Ex Parte Bintz et al

Board of Patent Appeals and Interferences

Jan 27, 2006

10341828 (B.P.A.I. Jan. 27, 2006)

Application for patent filed February 2, 2000.1
1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRIAN E. AUFDERHEIDE, JOSEPH C. SPANG,
JONATHAN P. MAAG and SAMUEL F. PELLICORI

_____________
Appeal No. 2005-2666
Application 09/496,634 1
______________
HEARD: November 15, 2005
_______________
Before KIMLIN, PAK, and WARREN, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1 through 8, 10, 11, 13
through 15, 21 and 24 through 50, which are all of the claims
pending in the present application.
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Application No. 09/496,634
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APPEALED SUBJECT MATTER
According to the appellants (Brief, page 2):
Claims 1-8, 10, 11, 13-15, 21 and 24-40, 47, 49 and 50
stand or fall together.
Claims 41-46 and 48 stand or fall together.
Therefore, for purposes of this appeal, we select claims 10 and
44 as representative of all of the claims on appeal and decide
the propriety of the examiner’s rejection set forth in the Answer
based on these claims alone consistent with 37 CFR § 1.192(c)(7)
(2003) and 37 CFR § 42.37(C)(1)(vii)(2004). Claims 10 and 44 are
reproduced below:
10. A touch screen having a user interface
configured for receiving a touch input from a user,
comprising:
a film, wherein the touch screen is configured to
provide visual indicia through the film, the film
having an exterior side closer to the touch input and
an interior said farther from the touch input; and
an anti-reflective coating including a first layer
adjacent the interior side, a second layer adjacent the
first layer, and a third layer adjacent the second
layer so that the second layer is between the first
layer and third layer, wherein the third layer has a
sheet resistivity of at least about 200 ohms per square
and is configured to sense a positions of the touch
input.
44. The touch screen of Claim 10 wherein the anti-
reflective coating means is configured to provide a
reflection of less than about 4 percent at an air
interface associated with the touch screen.
Contrary to the appellants’ allegation in the amended Brief and
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Application No. 09/496,634
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Reply Brief, the “DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENTS” section of the specification defines the preferred
touch screens encompassed by the claims on appeal as follows
(page 5, lines 18-21):
With reference to Figures 1 and 2, a touch screen 10 is
embodied as Dynaclear 4-wire analog resistive touchTm
panel. Alternatively, screen 10 can be a matrix touch
screen, or other type of apparatus for sensing touches.
Touch screen 10 includes a flex layer 20, a spacer 30,
and a stable layer 40. (Emphasis added.)
PRIOR ART
The prior art references relied upon by the examiner are:
Kuhlman 4,786,767 Nov. 22, 1988
Olson et al. (Olson) 6,261,700 B1 Jul. 17, 2001
(Filed May 27, 1999)
REJECTION
Claims 1 through 8, 10, 11, 13 through 15, 21 and 24 through
50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Kuhlman and Olson.
OPINION
We have carefully reviewed the claims, specification and
applied prior art, including all of the arguments advanced by the
examiner and the appellants in support of their respective
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Application No. 09/496,634
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positions. This review has led us to conclude that the
examiner’s Section 103 rejection is well founded. Accordingly,
we affirm the examiner’s Section 103 rejection. Our reasons for
this determination follow.
Under Section 103, the obviousness of an invention cannot be
established by combining the teachings of the prior art
references absent some teaching, suggestion or incentive
supporting the combination. ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). This does not mean that the cited prior art
references must specifically suggest making the combination.
B.F. Goodrich Co. V. Aircraft Braking Systems Corp., 72 F.3d
1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Nilssen,
851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)).
Rather, the test for obviousness is what the combined teachings
of the prior art references would have suggested to those of
ordinary skill in the art. In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). This test requires us to
take into account not only the specific teachings of the prior
art references, but also any inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re Preda,
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401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
With the above precedents in mind, we turn to the examiner’s
Section 103 rejection. As is apparent from the Answer and the
amended Brief, there is no dispute that Kuhlman teaches a
“transparent touch panel membrane switch” corresponding to the
