Ex Parte Chu et al

Patent Trial and Appeal Board

Jan 26, 2015

11627602 (P.T.A.B. Jan. 26, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/627,602 01/26/2007 Xi Chu VIT 0065 PA 2238
23368 7590 01/26/2015
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
CAZAN, LIVIUS RADU
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
01/26/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XI CHU, STEVE SHI LIN, and GORDON L. GRAFF
____________

Appeal 2013-001140
Application 11/627,602
Technology Center 3700
____________________

Before: MICHAEL L. HOELTER, TIMOTHY J. GOODSON, and
LEE L. STEPINA, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants Xi Chu et al. appeal under 35 U.S.C. § 134(a) from the
rejection of claims 1, 2, 4, 5, 7, 9–13, and 16–19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal and is reproduced
below, with emphasis added to highlight the limitation most pertinent to this
appeal:
1. A method of encapsulating an environmentally sensitive
device comprising:
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providing a flexible substrate in discrete sheet form;
temporarily laminating the flexible substrate adjacent to
a rigid support;
optionally applying a first barrier stack adjacent to the
flexible substrate, the first barrier stack comprising at least one
barrier layer and at least one decoupling layer;
applying the environmentally sensitive device adjacent to
the flexible substrate;
applying a second barrier stack adjacent to the
environmentally sensitive device, the second barrier stack
comprising at least one barrier layer and at least one decoupling
layer, the environmentally sensitive device being encapsulated
between the substrate and the second barrier stack, the substrate
and the second barrier stack forming a seal, or between the first
barrier stack and the second barrier stack, the first and second
barrier stacks forming a seal; and
removing the encapsulated environmentally sensitive
device from the rigid support.

PRIOR ART
The Examiner relies on the following evidence in rejecting the claims
that are the subject of this appeal:
Kazlas US 2004/0014265 A1 Jan. 22, 2004
Burrows US 6,866,901 B2 Mar. 15, 2005

GROUND OF REJECTION
Claims 1, 2, 4, 5, 7, 9–13, and 16–19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Burrows in view of Kazlas. Ans. 4.

