Paulsen, 30 F.3d
1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). In
proceed-ings before the U.S. Patent and Trademark Office,
claims are interpreted by giving words their broadest
reasonable meaning in their ordinary usage, taking into
account the written description found in the specification.
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997)(“The PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary
skill in the art.”); In re Sneed, 710 F.2d 1544, 1548, 218
USPQ 385, 388 (Fed. Cir. 1983).
As seen from reproduced claim 1 above, appellants’
claimed subject matter calls for a display device comprising a
display screen having an antistatic, light absorbing coating
which contains latex particles of electroconductive
polypyrrole, wherein the coating “predominately consists of” a
homogeneous mixture of latex particles of polypyrrole, a
Appeal No. 1998-0870
Application No. 08/325,015
We attach a copy of this reference for appellants’ convenience.4
6
steric stabilizer for the polypyrrole particles, and antimony-
doped tin oxide particles.
As to the phrase “predominately consists of” which is
used to define the coating, the phrase “consists of” is
ordinarily interpreted as excluding any unspecified
ingredients. PPG Industries Inc. v. Guardian Industries
Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir.
1998); Ex parte Davis, 80 USPQ 448, 449 (Bd. App. 1948).
In the present case, however, the phrase “consists of” is
qualified, and broadened, by the term “predominately.”
According to Webster’s Ninth New Collegiate Dictionary,
Merriam-Webster Inc., Springfield, MA (1985) at page 927, the4
root term “predominate” is synonymous with “predominant.” The
term “predominantly,” which was used in original claim 1, is
defined as “for the most part: mainly.” Thus, the ordinary
meaning of “coating predominately consists of a homogeneous
mixture of said latex particles of polypyrrole, a steric
stabilizer for said particles of polypyrrole and antimony-
doped tin oxide particles” would be that the coating for the
Appeal No. 1998-0870
Application No. 08/325,015
It is well settled that limitations from the specification are not to5
be read into the claims. Comark Communication, Inc. v. Harris Corp., 156 F.3d
7
most part consists of the specified homogeneous mixture. In
other words, the final coating on the display screen can
contain other unspecified ingredients as long as it mainly
consists (i.e., greater than 50%) of the specified homogeneous
mixture.
We next look to the specification to determine whether
appellants are using the phrase “predominately consists of” in
a manner that is different from its ordinary meaning.
However, we do not find any clear definition or explanation in
the specification that would indicate that the phrase
“predominately consists of” is being used more restrictively
than in the ordinary sense. In the appellants’ specification
at page 3, line 33 to page 4, line 5, appellants state that
the “coating in accordance with the invention does not
comprise a matrix of SiO . . . the coating consists of a2
homogeneous mixture of both types of particles.” However, the
language found in the specification (i.e., “coating . . . does
not comprise SiO ” or “coating consists of”) is not recited in2
claim 1 on appeal. Nor is the claimed phrase “predominately5
Appeal No. 1998-0870
Application No. 08/325,015
1182, 1186, 48 USPQ2d 1001, 1004 (Fed. Cir. 1998); In re Van Geuns, 988 F.2d
1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993).
8
consists of” specifically defined anywhere in the original
disclosure. Moreover, at page 3, lines 19 and 20 of the
specification, appellants state: “In addition to polypyrrole
particles, the coating in accordance with the invention
comprises particles of antimony-doped tin oxide (ATO or
Sb:SnO )” (Emphasis added.) At best, the specification is2
equivocal, and does not shed any light, regarding the meaning
of “predominately consists of.” Therefore, we give the phrase
“predominately consists of” its broadest ordinary meaning. In
so doing, we determine that the phrase “predominately consists
of” opens the coating to unspecified ingredients, as long as
the specified homogeneous mixture is present for the most part
(i.e., greater than 50%).
Turning to the rejection, the examiner’s position is
stated as follows:
“It would have been obvious to one of ordinary
skill in the art at the time of the invention to
use conductive polymers such as polypyrrole
instead of carbon black as suggested by Wessling
and De Boer in the apparatus of Kinoshita
because both are conductive and because De Boer
teaches that use of latex produces an antistatic
Appeal No. 1998-0870
Application No. 08/325,015
9
coating which can adhere firmly to the display
screen, is substantially mechanically durable
and scratch resistant, resistant to solvents and
cleaning agents and exhibits suitable optical
properties such as bringing the light
transmission to a desired value (column 1, lines
30-47). . . . It would have been obvious to one
of ordinary skill in the art at the time of the
invention to use a steric stabilizer as taught
by Armes et al. when using conductive polymers
as suggested by Wessling and De Boer in the
apparatus of Kinoshita to prevent precipitation”
(Answer, pages 4 and 5).
