Ex Parte Choo et al

Board of Patent Appeals and Interferences

Dec 10, 2008

11028642 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAE-HO CHOO
and SANG-UK JUNG
____________

Appeal 2008-5272
Application 11/028,642
Technology Center 2800
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Decided: December 10, 2008
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appeal 2008-5272
Application 11/028,642

Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of pending claims 56, 57, and 59-65.1
(Examiner’s Answer entered January 17, 2007, hereinafter “Ans”). We have
jurisdiction pursuant to 35 U.S.C. § 6(b) (2002).
We REVERSE and ENTER A NEW GROUND OF REJECTION
under 37 C.F.R. § 41.50(b) (2007).

Appellants’ claimed invention is directed to a method for
manufacturing liquid crystal displays (LCD) including forming a spacer on a
first substrate or a second substrate and depositing a sealant on the first
substrate. (Spec. 5, ll. 5-16; 7, l. 22 – 8, l. 4). The sealant is exposed to a
first hardening process to partially harden the sealant. (Spec. 9, ll. 2-5). The
method further includes depositing liquid crystal material on the first
substrate and conjoining the first and second substrate in a vacuum state.
(Spec. 9, ll. 13-18; 11, ll. 3-6). The method then includes fully hardening
the sealant. (Spec. 9, ll. 17-20). The steps of forming the spacer, depositing
the sealant, depositing the liquid crystal, conjoining the first and second
substrate, and fully hardening the sealant are performed as an in-line
process. (Spec. 3, ll. 6-13). Appellants’ Specification states that by partially
hardening the sealant, no reaction takes place between the liquid crystal
layer and the sealant. (Spec. 8, l. 20 - 9, l. 1).
Claim 56, the only independent claim on appeal, recites:
56. A method for manufacturing liquid crystal displays,
comprising steps of:

1 Claims 1-55 and 58 have been canceled. (Appeal Brief filed October 6,
2006, hereinafter “Br.,” 15).
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forming a spacer on a first substrate or a second substrate;

depositing a sealant on the first substrate;

exposing the sealant to an ultraviolet ray to partially harden the
sealant;

depositing liquid crystal on the first substrate;

conjoining the first substrate and the second substrate in a
vacuum state; and

fully hardening the sealant,

wherein the steps of forming the spacer, depositing the sealant,
depositing the liquid crystal, conjoining the first substrate and the
second substrate, and fully hardening the sealant are performed as in-
line processes.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chiklis 4,647,157 Mar. 3, 1987
von Gutfeld 6,055,035 Apr. 25, 2000

The Examiner rejected claims 56, 57, and 59-65 under 35 U.S.C. §
103(a) as being obvious over von Gutfeld in view of Chiklis.
The Examiner found that von Gutfeld describes the claimed process
except for partially hardening the sealant and performing the claimed steps
as part of an in-line process. (Ans. 4 and 5). The Examiner found that
Chiklis describes drying a sealant prior to adding a liquid crystal material to
prepare an LCD assembly where leakage and current characteristics of the
cell were not degraded. (Ans. 5). The Examiner concluded that it would
have been obvious to add a partial hardening process to the process of von
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Gutfeld in view of Chiklis in order to form an LCD assembly where leakage
and current characteristics of the cell were not degraded. (Ans. 5). The
Examiner also concluded that it would have been obvious to have performed
the process as an in-line process in order to make the process more efficient.
(Ans. 6).
Appellants contend that von Gutfeld in combination with Chiklis fails
to disclose that the sealant is partially hardened through exposure to an
ultraviolet ray. (Br. 5 and 6). Appellants argue that “drying” in Chiklis
means polymerizing, which is not hardening. (Br. 6-9). Appellants also
argue that ultraviolet ray is not equivalent to heating because heat
polymerizes the sealant and ultraviolet ray hardens the sealant. (Br. 11).
Appellants contend that Chiklis teaches away from partially hardening the
sealant because Chiklis teaches preventing interaction between the sealant
and the liquid crystal material by selecting the sealant material and does not
teach or suggest achieving the same result by partially hardening the sealant.
(Br. 10).

ISSUE
Based on the contentions of the Examiner and the Appellants, the
issue is: Did the Examiner err in determining that it would it have been
obvious to modify von Gutfeld’s LCD manufacturing process by partially
hardening the sealant prior to depositing the liquid crystal material in view
of Chiklis’ sealant drying step?

