Ex Parte Deane et al

Board of Patent Appeals and Interferences

Mar 5, 2003

09112263 (B.P.A.I. Mar. 5, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVEN C. DEANE and CORNELIS VAN BERKEL
____________
Appeal No. 2001-1723
Application No. 09/112,263
____________
ON BRIEF
____________
Before PAK, SMITH JEFFREY T., and MOORE, 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 final rejection of
claims 1 through 5 and 10. Claims 6 through 9, the remaining claims in the application, have been
objected to, but have been indicated to be allowable if rewritten in independent form including all of
the limitations of the base claim and any intervening claims.
APPEALED SUBJECT MATTER
Appeal No. 2001-1723
Application No. 09/112,263
1 The examiner relies on this patent for the purposes of interpreting the term “glass” in the
claims on appeal.
2 The examiner relies on this dictionary for the purposes of interpreting the term “glass”
in the claims on appeal.
3 The appellants rely on this dictionary for the purposes of interpreting the term “glass” in
the claims on appeal.
2
Claims 1 and 10 are representative of the subject matter on appeal and read as follows:
1. A substrate for carrying on an insulating surface thereof thin film circuit elements in a large
area electronic device, wherein the substrate comprises a thin sheet bonded to a layer of rigid,
cellular material.
10. A large area electronic device comprising a substrate on which thin film circuit elements are
carried, wherein the substrate comprises a substrate according to Claim 1, the thin film circuit
elements are carried on the surface of the thin glass sheet.
PRIOR ART
In support of his rejections, the examiner relies on the following prior art references:
Schnable et al. (Schnable)1 4,196,232 Apr. 1, 1980
Hotaling (Hotaling ‘364) 5,221,364 Jun. 22, 1993
Hotaling (Hotaling ‘776) 5,358,776 Oct. 25, 1994
Webster’s II New Riverside University Dictionary2, The Riverside Publishing Company, page 533,
(1994).
Appellants rely on the following reference:
Hackh’s Chemical Dictionary3, Fourth Edition, McGraw-Hill Book Company, pp 298-299
(unknown publication date).
REJECTION
Appeal No. 2001-1723
Application No. 09/112,263
3
The appealed claims stand rejected as follows:
1) Claims 1 through 3, 5 and 10 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Hotaling ‘364;
2) Claims 1 through 3 and 5 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Hotaling ‘776; and
3) Claim 4 under 35 U.S.C. § 103 as unpatentable over the disclosure of either Hotaling ‘364 or
‘776.
OPINION
We have carefully reviewed the claims, specification and prior art, including all of the
evidence and arguments advanced by both the examiner and appellants in support of their respective
positions. This review leads us to conclude that the examiner’s §§ 102(b) and 103 rejections are
well founded. Accordingly, we will sustain the examiner’s §§ 102(b) and 103 rejections for
essentially those reasons expressed in the Answer and below.
We find that Hotaling ‘364 and ‘776 describe an aerogel substrate planarized with SiO2
using plasma enhanced chemical vapor deposition. See Hotaling ‘364, column 3, lines 45-48 and
column 5, lines 45-66, and Hotaling ‘776, column 4, lines 50-53 and column 6, lines 15-46. The
examiner determines that the aerogel substrate corresponds to the claimed layer of rigid, cellular
material and that the planarizing SiO2 layer corresponds to the claimed thin glass sheet. See, e.g.,
the Answer, pages 3-4.
Appeal No. 2001-1723
Application No. 09/112,263
4 Prosecution, unlike litigation, allows appellants to amend claims.
4
The appellants argue that the SiO2 layer described in Hotaling ‘364 and ‘776 is not a “glass”
layer as required by the claims on appeal. We are not persuaded by this argument for the reasons
well articulated by the examiner in his Answer and Supplemental Answer. We add the following
for emphasis.
As our reviewing court in In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1321-22 (Fed.
Cir. 1989) stated that during prosecution or examination of a patent application, the claims therein
are interpreted as broadly as their terms reasonably allow. When the
applicant state the meaning that the claim terms are intended to have,
the claims are examined with that meaning, in order to achieve a
complete exploration of the applicant’s invention and its relation to
the prior art.
The purpose of giving the broadest reasonable interpretation, absent the definition in the
specification to the contrary, is to allow the appellants to amend4 their claims to obtain the proper
coverage by express claim language, “the thought being to reduce the possibility that, after the
patent is granted, the claims may be interpreted as giving broader coverage than is justified.” In re
Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (1969).
Here, as indicated by the examiner in his Answer and Supplemental Answer, the
specification does not define the meaning of “glass” to exclude the planarizing “SiO2" layer
described in the Hotaling references. Also, we observe that the appellants do not dispute that both
Schnable and Webster’s II New Riverside Dictionary referred to by the examiner define “glass” as
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Application No. 09/112,263
5
including “SiO2". See also Schnable, column 1, lines 15-22 and Webster’s II New Riverside
Dictionary, page 533. Further, we observe that Hackh’s Chemical Dictionary relies upon by the