On the other hand, appellants argue that “[t]here is nothing
in this combination of references that would lead a person of
ordinary skill in the art to provide on the surface of a
display screen of a display device an antistatic light-
absorbing coating predominantly consisting of latex particles
of polypyrrole and antimony-doped tin oxide particles” (Brief,
page 6).
As correctly found by the examiner, Kinoshita discloses a
coating material for use in the formation of an
antistatic/high refractive index film comprising a fluid
containing a mixture of an antimony doped tin oxide fine
powder and a black colored electrically conductive fine powder
(page 3, lines 31-36; page 21, lines 36-38). The film can be
used on various substrates including display screens such as a
Appeal No. 1998-0870
Application No. 08/325,015
According to Armes, polymeric surfactants are often referred to in the6
art as “steric stabilizers” (column 1, lines 19-24).
10
cathode ray tube (CRT) (page 2, lines 8-18; page 4, lines 6-9;
page 23, lines 5-13; Figure 1). Kinoshita also discloses that
the black colored electrically conductive fine powder (e.g.,
carbon black) may be of a black, gray, blackish gray, or
blackish brown shade and must possess conductivity (page 4,
lines 43-48). According to Kinoshita, the black colored
electrically conductive fine powder, particularly when it has
a conductivity higher than the antimony doped tin oxide
particles, generates light absorption (page 4, lines 27-42;
page 8, lines 1-5 and 37-42). Further, Kinoshita teaches that
dispersants such as anionic surfactants, cationic surfactants,
ampholytic surfactants, and non-ionic surfactants may be used
to disperse the carbon black fine powder, and that the
dispersant is preferably polymeric (page 5, lines 20-22). As6
in appellants’ claimed invention, Kinoshita also teaches a
uniform (i.e., homogeneous) aqueous mixture of the antimony
doped tin oxide and the black colored electrically conductive
fine powder (page 6, lines 28-32; page 10, lines 5-10; page
11, lines 39-44; page 13, lines 23-27).
Appeal No. 1998-0870
Application No. 08/325,015
11
In a working example, Kinoshita shows a 17-inch TV Braun
tube CRT panel that has been spin coated with a first layer
film of an aqueous mixture comprising 1.9 g of antimony doped
tin oxide, 0.1 g of carbon black fine powder, 0.15 g of a 1%
aqueous solution of a polymeric dispersant, and 97.85 g of
water (Preferred Embodiment 17 together with page 6, lines 35-
41). After the first layer is coated, a second layer of
tetraethoxysilane, HCl, and ethanol is deposited thereon.
Thus, the examiner correctly found that the subject
matter of claim 1 on appeal differs from Kinoshita’s
disclosure only in that a polypyrrole and a steric stabilizer
(i.e., a dispersant or a surfactant) therefor is used instead
of carbon black and a dispersant for the carbon black.
However, Kinoshita’s teaching is not limited to the use of
carbon black or inorganic materials. Kinoshita repeatedly
teaches the use of any “black colored electrically conductive
powder” (page 3, lines 31-33; page 4, lines 43-45; page 6,
lines 28-32; page 21, lines 36-38).
Wessling, like Kinoshita, is concerned with antistatic,
electroconductive materials and the elimination of
electrostatic charges (abstract; column 1, lines 7-10).
Appeal No. 1998-0870
Application No. 08/325,015
12
Wessling shows that finely divided (preferably having an
average particle size less than or equal to 1 micron),
intrinsically conductive polymers with a conjugated B-electron
system that can be rendered electrically conductive by
complexation, such as polypyrrole, and finely divided
(preferably having an average particle size less than or equal
to 1 micron) carbon black having a specific surface area of
greater than 80 m /g are interchangeable as part of a system2
of finely divided electrically conductive materials in polymer
matrix compositions including enamels (column 2, lines 8-30
and 53-64; column 4, lines 12-18).
De Boer discloses that an aqueous electroconductive
polypyrrole latex, although used in combination with an
aqueous solution of hydrolyzed alkoxysilane, provides an
antistatic coating for display screens (column 1, lines 1-4
and 30-47). Further, De Boer teaches that polypyrrole is
black and that polyvinyl alcohol is a steric stabilizer (i.e.,
a dispersant or surfactant) for polypyrrole (column 3, lines
23-38).
