Ex Parte Eshleman

Patent Trial and Appeal Board

Oct 4, 2012

11319808 (P.T.A.B. Oct. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DEAN ESHLEMAN
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Appeal 2010-005424
Application 11/319,808
Technology Center 2800
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Before: JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and HUNG H. BUI,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3 through 6, 8, 10 through 16, and 18.
We affirm-in-part.
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Application 11/319,808
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INVENTION
The invention is directed to a laminate structure for a liquid crystal
cell which uses spacers of different dimensions to maintain a uniform cell
gap. See page 3 and Figure 2 of Appellant’s Specification. Claim 1 is
representative of the invention and reproduced below:
1. A laminate structure comprising:
a first layer having a planar region and a peripheral contoured
region;
a planar second layer parallel to and spaced from the first layer
and overlying the generally planar region and the peripheral contoured
region of the first layer; and
a plurality of uniform spacers positioned between the first and
second layers and spacing the second layer a uniform distance from
the planar region of the first layer, and one or more peripheral spacers
positioned between the first and second layers in the peripheral
contoured region, the peripheral spacers extending between the
peripheral contoured region of the first layer and the planar second
layer, the peripheral spacers having a vertical dimension greater than a
vertical dimension of the uniform spacers; adhesive between the first
and second layers in the peripheral contoured region;
the planar second layer lying entirely in a single plane spaced
from the planar region and the peripheral contoured region of the first
layer.

REFERENCES

Takanashi US 5,231,527 Jul. 27, 1993
Ishihara US 5,537,235 Jul. 16, 1996
Shiroto US 5,812,232 Sep. 22, 1998
Mathew US 6,122,033 Sep. 19, 2000

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REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 4, 5, 8, and 10 through 13 under
35 U.S.C. § 103(a) as unpatentable over Ishihara in view of Shiroto. Answer
3-61.
The Examiner has rejected claims 14, 15, 16, and 18 under 35 U.S.C.
§ 102(b) as anticipated over Ishihara. Answer 7-8.
The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Ishihara in view of Shiroto and Takanashi. Answer 8-9.
The Examiner has rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Ishihara in view of Shiroto and Mathew. Answer 9-10.

ISSUES
Appellant argues on pages 4 and 5 of the Brief2 that the Examiner’s
rejection of claims 1, 4, 5, 8, and 10 through 13 is in error as neither of the
references teaches a laminate with a first layer that has a contoured region
and a planar region; and a second layer that lies in a single plane. These
arguments present us with the issue: did the Examiner err in finding the
combination of the references teaches a laminate with spacers where the first
layer has both planar and contoured regions and the second layer lies in a
single plane, as recited in representative claim 1.
We note that Appellant’s arguments present additional issues with
respect to the other rejections which we address in the analysis section infra.

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
December 15, 2009.
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ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellant’s
arguments. We disagree with Appellant’s conclusions. We adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief.

Claims 1, 4, 5, 8, and 10 through 13
Appellant argues Ishihara teaches that both layers of the laminate have
contoured regions and that the layers are purposefully made to compensate
for resistances of wires, unevenness of temperatures and to prevent bubbles.
Brief 4. While we concur that Ishihara depicts in the drawings that both
layers are contoured, we are not convinced by Appellant’s argument that
Ishihara is so limited. The portions of Ishihara cited in Appellant’s
argument are addressing the gaps in the different sections of the laminate,
and do not specifically teach that both layers must be contoured to achieve
the gaps. Further, we note that Ishihara’s teaching is not limited to just
using multiple size spacers to maintain gaps that accommodate for the
wiring since Ishihara also teaches that the method is applicable to eliminate
a problem in thickness or space of other structural members. Col. 5, ll. 23-
25 of Ishihara.
Appellant’s further argument that Shiroto does not teach a laminate
which has a first layer with both planar and contoured regions and a second

2 Throughout this opinion we refer to Appellant’s Appeal Brief dated
January 8, 2008.
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layer that lies in a single plane does not address the figure cited by the
Examiner. The Examiner relies upon Shiroto’s FIG. 3B to teach this feature.
Answer 4, 13. This figure appears to show the claimed two layers. Thus,
Appellant’s arguments have not persuaded us that the Examiner has erred in
finding the combination of the references teaches a laminate with spacers
where the first layer has both planar and contoured regions and the second
layer lies in a single plane.
Appellant’s arguments group claim 8 with claim 1. Brief 5. Further,
Appellant’s statement concerning the references not teaching peripheral
spacers having a greater vertical dimension than the uniform spacers is not
commensurate in scope with claim 8. Brief 5.
Appellant’s arguments directed to claims 4, 10, 12, and 13 merely
recite claim limitations and assert that the feature is not taught. This does
not amount to a separate argument under 37 C.F.R. 41.52. Further, the
Examiner has specifically addressed these limitations and identified where
they are taught in the prior art. Answer 14-15. Appellant’s statements do
not identify error in these fact findings.
For the aforementioned reasons we sustain the Examiner’s rejection of
claims 1, 4, 5, 8, and 10 through 13 under 35 U.S.C. § 103(a).

Claims 14, 15, 16, and 18
Appellant’s sole argument directed to this group of claims is “[i]n
FIG. 7B of Ishihara, the peripheral spacers do not have a greater vertical
dimension than the uniform spacers.” Brief 5. As discussed infra, we
concur; however, representative claim 14 does not include a limitation
directed to the peripheral spacers having a greater vertical dimension than
the uniform spacers. Accordingly, Appellant has not persuaded us of error
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in the rejection of representative claim 14 and we sustain the Examiner’s
rejection of claims 14, 15, 16, and 18 under 35 U.S.C. § 102(b).

Claim 6
Appellant argues that Ishihara does not teach deformable peripheral
spacers which have a greater vertical dimension than the uniform spacers as
recited in claim 6. The Examiner relies upon Ishihara’s FIG. 7B as teaching
this feature. Answer 16. We disagree with the Examiner. While FIG. 7B of
Ishihara depicts deformable spacers in the periphery, there is no disclosure
anywhere in Ishihara that these deformable spacers must have a greater
vertical dimension, as recited in claim 6. Accordingly, we will not sustain
the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a).

Claim 3
Appellant argues that claim 3 recites the first layer as a wafer and that
the disclosed invention is directed to “falloff” from polishing wafers which
is not addressed by Mathew. Brief 6. We are not persuaded of error by this
argument. Claim 3 merely recites that the first layer is a wafer. Mathew
teaches a wafer, as discussed supra, and Ishihara teaches that the method is
applicable to accommodate a difference in thickness or space of other
structural members. Thus, we find ample evidence to support the
Examiner’s finding that the skilled artisan would have combined the prior art
teachings as it merely involves using known devices for their known
function. Accordingly, we sustain the Examiner’s rejection of claim 3 under
35 U.S.C. § 103(a).

Claim 4
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Appellant’s arguments on page 6 assert that the combination of the
references do not teach the layers are circular for the reasons discussed with
respect to claim 3. As discussed above, we are not persuaded by Appellant’s
arguments directed to claim 3. Accordingly, we sustain the Examiner’s
rejection of claim 4.

ORDER
We affirm the rejection of claims 14, 15, 16 and 18 under 35 U.S.C.
§ 102(b). We affirm the rejection of claims 1, 3 through 5, 8, and 10
through 13 under 35 U.S.C. § 103(a). However, we reverse the rejection of
claim 6 under 35 U.S.C. § 103(a).

CONCLUSION
The decision of the Examiner to reject claims 1, 3 through 6, 8, 10
through 16 and 18 is affirmed in part.
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-IN-PART

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