appellants provides a broad definition of “glass” followed by specific examples of glass
compositions. As indicated by the examiner in his Supplemental Answer, the broad definition
therein includes the “SiO2" layer described in the Hotaling references. Even if “glass” defined in
Hackh’s Chemical Dictionary is limited to specific non-SiO2 glass compositions, we determine that
the broadest reasonable definition provided in either Schnable or Webster’s II New Riverside
Dictionary is controlling. As pointed out by In re Morris, 127 F.3d 1048, 1051, 44 USPQ2d 1753,
1759 (Fed. Cir. 1997):
Absent an express definition in their specification, the fact that appellants can point
to definitions or usages that conform to their interpretation does not make the
[examiner’s] definition unreasonable when the [examiner] can point to other sources
that support their interpretation.
The appellants also argue that the functional limitation recited in the preamble of claim 1
further distinguishes the claimed substrate over the prior art substrate. We are not persuaded by this
argument.
As the court stated in In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA
1971):
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Application No. 09/112,263
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Where the [examiner] has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior
art, [he or she] possesses the authority to require the applicant to
prove that the subject matter shown to be in the prior art does not
possess the characteristic relied on.
Here, we find that the claimed and prior art substrates appear to be identical or substantially
identical. Thus, we determine that the examiner has reason to believe that the claimed functional
limitation is an inherent characteristic of the prior art substrate. See In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). The appellants, however, do no provide any
evidence to show that the prior art substrate does not possess the claimed functional limitation. See
the Brief in its entirety. Nor do we find any evidence in the record showing that the claimed
functional limitation renders the structure and/or composition of the claimed substrate patentably
different from those of the prior art substrate. Thus, on this record, we determine that the claimed
functional limitation does not distinguish the claimed substrate from the prior art substrate.
Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1432.
In any event, as properly found by the examiner at page 5 of the Supplemental Answer,
Hotaling ‘364 is directed to lightweight solar cells that may have various types of
electrodes or contact mounted in contact with the thin glass sheet (column 5, lines
67 - column 6, line 14). This reads on a large area electronic device having thin film circuit
elements.
We also observe that the appellants have not specifically challenged this finding. Thus, we
conclude that Hotaling ‘364 not only describes the claimed functional limitation recited in claim 1,
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Application No. 09/112,263
7
but also describes the corresponding limitation recited in use claim 10, within the meaning of 35
U.S.C. § 102(b).
With respect to claim 4, the appellants argue that neither Hotaling ‘364 nor Hotaling ‘776
teaches or would have suggested a glass sheet having a thickness of about 0.1 mm. We do not
agree.
Although the Hotaling references do not mention the thickness of their planarizing SiO2
layer, it can be inferred from the teachings therein that the thickness of the planarizing SiO2 layer
must serve both the planarizing and weight reducing purposes (essentially the same purposes as the
appellants’). In other words, we determine that one of ordinary skill in the art would have
recognized that the thickness of the planarizing SiO2 layer described in the Hotaling references is no
more than a result effective variable. Thus, we conclude that mere optimization of the thickness of
the planarizing SiO2 layer described in the Hotaling references to obtain the desired thickness is
well within the level of one of ordinary skill in the art. In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980).
As stated by our reviewing court in In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936 (Fed. Cir. 1990):
The law is replete with cases in which the difference between the claimed invention
and the prior art is some range or other variable within the claims .... These cases
have consistently held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. [Citations omitted].
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On this record, however, the appellants have not demonstrated, much less argued, that the claimed
thickness imparts unexpected results.
Under these circumstances, we concur with the examiner that the employment of the
optimum thickness, such as the claimed thickness, of the planarizing SiO2 layer in the substrate of
the type described in the Hotaling references would have been obvious to one of ordinary skill in the
art within the meaning of 35 U.S.C. § 103.
In view of the forgoing, the decision of the examiner is affirmed.
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Application No. 09/112,263
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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
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
CKP/lp
Appeal No. 2001-1723
Application No. 09/112,263
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