Ex Parte Forrest et al

Patent Trial and Appeal Board

Sep 14, 2018

14064687 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/064,687 10/28/2013 Stephen Forrest
29318 7590 09/18/2018
JAMES D. STEVENS
REISING ETHINGTON P.C.
755 W. BIG BEA VER RD.
SUITE 1850
TROY, MI 48084
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7935-3041-3 I 4929 CON 1509
EXAMINER
PATERSON, BRIGITTE A
ART UNIT PAPER NUMBER
2812
NOTIFICATION DATE DELIVERY MODE
09/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
stevens@reising.com
USPTOmail@reising.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN FORREST and GREGORY McGRAW
Appeal 2017-011762
Application 14/064,687
Technology Center 2800
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1-3 and
5-15. 2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellant is the Applicant, "the Regents of the University of
Michigan," which, according to the Brief, is one of the two real parties in
interest (Appeal Brief filed February 6, 2017 (hereinafter "Appeal Br.") at 3;
Application Data Sheet filed October 28, 2013). According to the Brief, the
other real party in interest is "Universal Display Corporation" (Appeal Br.
3). Furthermore, according to the Specification filed October 28, 2013
(hereinafter "Spec."), the University of Southern California was also a party
to a joint university corporation research agreement involving the claimed
invention (Spec. ,r 2).
2 Appeal Br. 7-31; Reply Brief filed September 25, 2017 (hereinafter "Reply
Br." at 2-13; Final Office Action entered April 6, 2016 (hereinafter "Final
Appeal 2017-011762
Application 14/064,687
We affirm-in-part.
I. BACKGROUND
The subject matter on appeal relates to a method for patterning
features on top of organic thin films (Spec. ,r 3). Representative claim 1 is
reproduced from the Claims Appendix to the Appeal Brief (Appeal Br. 32),
with key limitations emphasized, as follows:
1. A method of forming an electronic device using
directed stream printing, comprising the steps of:
(a) patterning at least one layer of material on a substrate
using photolithography, to form a first intermediate device
structure having a plurality of conductive electrodes;
(b) patterning rows of an organic material on the first
intermediate device structure such that the organic material
overlies and is in registration with the electrodes using directed
stream printing, thereby forming a second intermediate device
structure; and thereafter
( c) applying at least one further material to the second
intermediate device structure such that some of the at least one
further material is applied to the second intermediate device
between the rows of organic material, wherein each of the at least
one further materials is applied without using photolithography.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two final rejections under pre-AIA
35 U.S.C. § 103(a) as follows:
Act.") at 3-14; Examiner's Answer entered July 25, 2017 (hereinafter
"Ans.") at 2-20.
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Application 14/064,687
A. Claims 1-3 and 5-11 3 as unpatentable over Mori to et al. 4
(hereinafter "Morito") in view of Veres et al. 5 (hereinafter
"Veres"); and
B. Claims 1-3 and 5-15 6 as unpatentable over Sellars et al. 7
(hereinafter "Sellars") in view of Veres.
(Ans. 2-20; Final Act. 3-14.)
III. DISCUSSION
Rejection A. Unless argued separately pursuant to 37 C.F.R.
§ 4I.37(c)(l)(iv), a claim subject to this rejection stands or falls with claim
1, which we select as representative.
1. Claim 1
The Examiner finds that Morito describes every limitation recited in
claim 1 except it teaches flexographic printing rather than "directed stream
printing" as recited in the claim (Ans. 2-3; Final Act. 3--4). To resolve this
difference, the Examiner relies on Veres as teaching OLED (organic light-
emitting diode) layer deposition by various techniques including inkjet
printing, which is a directed stream printing technique (Appeal Br. 33 (claim
9)), and flexographic printing (Ans. 3; Final Act. 4). Based on these
findings, the Examiner concludes that a person having ordinary skill in the
3 The rejection of claim 14 appears to have been withdrawn (Ans. 9).
4 US 2011/0180826 Al, published July 28, 2011.
5 US 2006/0238117 Al, published October 26, 2006.
6 The statement of the rejection erroneously lists canceled claim 4 as
rejected.
7 US 2007/0040493 Al, published February 22, 2007.
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Application 14/064,687
art would have modified Morito by implementing inkjet printing deposition
as a deposition technique that is interchangeable with flexographic printing
as disclosed in Veres (id.).
The Appellant contends that the rejection is flawed because modifying
Morito in view of Veres in the proposed manner would change Mori to' s
principle of operation, which is flexographic printing (Appeal Br. 9).
According to the Appellant, the ink viscosity used in flexographic printing is
lower than that of general ink, and, therefore, a reasonable expectation of
success in implementing inkjet printing in Morito has not been established
(id. at 10). The Appellant argues further that no reason or motivation exists
to combine Veres with Morito (id. at 11 ).
We find these arguments ineffective to reveal any reversible error in
the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Although Morito discloses using a flexographic printing technique to
deposit the organic light emitting layer (Morito ,r,r 5, 90, 112), the Appellant