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OPINION
The sole issue Appellants present in this appeal is whether Burrows is
available as prior art in the Examiner’s obviousness rejection. App. Br. 3,
12; Reply Br. 5.
Appellants’ Specification, as filed on January 26, 2007, includes the
following statement regarding priority:
This application is a continuation-in-part of U.S. Application
Serial No. 11/068,356, filed February 28, 2005, which is a
divisional of U.S. Application Serial No. 09/966,163, filed
September 28, 2001, now U.S. Patent No. 6,866,901, which is
a continuation-in-part of U.S. Application Serial No.
09/427,138, filed October 25, 1999, now U.S. Patent No.
6,522,067, all of which are incorporated herein by reference.
Spec. 1, ¶ 1 (emphasis added). Thus, the application from which Burrows
issued was among the applications to which the present application claimed
priority.
The Examiner finds that U.S. Application Serial No. 11/068,356
(hereinafter, “the ’356 application”), to which the present application claims
priority as a continuation-in-part, “provides no support for temporarily
laminating a flexible substrate adjacent to a rigid support as claimed.” Final
Act. dated Apr. 3, 2012 at 2. The limitation “temporarily laminating the
flexible substrate adjacent to a rigid support” appears in independent claim
1, from which each of the other rejected claims depend. See Claims App’x
14–16. Therefore, the Examiner determines that the effective filing date of
Appellants’ claims is January 26, 2007, the filing date of the present
application. Id. The Examiner finds that Burrows has “a publication date
more than one year prior to the effective filing date to which the present
claims are entitled.” Id. at 6. Accordingly, the Examiner concludes that
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Burrows is available as prior art under 35 U.S.C. § 102(b) “even if the
reference is [Appellants’] own work. . . .” Id.
Appellants agree with the Examiner’s finding that the ’356 application
does not disclose “temporarily laminating the flexible substrate adjacent to a
rigid support,” explaining that “it is this feature that is new relative to both
[Burrows] as well as [the ’356 application] that the present CIP application
claims priority to.” App. Br. 2. See also Reply Br. 2 (stating that Appellants
“do not take issue with the Examiner’s position that the date of any claims
that may issue upon the present application cannot relate all the way back to
the Burrows filing date.”). Appellants argue that although they are
clearly prohibit[ed] . . . from relating priority back to Burrows
for any claim (such as present independent claim 1) that
includes a limitation subject to MPEP 201.08, it does not follow
that the subject-matter disclosed in the present Application that
is common to that disclosed in Burrows is not entitled to the
earlier Burrows priority date upon which the present
Application is based.
App. Br. 4–5.
Appellants present several arguments why Burrows should not be
available as prior art against the claims in the present application.
Appellants argue that treating Burrows as prior art is “incompatible with
current US patent practice relating to the priority of continuing
applications.” App. Br. 6. Appellants assert that “the well-established
legislative purpose of creating CIP applications [was] to allow a patent
applicant to avoid having his or her own prior application be used against the
later CIP application so long as proper procedural matters as set forth
in 35 USC 120 are followed.” Id. at 7. See also Reply Br. 2, 5. Appellants
further argue that the § 102(b) statutory bar is counted from “the date of the
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application for patent,” which for common disclosed subject matter should
be the filing date of Burrows, not the filing date of the present application.
Id. at 8. Appellants also argue that In re Hafner, 410 F.2d 1403 (CCPA
1969), which the Examiner discussed in the rejection, is not controlling
because it was decided before a 1975 amendment to 35 U.S.C. § 120 that
altered the relevant analysis. Id. at 11–12.
Appellants’ arguments that Burrows is unavailable as prior art are
foreclosed by precedent addressing this specific issue, with which the
Examiner’s analysis is in accord. In In re Chu, 66 F.3d 292, 295–96 (Fed.
Cir. 1995), which was cited in the Examiner’s rejection (Final Act. dated
Apr. 3, 2012 at 5), the Federal Circuit reviewed an obviousness rejection in
which the primary reference was a patent to Doyle, to which the application
at issue claimed priority as a continuation-in-part. The appellants in Chu
maintained that their application “should be afforded the Doyle patent filing
date with respect to ‘the disclosure of the Doyle application’ because [their]
application claim[ed] to be a CIP of the Doyle patent.” Id. at 296. The
Federal Circuit rejected this argument and concluded that Doyle was a
proper prior art reference:
Chu is entitled to the benefit of the Doyle patent filing date only
if the Doyle patent discloses the subject matter now claimed by
Chu. This, however, is admitted by Chu not to be the case. In
fact, Chu states that “the invention as now claimed[ ] was not
described in the [Doyle] patent.” Specifically, Chu concedes
that “nothing in Doyle suggests that SCR catalyst be placed
inside the bag filter.” Therefore, independent claim 1, which
includes this limitation, and dependent claims 2, 4, and 14, are
not supported by the Doyle patent disclosure. Accordingly,
Chu cannot obtain the benefit of the Doyle patent filing date for
these claims and the Doyle patent was properly relied on as
prior art.
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Id. at 297. Here, as in Chu, Appellants concede that a limitation in their sole
independent claim is not supported by the application to which they claim
priority as a continuation-in-part. See App. Br. 2, 4–5; Reply Br. 2.
Appellants do not attempt to distinguish Chu, nor do Appellants cite any
precedent with a contrary holding. Thus, Chu’s holding compels the result
that Burrows is available as a prior art reference in this case.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1, 2, 4, 5, 7, 9–13, and 16–19 under 35 U.S.C. § 103(a) as being
unpatentable over Burrows in view of Kazlas.

DECISION
We AFFIRM the Examiner’s rejections of claims 1, 2, 4, 5, 7, 9–13,
and 16–19.
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

Klh