Ex Parte Brody

Board of Patent Appeals and Interferences

Oct 28, 2008

10900501 (B.P.A.I. Oct. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS PETER BRODY
____________

Appeal 2008-4025
Application 10/900,501
Technology Center 1700
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Decided: October 28, 2008
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3-20 (Appeal Brief filed on September 13, 2007, hereinafter
“Br.”; Final Office Action mailed on February 28, 2007). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-4025
Application 10/900,501

Appellant’s invention relates to a shadow mask, in particular to a two-
layer shadow mask for forming electronic elements on a substrate
(Specification, hereinafter “Spec.,” ¶0002).
Claim 1 on appeal reads as follows:
1. A shadow mask comprising:
a first layer (110) having first aperture (114)
therethrough; and
a second layer (112) having second aperture (122)
therethrough, the first and second layers joined together with
the first aperture (114) and the second aperture (122) offset to
define a third aperture (130) through the first and second layers
(110 and 112), wherein when viewed in a direction normal to
the first and second layers (110 and 112), the third aperture
(130) is smaller than the first aperture (114) and the third
aperture (130) is smaller than the second aperture (122).

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kaplan 3,794,873 Feb. 26, 1974
Simpson 5,730,887 Mar. 24, 1998
The Examiner rejected the claims as follows: claims 1, 3-12, and 15-
20 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Kaplan and Simpson (Examiner’s Answer mailed October 31, 2007,
hereinafter “Ans.,” 3-10).1
Specifically, the Examiner found that Kaplan describes a two-layered
shadow mask as here claimed except that it does not disclose “offsetting the
first and second apertures such that the resulting aperture is smaller than
both apertures” (Ans. 3). To account for this difference, the Examiner relied

1 The Examiner indicated that the rejection of claims 13 and 14 has been
withdrawn (Ans. 2).
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Application 10/900,501

on the teachings of Simpson (id.). In particular, the Examiner found that
Simpson teaches an offset aperture configuration to increase the resolution
of the shadow mask (id.). On the basis of these findings, the Examiner
concluded that “[i]t would have been obvious...to a person having ordinary
skill in the art to offset the apertures in the process taught by Kaplan” such
that “enhanced resolution is realized” (id.).
Appellant, on the other hand, contends that the teachings of Kaplan
conflict with those of Simpson and that “[t]he conflicting teachings of two
prior art references cannot reasonably be viewed as suggesting their
combination” (Br. 7-8). According to Appellant, Kaplan and Simpson “take
completely different approaches to producing a shadow mask having
improved resolution” by teaching shadow masks that “are interchangeable”
(Br. 8). Appellant therefore believes that “there is no benefit to be gained
and, hence, there is no motivation to combine their respective teachings in
the manner suggested by the Examiner” (id.).

ISSUE
Has Appellant demonstrated error in the Examiner’s determination
that a person a having ordinary skill in the art would have been led to
combine the teachings of Kaplan and Simpson to arrive at Appellant’s
claimed shadow mask having two layers with offset apertures?

FINDINGS OF FACT
1. Appellant’s Figures 1A and 1B are reproduced below:
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Application 10/900,501

2. Appellant’s Figures 1A and 1B are said to depict a cross-
sectional view and a top view, respectively, of a two-layer
shadow mask 100 in accordance with the invention (Spec. 5,
¶0033).
3. Kaplan discloses a shadow mask for a color television picture
tube (col. 1, ll. 13-18).
4. Kaplan describes an interchangeable shadow mask having a
thin aperture-defining layer of a first material and a thick
supporting layer of a second material, wherein holes in the
supporting layer are graded to progressively undercut, i.e., be
larger than, corresponding apertures in the aperture-defining
layer as a function of distance from the center of the mask (col.
3, ll. 58-67).
5. Kaplan’s Figure 5B is reproduced below:
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Application 10/900,501

6. Kaplan’s Figure 5B is said to depict an idealized representation
of a mask and selected apertures therein showing the
relationship of under-cutting and distance from the mask center,
wherein aperture 61 is in the geometric center of the mask, 65 is
the aperture-defining layer, 66 is the supporting or base layer,
and d is the amount of undercut represented by the difference in
radius between the aperture and the corresponding hole in
supporting layer 66, R is a path perpendicular to the mask, and
r is the actual path of the electron beam, and α is the beam
deflection angle (col. 4, ll. 39-41; col. 7, l. 56 to col. 8, l. 16).
7. Simpson describes an enhanced resolution shadow mask for a
display apparatus comprising a color cathode-ray tube with a
deflection yoke (col. 1, ll. 7-11).
8. Simpson teaches (col. 2, ll. 21-33):
The shadow mask comprises a metal sheet having
a central portion and an exterior portion with a
plurality of apertures therethrough. . . .The display
apparatus is improved prior devices [sic] in that the
apertures in the exterior portion of the mask, on the
screen-facing side thereof, have openings that are
elongated in the direction of the incident electron
beams and offset relative to the corresponding
openings on the electron gun-facing side of the
mask. [Emphasis added.]
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Application 10/900,501