fails to direct us to any disclosure in Morito that other deposition techniques
cannot be used to form the OLED device shown in Morito's Figure 5 and
6A---6E (Appeal Br. 8-11). Indeed, the Appellant disclaims any argument
that Morito's OLED will not function or will have an altered principle of
operation if the organic layers are formed by a directed stream printing
technique (id. at 9). As the Examiner finds (Ans. 3), Veres teaches that a
variety of interchangeable techniques, such as ink-jet printing or stamping,
may be used to deposit OLED layers (Veres ,r 15). Thus, "[t]he prior art's
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives [where] such disclosure does not
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Appeal 2017-011762
Application 14/064,687
criticize, discredit, or otherwise discourage the solution claimed" by the
Inventors. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Accordingly, we are in complete agreement with the Examiner's
conclusion that a person having ordinary skill in the art would have been
prompted to combine Morito and Veres in the manner claimed by the
Inventors by implementing ink-jet printing in lieu of flexographic printing
based on a reasonable expectation that these techniques would be
interchangeable in the manufacture of OLED devices. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability. ").
Contrary to the Appellant's belief (Appeal Br. 11 ), obviousness does
not include a "benefit" requirement when the prior art would have suggested
that one known technique may be substituted for another. Fulton, 391 F .3d
at 1200 ("[O]ur case law does not require that a particular combination must
be the preferred, or the most desirable, combination described in the prior art
in order to provide motivation for the current invention."); In re Fout, 675
F.2d 297,301 (CCPA 1982) ("Because both Pagliaro and Waterman teach a
method for separating caffeine from oil, it would have been prima facie
obvious to substitute one method for the other."). See also In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (rejecting argument based on In re
Ratti, 270 F.2d 810, 813 (CCPA 1959), where the difference did not affect
the operability of the inventor's broadly claimed device).
In addition, the mere fact that Morito itself does not disclose
alternatives to flexographic printing is not dispositive (Appeal Br. 11 ),
because the rejection here is based also on Veres. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
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Application 14/064,687
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.").
The Appellant's argument regarding viscosity differences between
inks used for flexographic printing and other printing techniques lacks merit
for the reasons well-stated by the Examiner (Ans. 4), which we adopt as our
own.
For these reasons, we sustain the rejection as maintained against claim
1.
2. Claim 3
Claim 3 depends from claim 1 and recites: "wherein step (a)
comprises forming the plurality of conductive electrodes in rows using
photo lithography and further comprises forming columns of raised posts
using photolithography, each post being spaced from an adjacent post and
extending perpendicularly to the rows of electrodes" (Appeal Br. 32).
The Appellant argues that the solid portions of the insulating layer 54
as shown in Mori to' s Figure 5 extend parallel to the electrodes 53 in the "a"
direction-not perpendicular to them (Appeal Br. 13). We disagree for the
reason given by the Examiner (Ans. 6-7), which we adopt as our own.
Therefore, we sustain the rejection as maintained against claim 3.
3. Claim 11
Claim 11 depends from claim 10 and recites in relevant part: "further
comprising the step of forming a plurality of spaced apart raised posts over
each of the bottom electrodes before step (b) such that discontinuities are
formed in each of the separate portions of organic material deposited in step
(b )" (Appeal Br. 33).
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Application 14/064,687
The Appellant argues that Mori to' s insulating layer 54 does not satisfy
the "such that" clause recited in claim 11 ( id. at 15-16). Again, we agree
with the Examiner's analysis (Ans. 8-9), which we adopt as our own.
Therefore, we sustain the rejection as maintained against claim 11.
Rejection B. The Examiner finds, inter alia, that the organic active
materials 34 disclosed in Sellars correspond to the "patterning rows of an
organic material" as recited in claim 1, step (b) or the "separate portions of
an organic material [ deposited] over the electrodes by directed stream
printing the organic material over the same spaced apart portions of the
substrate" as recited in claim 10, step (b) (Final Act. 8, 10). The Appellant
disagrees (Appeal Br. 20-22, 26-28).
We agree with the Appellant on this issue. As shown in Figures 5, 7,
10, and 11 of Sellars, organic active material 34 does not appear to be
arranged in patterned rows and in registration with the electrodes as required
by claim 1 nor does it appear to be deposited over the electrodes separately
located at the same spaced apart portions of the substrate as required by
claim 10.
Accordingly, we do not uphold Rejection B.
IV. SUMMARY
Rejection A is sustained. Rejection Bis not sustained. Therefore, the
Examiner's final decision to reject claims 1-3 and 5-15 is affirmed as to
claims 1-3 and 5-11 but reversed as to claims 12-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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