FINDINGS OF FACT
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The record supports the following Findings of Fact (FF) by a
preponderance of the evidence.
1. von Gutfeld describes a method for manufacturing LCDs in which
a light polymerizing sealant affixes a first substrate to a second
substrate where the adhesive remains flexible until a final cure.
(Abstract; Col. 7, ll. 23-28)
2. von Gutfeld describes that ultraviolet light cures the sealant by a
process well-known in the art. (Col. 7, ll. 35).
3. Chiklis describes a fluoroelastomeric terpolymer sealant for use in
liquid crystal cells that resists attack from the liquid crystal
material. (Col. 1, ll. 56-68).
4. Chiklis’ Example 1 states:
A liquid crystal display device having a perimeter seal of
fluoroelastomeric terpolymer was prepared in the following
manner. A 25% by weight solution of Fluorel FT-2481 (a
44/32/19 by weight fluoroelastomeric terpolymer of vinylidene
fluoride, hexafluoropropylene and tetrafluoroethylene) in
methyl propyl ketone was employed for the application of
sealant to each of the elements to be joined in the construction
of the display. Adhesive stripes of the sealant solution were
applied by extrusion at about 0.5 to 1.5 mil thickness (0.013 to
0.038 mm.) along the edges of a web of a first element
comprising a polyethylene terephthalate support, polarizing
layer, a line-pattern electrode layer and an alignment layer . . .
The extruded sealant stripes were dried at 66º C . . . Liquid
crystal material was applied at the nip of the interfacing web
sections and squeegeed by roll to uniformly spread the liquid
crystal material between the web sections. Simultaneously with
the application of liquid crystal material, the elements were
sealed by a heated laminator (about 20 to 40 seconds at a
temperature of 149º to 163º C. (300º -325º F.). The resulting
perimeter seal was not degraded by the liquid crystal material
confined thereby and did not undergo softening on storage.
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Leakage and current characteristics of the cell were not
degraded.
(Col. 8, ll. 30-63) (emphases added).

5. Appellants’ Specification states that the sealant is exposed to a first
hardening process in which a portion of the sealant forms a
hardened reaction prevention layer and a portion that has not been
hardened. (Spec. 9, ll. 1-5, Fig. 6A).
6. Appellants’ Specification states that in a second hardening process,
the sealant is fully hardened completing the attachment of a first
and second substrate. (Spec. 9, ll. 9-12).

PRINCIPLES OF LAW
As the Court in KSR stated, “[o]ften, it will be necessary for a court to
look to interrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.
To facilitate review, this analysis should be made explicit. See In re Kahn,
441 F.3d 977, 988 (CA Fed. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”).” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1740-41 (2007).
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It is well settled that all the claim limitations must be taught or
suggested by the prior art to establish a prima facie case of obviousness. In
re Royka, 490 F.2d 981, 985 (CCPA 1974).

ANALYSIS
The Examiner found that the drying step performed at 66º C in
Example 1 of Chiklis is responsible for the leakage and current
characteristics of Chiklis’ LCD assembly. (Ans. 5 and 10). However, the
Examiner fails to provide a sufficient basis for this finding. In addition to
the drying step, Chiklis also describes that a heat laminator that operates at a
temperature of 149º to 163º C is used to seal the LCD assembly upon
simultaneously depositing the liquid crystal material. Chiklis does not
attribute the leakage and current characteristics of the LCD assembly to the
drying or sealing steps. Indeed, Chiklis states that the fluoroelastomeric
terpolymer sealant is employed for preventing the liquid crystal material
from attacking the sealant. Therefore, Chiklis does not provide support for
the Examiner’s position that the drying step performed at 66º C in Example
1 prevents attack of the liquid crystal material on the sealant.
Chiklis does not disclose any special definition of “dried” as used in
Example 1. Thus, Chiklis uses the word “dried” to mean “to rid of moisture
or liquid.”2 In Example 1, Chiklis describes removing methyl propyl ketone
solvent from the extruded sealant stripes through drying at 66º C. One of

2 Webster’s Third New International Dictionary Unabridged 696 (1971).
“Dried” is not limited to removing water as argued by Appellants, but may
constitute removing other liquids per the Dictionary definition. In addition,
since Chiklis starts with a fluoroelastomeric terpolymer, “dried” in Example
1 does not mean “polymerized.” (See Br. 7; Ans. 9 and 10).
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ordinary skill in the art would not have equated von Gutfeld’s ultraviolet
light curing process with drying extruded sealant stripes at 66º C. von
Gutfeld uses ultraviolet light to perform the final cure of the sealant material,
and not to remove solvent from a sealant solution after extruding the sealant
solution onto a substrate. One of ordinary skill in the art would have
recognized that the heating performed in Chiklis’ drying step at 66º C serves
a different function than the ultraviolet light curing process disclosed in von
Gutfeld. The Examiner has provided no other sufficient reason as to why
one of ordinary skill in the art would have modified von Gutfeld’s process to
include partially hardening the sealant through exposure to an ultraviolet ray
as claimed. As a result, von Gutfeld in view of Chiklis fails to teach or
suggest exposing the sealant to an ultraviolet ray to partially harden the
sealant prior to depositing liquid crystal on the first substrate.