9. Simpson’s Figure 6 is reproduced below:

10. Simpson’s Figure 6 is said to depict a cross-sectional view of a
portion of the mask along the diagonal, showing a preferred
etch pattern, wherein a metal sheet 39 has two oppositely
disposed major surfaces 50 and 51, respectively, and is coated
on both major surfaces with photoresist layers 52 and 53, and
60 and 62 define openings (col. 5, l. 54 to col. 6, l. 65).

PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner erred
in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed.
Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a rejection
by showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with evidence of secondary indicia of
nonobviousness.’”)(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)); see also 37 C.F.R. § 41.37(c)(1)(vii).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
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KSR reaffirms the analytical framework set out in Graham v. John
Deere Co., 383 U.S. 1 (1966), which states that an objective obviousness
analysis includes: (1) determining the scope and content of the prior art; (2)
ascertaining the differences between the prior art and the claims at issue; and
(3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S. Ct.
at 1734. Secondary considerations such as commercial success, long felt but
unsolved needs, or failure of others “‘might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.’” Id. (quoting Graham, 383 U.S. at 17-18).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006)(“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine...”).
KSR instructs “that when a patent claims a structure already known in
the prior art that is altered by mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” KSR, 127 S. Ct. at 1740.
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Anticipation is the epitome or ultimate of obviousness. In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991).

ANALYSIS
Appellant has argued claims 4, 9, and 17 under a separate heading
relative to claims 1, 8, 15, and 20. Nevertheless, the arguments for both
groups of claims are, in substance, the same. Accordingly, we select claim 1
as representative of all the rejected claims (claims 1, 3-12, and 15-20) and
confine our discussion to this selected claim. See 37 C.F.R. §
41.37(c)(1)(vii).
We see no merit in Appellant’s position that because Kaplan and
Simpson “take completely different approaches to producing a shadow mask
having improved resolution,” a person having ordinary skill in the art would
not have combined them (Br. 8). As acknowledged by Appellant, “Kaplan. .
. disclose[s] a first layer and a second layer having a first aperture and a
second aperture, respectively, aligned with each other, with the boundary or
periphery of one aperture. . . completely received within the boundary or
periphery of a corresponding aperture. . .” (Br. 6; Facts 4-6). But Simpson,
like Kaplan, teaches shadow masks for a color cathode ray tube apparatus
(Facts 3 and 7). While Simpson’s shadow mask is not identical to that
shown in Kaplan, Appellant has not pointed to persuasive evidence
demonstrating why a person having ordinary skill in the art would have
expected that Simpson’s advantage of using offset apertures would be
inapplicable in Kaplan (Facts 8-10). Contrary to Appellant’s belief (Br. 7),
Simpson, like Kaplan, teaches a shadow mask formed by creating apertures
or openings in more than one layer (Facts 9-10). Thus, Appellant has failed
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to show error in the Examiner’s conclusion that a person having ordinary
skill in the art would have found it obvious to modify Kaplan’s apertures to
be offset as shown in Simpson in order to enhance resolution, thus arriving
at Appellant’s claimed shadow mask.
Appellant argues that “in the absence of some benefit to be gained by
combining their respective teachings, there can be no apparent reason to
combine the teachings” of Kaplan and Simpson (Br. 9). This argument
ignores Supreme Court precedents, including KSR. KSR does not say that
references cannot be combined unless the prior art themselves disclose a
“benefit” for combining them. Indeed, such a rigid approach has been
rejected. KSR, 127 S. Ct. at 1741; DyStar, 464 F.3d at 1367; Alza, 464 F.3d
at 1291. Instead, KSR instructs “that when a patent claims a structure
already known in the prior art that is altered by mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 127 S. Ct. at 1740.
Appellant’s arguments fail for an additional reason. Appellant has not
shown how the subject matter of appealed claim 1 even differs in any respect
to the structure described in Simpson (Facts 9-10). In re Baxter Travenol,
952 F.2d at 391.
For these reasons, we uphold the Examiner’s rejection of claims 1, 3-
12, and 15-20.

CONCLUSION
On this record, we determine that Appellant has failed to demonstrate
any error in the Examiner’s determination that the subject matter of the
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appealed claims would have been obvious over the applied prior art
references.

DECISION
The Examiner’s decision to reject appealed claims 1, 3-12, and 15-20
is affirmed.
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

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