Armes teaches an electrically conductive polypyrrole-
containing composition that has good film-forming
Appeal No. 1998-0870
Application No. 08/325,015
13
characteristics and can be processed by conventional coating
techniques (column 1, lines 11-24; column 1, line 34 to column
2, line 37). Additionally, Armes teaches the use of vinyl
pyridine-containing polymer as a steric stabilizer for the
polypyrrole to prevent precipitation (column 2, lines 19-36;
column 3, lines 31-41). Although Armes uses centrifugation
and decantation steps after oxidative polymerization, some of
the steric stabilizer remains in the final conductive polymer
composition (column 4, lines 19-37). Further, Armes also
shows that polypyrrole is black (see, e.g., Example 1).
Given these disclosures, we agree with the examiner that
one of ordinary skill in the art would have found it obvious
within the meaning of 35 U.S.C. § 103 to use polypyrrole
(e.g., the electroconductive latex composition of Armes as
described on column 4, lines 19-37) in lieu of carbon black as
the black electrically conductive fine powder in Kinoshita’s
Preferred Embodiment 17. We reach this conclusion because we
find that one of ordinary skill in the art would have
recognized from the collective teachings of Wessling, De Boer,
and Armes that carbon black and polypyrrole have comparable
electrically conductive properties and both would be equally
Appeal No. 1998-0870
Application No. 08/325,015
14
suitable in Kinoshita’s antistatic coating, thus making them
interchangeable for the purposes disclosed in Kinoshita. In
re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed.
Cir. 1985); In re Longi, 759 F.2d 887, 896, 225 USPQ 645, 651
(Fed. Cir. 1985); In re Fout, 675 F.2d 297, 301, 213 USPQ 532,
536 (CCPA 1982).
As to the steric stabilizer for the polypyrrole, we
conclude that it would also have been obvious to one of
ordinary skill in the art to use an appropriate amount of
steric stabilizer for the polypyrrole in Kinoshita, because
Kinoshita suggests the use of a dispersant (i.e., a surfactant
or a steric stabilizer) for the black electrically conductive
fine powder particles and its incorporation would be expected
to prevent precipitation from the aqueous dispersion (i.e.,
maintain a stable dispersion) as suggested by Armes.
Appellants urge that the coating of the present invention
provides the advantages of not requiring the use of harmful
organic solvents, of not requiring a time-consuming
centrifuging step in its preparation, and not being subjected
to being washed away when a layer of alcoholic solution of an
Appeal No. 1998-0870
Application No. 08/325,015
15
alkoxysilane is provided on it to provide a supplemental layer
(Brief, page 4). First, with respect to the use of harmful
organic solvents, Kinoshita teaches that the organic solvent
is optional. In this regard, Kinoshita states as follows:
“The coating material for use in the formation
of the first layer of film described above is
obtained by the mixing and dispersion of
antimony doped tin oxide fine powder and black
colored conductive fine powder and a dispersant
and/or a solvent possessing a high boiling point
and a high surface tension, by means of a method
in which mixing and dispersion is conducted in
water or in an organic solvent using an
ultrasonic homogenizer or a sand mill or the
like.” (Emphases added; page 6, lines 28-32.)
Second, with respect to the centrifuging step described in
either Armes or De Boer, claim 1 on appeal does not exclude a
product that is obtained by a method including a centrifuging
step. Nor does the claim recite any amount limitation for the
steric stabilizer that would distinguish the claimed subject
matter over the applied prior art references. Third, with
respect to the coating not being subjected to being washed
away when a layer of alcoholic solution of alkoxysilane is
applied over it, we note that Kinoshita successfully applies a
second layer film of an alcoholic solution of an alkoxysilane
without any difficulty (see, e.g., Preferred Embodiment 17).
Appeal No. 1998-0870
Application No. 08/325,015
16
In appellants’ specification, the antistatic, light-absorbing
coating is dried following spin coating (page 7, lines 28-32).
As in appellants’ specification, Kinoshita also dries the
antistatic coating (see, e.g., Preferred Embodiment 1).
Accordingly, we do not consider any of the alleged
“advantages” to be persuasive, because there is no evidence
(e.g., comparative experiments) on this record to show any
nonobvious difference between the subject matter of claim 1 on
appeal and the closest prior art, which is Kinoshita.