claimed touch screen, except for the claimed anti-reflective
coating layer. See also Kuhlman’s Figures 5 and 6 showing a
touch panel having a flexible film 11 having visual indicia, an
anti-reflective coating layer 20, spacers 14 and a base layer 12.
With respect to claim 10, the appellants only argue that Kuhlman
does not teach an anti-reflective coating having high, low and
high refractive index layers, with the high refractive index
third layer having a sheet resistance of at least about 200 ohms
per square. See the Brief, pages 3-7.
We are not persuaded by this argument. We initially note
that claim 10 does not require an anti-reflective coating to have
high, low and high refractive index layers as argued by the
appellants. In re Self, 671 F.2d, 1344, 1348, 213 USPQ 1, 5
(CCPA 1982)(The appellants’ argument fail from the outset because
they are not based on limitations appearing in the claim). The
claimed anti-reflective coating has three layers, with the third
layer having a sheet resistance of “at least about 200 ohms per
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square.” See claim 10. We find that Kuhlman teaches and/or
would have suggested such features. See column 4, lines 19-57.
Specifically, Kuhlman teaches (column 4, lines 19-29):
The inner surface of outer sheet 11 carries a
transparent, electrically conductive, antireflection
layer 20. Layer 20 can be a monolithic construction or
it can itself be made up of more than one layer as is
shown in FIG. 2. In FIG. 2, 17 is the plastic
substrate and layer 20 is itself a three layer stack
which includes a transparent metal oxide layer 21, a
metal layer 22 and a second transparent oxide layer 24.
Layer 20 can also be a transparent antireflective
electrically conductive coating of conductive metal
oxide.
Kuhlman goes onto state (column 4, lines 37-57):
Typical examples of monolithic layer 20 include a
single indium-tin oxide layer . . . and the like.
Examples of the multilayer high index-low index layer
of 500 A to 2000A thickness including transparent
dielectric-metal-dielectric stacks wherein 21 and 24
are the dielectric layers and 22 is the metal layer . .
. . .
This layer 20, whether presented as a monolith or as a
multilayer stack, should have substantial electrical
conductance, i.e., less than 200 ohms per square . . .
As correctly found by the examiner (the Answer, page 7):
The appellant admits that the measured sheet resistance
of the outer layer is the same as the measure sheet
resistance of the stack (see page 6 of [the] Appeal
Brief). Therefore, when Kuhlman discloses that the
stack may have a conductance (resistivity) of less than
200 ohms per square (column 4, lines 53-57), Kuhlman is
disclosing that the resistivity of the outer layer
[third layer] may be less than 200 ohms per square.
It follows that Kuhlman teaches, inter alia, an anti-reflective
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coating defined by a three layer stack, with an outer third layer
having a sheet resistivity of less than 200 ohms per square.
As properly determined by the examiner (the Answer, page 6), the
phrase “a sheet resistivity of at least about 200 ohms per
square” recited in claim 10 embraces “a sheet resistivity of less
than 200 ohms per square” in Kulhman, e.g., a sheet resistivity
of 199.9999 ohms per square, since the term “about” as used by
the appellants permit some tolerance. See In re Pappas, 214 F.2d
172, 176-77, 102 USPQ 298, 301 (CCPA 1954); In re De Vaney, 185
F.2d 679, 683, 88 USPQ 97, 101 (CCPA 1950); In re Ayers, 154 F.2d
182, 185, 69 USPQ 109, 112 (CCPA 1946).
In any event, from our perspective, one of ordinary skill in
the art would have been led to employ, inter alia, the claimed
sheet resistivity due to its closeness to Kuhlman’s sheet
resistivity, with a reasonable expectation of successfully
obtaining the same or similar utilities. In re Peterson, 315
F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003), citing
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773,
779 (Fed. Cir. 1985)(“We have also held that a prima facie case
of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skill in
the art would have expected them to have the same properties.”).
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To the extent that the claims require their anti-reflective
coating to have high, low and high refractive index layers, we
concur with the examiner that the combined teachings of Kuhlman
and Olson would have led one of ordinary skill in the art to
employ such a feature. As indicated supra, Kuhlman teaches a
touch screen comprising an anti-reflective coating having a
single indium-tin oxide (ITO) layer or multi-layers. See also
column 4, lines 37-57 and column 5, lines 5-18. In reference to
forming an anti-reflective coating on the plastic substrate of
the type discussed in Kuhlman, Olson teaches (column 21, line 45
to column 22, line 5):
One of the reasons for the versatility or
metal oxides in optically functional coatings is
that unlike other materials, they may be used to
deposit both reflective or antireflective coatings
