Ex Parte Bright et al

Patent Trial and Appeal Board

Sep 30, 2016

13489130 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/489, 130 06/05/2012
32692 7590 10/04/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Clark I. BRIGHT
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67742US004 4425
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLARK I. BRIGHT, 1
Nancy S. Lennhoff, Mark E. Flanzer, and Dennis M. Brunner
Appeal2015-001949
Application 13/489,130
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and BRIAND. RANGE,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Clark I. Bright, Nancy S. Lennhoff, Mark E. Flanzer, and
Dennis M. Brunner ("3M") timely appeal under 35 U.S.C. § 134(a) from the
Final Rejection2 of claim 1-13, which are all of the pending claims.
We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as 3M Company. (Appeal Brief,
filed 18 June 2014 ("Br."), 2.)
2 Office action mailed 18 September 2013 ("Final Rejection"; cited as
"FR").
Appeal2015-001949
Application 13/489, 130
OPfNION
A. Introduction 3
The subject matter on appeal relates to touch sensors for touch
screens. (Spec. 1, 11. 29--31.)
Claim 1 is representative of the dispositive issues and reads:
A method of making a sensor component for use in a contact-
sensitive device, the method comprising:
patterning a substrate with a lift-off mask to produce
patterned substrate;
applying an underlayer layer to the patterned substrate;
applying a multilayer electrode layer to the underlayer
layer, wherein the multilayer electrode layer comprises
a first transparent or semitransparent conductive layer,
a second transparent or semitransparent conductive
layer, and
a transparent or semitransparent intervening layer
located between the first and second conductive layers,
the intervening layer including electrically conductive
pathways between the first and second conductive
layers; and
removing the liftoff mask.
(Claims App., Br. 11; some indentation, paragraphing, and emphasis added.)
3 Application 13/489,130, Method of making touch sensitive device with
multilayer electrode and underlayer, filed 5 June 2012, claiming the benefit
of a provisional application filed 9 June 2011. We refer to the
"' 130 Specification," which we cite as "Spec."
2
Appeal2015-001949
Application 13/489, 130
The Examiner maintains the following grounds of rejection4' 5 :
A. Claims 1 and 4--13 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Bright6 and (Miki7 or
Nakata8) and Tsutsumi. 9
Al. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Bright and (Miki or
Nakata), Tsutsumi, and Aufderheide. 10
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
4 Examiner's Answer mailed 11 September 2014 ("Ans.").
5 Rejections based on David G. Shaw et al., Method for forming a
multicolor inteiference coating, U.S. Patent No. 6,010,751 (2000), have
been withdrawn. (Ans. 2.)
6 Clark I. Bright, Transparent conductive articles and methods of making
same, U.S. Patent Application Publication 2003/0124392 Al (2003),
assigned to 3M, the present real party in interest.
7 Yasuhiro Miki et al., Liquid crystal display driven by one driving IC, U.S.
Patent Application Publication 2005/0259208 Al (2005).
8 Toshinobu Nakata and Hideo Yamagishi, Transparent thin-film solar cell
module and its manufacturing method, U.S. Patent Application Publication
2006/0112987 Al (2006).
9 Eishi Tsutsumi et al., Solar cell and method for manufacturing metal
electrode layer to be used in the solar cell, U.S. Patent Application
Publication 2010/0175749 Al (2010).
10 Brian E. Auferheide, Rapidly removable undercoating for vacuum
deposition of patterned layers onto substrates, U.S. Patent No. 4,714,631
(1987).
3
Appeal2015-001949
Application 13/489, 130
The Examiner finds that Bright discloses display devices. A display
device 1 11 is illustrated in Bright Figure 1, below.
{Bright Fig. 1 shows a cross section of a flat panel display}
Device 1 has transparent substrates 38, a first electrode 3, an OLED
material 2, and a second electrode 3. (FR 3, 11. 6-7.) Referring to Figure 9,
below,
{Bright Fig. 9 shows a multilayer conductive barrier layer that can substitute
for electrode 3 in Fig. 1. Base coating 20 is a polymer smoothing coating,
e.g., an organic hardcoat. Layer 22 is a transparent conductive oxide
("TCP"), which alternates with a protective polymer layer 24. Metal
layer 12 can overlay the top polymer layer 24. (Bright 4 [0060].)}
11 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
4
Appeal2015-001949
Application 13/489, 130
the Examiner finds further that "[a] lower layer (22) comprising a
transparent or semitransparent conductor layer is located between the first
and second electrodes (3)." (Id. at 11. 7-9.) Moreover, the Examiner finds
that base or barrier layer 20 in Fig. 9 corresponds to the underlayer recited in
claim 1. (Id. at 11. 9-10.)
The Examiner finds that "[t]he interlayer polymer layer separates the
conductive layers and is applied to have electrical contact between the
conductive layers." (Id. at 11. 10-12; no citation.) The Examiner also finds,
however, that Bright does not disclose an intervening layer or interlayer
having conductive pathways that connect the electrode layers. (FR 3, 11. 16-