Appellants contend that De Boer teaches the use of only a
single electroconductive species and would therefore lead a
person of ordinary skill in the art away from the claimed
combination of electroconductive particles (i.e., the
combination of the antimony doped tin oxide and the
polypyrrole). Further, appellants urge that De Boer’s coating
requires a silicon dioxide matrix, which would lead one of
ordinary skill in the art from the use of any discrete
particles in addition to the latex particles of polypyrrole.
We, like the examiner, reject these arguments, because they
ignore the collective teachings of all the references
including Kinoshita. The question is what the combined
Appeal No. 1998-0870
Application No. 08/325,015
17
teachings of the applied references would have suggested to
one of ordinary skill in the art; nonobviousness cannot be
established by attacking references individually when the
rejection is based on a combination of references. In re
Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985); In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
As we discussed above, we find that the combined
teachings of the applied references would have led one of
ordinary skill in the art to substitute the carbon black with
polypyrrole, because the references show that these materials
are interchangeable as black electrically conductive fine
powders called for in Kinoshita. Thus, we conclude that the
applied prior art references would have provided ample
motivation or suggestion to one of ordinary skill in the art
to arrive at appellants’ claimed subject matter.
It also appears that appellants are alleging that Armes
and Wessling constitute non-analogous art. We are not
persuaded by this argument. As correctly stated by the
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Application No. 08/325,015
18
examiner, the test for determining whether a prior art
reference is analogous is as follows: (1) whether the art is
from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is
Appeal No. 1998-0870
Application No. 08/325,015
19
not within the inventor’s endeavor, whether the reference is
reasonably pertinent to the particular problem with which the
inventor is involved. In re Clay, 966 F.2d 656, 659, 23
USPQ2d 1058, 1060 (Fed. Cir. 1992).
Here, we note that appellants’ field of endeavor is a
display device comprising a display screen having an
antistatic, light-absorbing coating containing electrically
conductive polypyrrole. See claim 1 on appeal. Further, we
note that appellants and Kinoshita are both concerned with the
problem of providing antistatic, electroconductive coatings.
Although Armes and Wessling do not relate to display screens,
we hold that they are reasonably pertinent to the problems
with which appellants and Kinoshita are concerned (i.e.,
antistatic and electro-conductive properties). Specifically,
Armes discloses at column 1, lines 11-14 as follows:
“Conductive polymers have been widely investigated due to
growing interest in their use in, e.g., anti-static coatings,
conductive paints, electromagnetic shielding, electrode
coatings and the like.” Since Armes relates to
electroconductive polymers, which are commonly used in
antistatic coatings, it would be reasonably pertinent to
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Application No. 08/325,015
20
appellants’ problem of providing an antistatic, electrically
conductive coating. Similarly, Wessling relates to antistatic
or electrically conductive polymer compositions (abstract),
and thus appellants would have been motivated to consider its
teachings in addressing the need for an antistatic,
electrically conductive coating on a display screen.
Appellants urge that even if Kinoshita and Wessling are
combined, the finely divided non-conductive material and the
non-conductive polymer matrix in Wessling would provide a
coating that, unlike the claimed coating, would not
“predominantly consist of” latex particles of polypyrrole and
antimony doped tin oxide particles. We do not subscribe to
this argument. First, as we discussed above, Wessling is
cited to show that carbon black and polypyrrole have
comparable electroconductive properties, thus making them
interchangeable for the purposes disclosed in Kinoshita.
Again, we are not persuaded by appellants’ attack of the
references individually. Further, as we pointed out above,
the phrase “predominately consists of” is much broader in
scope than “consists of.” In this regard, the finely divided
non-conductive material (component C) of Wessling is optional
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21
(column 4, lines 19-21), and, even if present, it can be
included in amounts as low as 10% based on the amount of the
polypyrrole (component A) (column 3, lines 22-31).
Furthermore, we determine that the non-conductive matrix
polymer may constitute the minor portion of the composition
(Examples 4, 18, and 19).
Accordingly, after a careful consideration of the
totality of the record, including the specification, the
claims, and all of the arguments advanced by the appellants
and the examiner, we conclude that the subject matter of the
claims on appeal would have been obvious to one of ordinary
skill in the art at the time of appellants’ invention within
the meaning of 35 U.S.C. § 103.
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
JOHN D. SMITH )
Appeal No. 1998-0870
Application No. 08/325,015
22
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 1998-0870
Application No. 08/325,015
23
CORPORATE PATENT COUNSEL
US PHILIPS CORPORATION
580 WHITE PLAINS ROAD
TARRYTOWN, NY 10591