depending on the configuration of the oxide
coating and its chemical composition. Thus, as
discussed in International Publication Document WO
96/31343 (Bright), when a single thin layer of
metal oxide, such as ITO, having a thickness of
about 50 Angstroms to about 3000 Angstroms is
deposited over a transparent plastic film, such as
polyester or polycarbonate, the amount of light
reflected by the polyester or polycarbonate
increase substantially. In this case the ITO film
acts as “reflective” coating. On the other hand,
2when alternating layers of ITO and SiO or ITO and
2SiO with a combined thickness of about 50
Angstroms to about and 3000 Angstroms are
deposited over the polyester or polycarbonate
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substance, the amount light reflected by the
polyester or polycarbonate decreases
substantially. In this case the alternating
xITO/SiO stack acts as an “antireflective”
coating.
Another reason for the versatility of
metal oxide coatings, particularly ITO, is
that they can be made electrically conductive
by doping with a conductive element, such as
tin, aluminum, barium, boron, or antimony.
When made conductive, the metal oxides also
help reduce static charge and electromagnetic
emissions.
Whether an optically functional coating is
“reflective” or “antireflective” depends on its
overall refractive index relative to the
refractive index of the underlying substrate.
2There is no dispute that the alternating layers of ITO and SiO
suggested by Olson produce high, low, and high refractive index
layers. See the amended Brief, page 6 and the specification,
page 7. Moreover, for the reasons indicated supra, we determine
that one of ordinary skill in the art would have been led to dope
the high index oxide (dielectric) layers taught by Olson to have
the claimed sheet resistivity (desired conductivity) as suggested
by Kuhlman.
With respect to claim 44, the appellants only argue that the
applied prior art references would not have suggested the claimed
anti-reflective property, i.e., “a reflection of less than about
4 percent . . .” See, e.g., the amended Brief, page 8. We do
not agree.
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As found by the examiner (the Answer, page 9), the
appellants state at page 8 of the specification that:
Conventional touch screens 10 which do not include
coatings 62 and 64 generally reflect approximately 8%
of the light from each ITO to air interface. Although
conventional reflective coatings can reduce this
reflection to 4 to 6%, anti-reflective coatings 62 and
64 can further reduce this reflection to 1.5 to 2.5%.
While Olson does not specify the specific reflection percentage
recited in claim 44, it, like the appellants, teach that
alternating layers corresponding to 62 (ITO) and 64 (Silicon
oxide) layers can substantially improve the anti-reflective
property compared to the ITO layer alone. Compare Olson, columns
21 and 22 with the specification, page 8. Thus, it is reasonable
to infer from the teachings of Olson that the suggested
alternating layers would have provided a low reflection
percentage, including that claimed. At least, the claimed
reflection percentage (antireflective property) would have
naturally followed from the suggestion of the applied prior art
references. Compare also Ex parte Obiaya, 227 USPQ 58 (Bd. Pat.
App. & Int. 1985), aff’d. mem., 795 f.2d 1017 (Fed. Cir.
1986)(“The fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the
Appeal No. 2005-2666
Application No. 09/496,634
In the event of further prosecution, the examiner is2
advised to consider whether the appellants’ admission at pages 1
through 3 of the specification alone, or together with the
teachings of Olson discussed supra, affect the patentability of
the claimed subject matter. The appellants appear to acknowledge
that the claimed touch screen structure, except for using high,
low, high refractive index layers as an anti-reflective coating,
is well known. See the specification, pages 1-2.
Conventionally, analog resistive touch screens use alternating
layers of transparent materials having low and high or high and
low refractive index layers as an anti-reflective coating, with
an outer layer or the entire layers having the claimed sheet
resistivity. See the specification, pages 2-3.
11
difference would otherwise have been obvious”).
CONCLUSION
In view of the foregoing, we determine that the evidence of
obviousness, on balance, outweighs the evidence of unobviousness
proffered by the appellants. Accordingly, we affirm the
examiner’s decision rejecting the claims on appeal under
Section 103. 2
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Application No. 09/496,634
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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
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
CKP:sld
Appeal No. 2005-2666
Application No. 09/496,634
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3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427