NEW GROUNDS OF REJECTION
The following new ground of rejection is entered pursuant to 37
C.F.R. § 41.50(b) (2007).
Claims 56, 57, and 59-65 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the
Specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention.
The evidence relied upon in rejecting the claims on appeal is:
Choo 6,657,701 Dec. 2, 2003

Amendment filed June 29, 2004 in parent application 10/602,053
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Application Transmittal filed April 20, 2001 in parent application
09/838,385

Findings of Fact Pertaining to the New Ground of Rejection

7. The present application is a Continuation of Application No.
10/602,053, filed June 24, 2003, now abandoned, which is a
Continuation of Application No. 09/838,385, filed April 20, 2001,
now U.S. Patent 6,657,701. (Br. 1).
8. Appellants’ Specification states that the sealant “may [be] formed
of a heat-hardening material or an infrared ray-hardening
material….” (Spec. 8, ll. 2-4).
9. Appellants introduced the limitation “exposing the sealant to an
ultraviolet ray to partially harden the sealant” as part of new
independent claim 56 in a Preliminary Amendment filed on
January 5, 2005. (Preliminary Amendment, 3).
10. Appellants did not point to any support for the recitation of
“ultraviolet ray” in the Specification. (Preliminary Amendment
filed on January 5, 2005).
11. Appellants amended the Specification to incorporate by reference
the content of Korean Priority Document 2000-21079.
(Preliminary Amendment filed on January 5, 2005, 2).
12. In Parent Application 10/602,053, Appellants amended page 8 of
the Specification to change “infrared ray-hardening material” to
“ultraviolet ray-hardening material.” (Amendment filed June 29,
2004, 6).
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13. Appellants stated that “[t]he specification has been amended to
correct an error occurred during the translation.” (Amendment
filed June 29, 2004 in Parent Application 10/602,053, 11).
14. Appellants did not provide a certified translation of the priority
document or a declaration with the amendment. (Amendment filed
June 29, 2004 in Parent Application 10/602,053).
15. The Application Transmittal of Parent Application 09/838,385 fails
to incorporate Korean Priority Document 2000-21079 by
reference. (Application Transmittal filed April 20, 2001).
16. Parent Application 09/838,385 contains no statement that the
Korean Priority Document is incorporated by reference. (U.S.
Patent 6,657,701).
17. Parent Application 09/838,385 was not amended to state
“ultraviolet ray-hardening material” as in the 10/602,053. (U.S.
Patent 6,657,701, Col. 4, ll. 62-64).

Claim 56 recites that the sealant is partially hardened by exposing it to
an ultraviolet ray. However, the Specification only discloses sealants that
harden by exposure to heat or infrared rays. Appellants have failed to point
to any support for the claimed limitation in the Specification. In Parent
Application 10/602,053, Appellants amended the Specification, changing
“infrared” to “ultraviolet,” in order to correct an error in translation.
However, there is nothing in the original Specification which would lead one
skilled in the art to conclude that the original disclosure of infrared is in
error. See Ex parte Bondiou, 132 USPQ 356 (Bd. App. 1961). Appellants
also amended the present Specification to incorporate the Korean Priority
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Document by reference. However, Application No. 09/838,385, the original
application, fails to incorporate the Korean Priority Document by reference.
Therefore, the recitation of an ultraviolet ray constitutes new matter, which
is not supported by the original disclosure. See MPEP § 201.06(c)(IV) [R-
5], 37 C.F.R. § 1.57 (2007).
CONCLUSION
The Examiner erred in determining that it would it have been obvious to
modify von Gutfeld’s LCD manufacturing process by partially hardening the
sealant prior to depositing the liquid crystal material in view of Chiklis’
sealant drying step.
Claims 56, 57, and 59-65 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.

ORDER
We reverse the Examiner’s decision rejecting claims 56, 57, and 59-
65 under 35 U.S.C. § 103(a) as being unpatentable over von Gutfeld in view
of Chiklis.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that the
Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

No time period for taking any subsequent action in connection with
appeal may be extending under 37 C.F.R. § 1.136(a)(1)(iv).
REVERSED
NEW GROUND OF REJECTION (37 C.F.R. §41.50(b))

PL initial:
sld

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