17.)
The Examiner finds that Miki teaches an intervening layer 40b having
conductive pathways [conductive particles 40a] connecting electrode layers.
(FR 3, 11. 18-19, citing Miki, Fig. 5.) Miki Figure 5 is shown below.
20
\
/
i
. 7b 7<:l 7c ~
'··············y············· ...
7
{Miki Fig. 5 shows a cross section through a liquid crystal cell (at lines V-V
of Figs. 3 and 4, not reproduced here), showing the connections between
electrodes 25 and lead-out wiring 7 to driver IC 50}
5
Appeal2015-001949
Application 13/489, 130
The Examiner concludes that it would have been obvious to modify
Bright to have conductive pathways between the electrodes as taught by
Miki. (FR4, 11. 3-7.)
3M urges that although it is not clear which layer the Examiner
proposes to modify, it would not have been obvious to modify any
[intervening] layer of Bright to include conductive particles 40a 12 of Miki.
(Br. 3, 11. 26-27.) In particular, 3M argues that the Examiner has not shown
how conductive resin particles 40a of Miki could be incorporated into
vacuum-deposited transparent conductive oxide layer 22 of Bright. (Id. at 3,
1. 28, to 4, 1. 4.) Moreover, 3M argues (id. at 11. 4--9) because layer 22 is
already conductive, there would not have been a reason to add particles to
provide connectivity perpendicularly from the top electrode to the bottom
electrode as suggested by the Examiner in the Final Rejection (FR 6-7).
If, in contrast, the Examiner proposes to incorporate Miki particles 40a into
protective polymer layer 24 of Bright; 3M urges that Bright's teaching that
the barrier layers 3 have smooth surfaces to improve display lifetime and
optical quality would discourage that combination. (Br. 4, 11. 9, to 5, 1. 5.)
Finally, 3M argues that Miki discloses layer 40 in the border area of the
display, not in the display area where liquid crystal 30 [see Miki, Fig. 2, not
reproduced here] is present, and where barrier properties matter. In contrast,
Bright would avoid particles layer 24, which is in the display area, where
particles would degrade the optical qualities of the display. (Id. at 5, 11. 59.)
12 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
6
Appeal2015-001949
Application 13/489, 130
The weight of the evidence supports 3M. The Examiner has not come
forward with any plausible reason to modify any region of the conductive
barrier layer shown in Bright, Figure 9, with the conductive particles 40a
shown in Miki Figure 5, which provide an improved contact between
electrodes 25 of a display cell and leads 7 to driver IC 50.
The Examiner also finds that Nakata teaches a transparent film solar
cell having a conductive connection between electrodes. (FR 3, 1. 20, to 4,
1. 2, citing Nakata Fig. 3.) Nakata Figure 3 is shown below.
5 4 10
I I
,/
{Nakata Fig. 3 shows a cross section through a solar cell assembly}
Photoconversion cell 10, outlined by the dashed box, comprises
substrate 2, transparent electrode 3, semiconductive interlayer 4, and
reflecting electrode 5. First isolation grooves 21 separate adjacent
transparent electrodes 3, while second isolation grooves 22 separate adjacent
reflecting electrodes 5. Pathways 23, made of the same material as
electrode 5, connect electrode 3 of one photoconversion cell with electrode 5
of the adjacent photoconversion cell.
7
Appeal2015-001949
Application 13/489, 130
The Examiner concludes that it would have been obvious to modify
Bright to have conductive pathways between the electrodes as taught by
Nakata. (FR 4, 11. 3-7.)
3M urges that again, the Examiner has not provided any motivation to
provide electrically conductive pathways through an intervening layer to
connect transparent or semitransparent conductive layers. (Br. 5, 11. 12-27.)
The weight of the evidence supports 3M in this aspect of the rejection
as well. The Examiner has not explained persuasively why the conductive
connections provided by pathways 23 in Nakata, which serve to place
adjacent photoelectric conversion cells 10 in series, would have served any
useful purpose in the barrier layers described in Bright.
Finally, regarding the Examiner's findings that Tsutsumi would have
suggested patterning a substrate of Bright with a lift-off mask, 3M urges that
the Examiner has not identified any reason in the prior art of record to first
pattern substrate 38 of Bright, "and then coat the patterned substrate with
base coating 20 to effectively make the pattern to disappear." (Br. 6, 11. 14--
16.)
The weight of the evidence supports 3M on this point as well. The
Examiner provides no credible explanation of why a substrate disclosed by
Bright under a barrier coating layer would be patterned.
The Examiner makes no findings regarding remaining reference
Auferheide that cure the defects of the principal rejection.
We decline to scour the record in search of disclosures that might
support the Examiner's position, and to weigh the totality of the evidence.
Our primary role is review, not examination in the first instance.
8
Appeal2015-001949
Application 13/489, 130
We conclude that 3M has shown harmful error in the appealed
rejections.
C. Order
It is ORDERED that the rejection claims 1-13 is reversed.
REVERSED
9