Ex Parte Frey et al

Patent Trial and Appeal Board

May 30, 2018

14437511 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/437,511 04/22/2015
32692 7590 06/01/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Matthew H. Frey
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.
70788US005 5898
EXAMINER
TSO, STANLEY
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW H. FREY, BROCK A. HABLE,
and THOMAS HERDTLE
Appeal2017-008261
Application 14/437,511
Technology Center 2800
Before CATHERINE Q. TIMM, MONTE T. SQUIRE and
JENNIFER R. GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's final decision to reject claims 1-11, 13, and 14 under 35 U.S.C.
1 In explaining our Decision, we cite to the Specification of April 22, 2015
(Spec.), the Final Office Action of August 5, 2016 (Final), the Appeal Brief
of January 4, 2017 (Appeal Br.), the Examiner's Answer of March 17, 2017
(Ans.), and the Reply Brief of May 15, 2017 (Reply Br.).
2 Appellant is the Applicant, 3M Innovative Properties Company
(Application Data Sheet of April 22, 2015). According to the Brief, 3M
Company and 3M Innovative Properties Company are the real parties in
interest. Appeal Br. 2.
Appeal2017-008261
Application 14/437,511
§ I02(a) as anticipated by Lee, 3 or alternatively, under 35 U.S.C. § I03(a) as
obvious over Lee in view of Petersen, 4 and to reject claim 12 under
35 U.S.C. § I03(a) as obvious over those references further in view of
Mohindra. 5 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellant's invention is directed to electrically conductive and
transparent articles used as electrodes in liquid crystal displays, photovoltaic
cells, touch display sensors, etc. Spec. ,r 1. The articles include an
electrically conductive pattern of pairs of separated traces on a substrate.
Spec. ,r,r 14--16. Pairs of traces remain separated but overlap over a distance
as shown in, for instance, Figure 1, reproduced below:
10~
...................................... ___________________ ,
~"""""-···=···············
Figure 1 depicts a pair of separated first (11) and second (12) traces having a
length of overlap
3 Lee et al., US 2012/0187821 Al, published July 26, 2012.
4 Petersen et al., US 2013/0050228 Al, published Feb. 28, 2013.
5 Mohindra et al., US 2013/0207924 Al, published Aug. 15, 2013.
2
Appeal2017-008261
Application 14/437,511
Claim 1 is the only independent claim and reads, with the limitation at
issue on appeal highlighted, as follows:
1. An article comprising:
a substrate having a first major surface;
an electrical conductor pattern on the first major surface
of the substrate, the electrical conductor pattern comprising:
a plurality of separated pairs of separated first [ 11]
and second [12] electrically conductive metallic traces,
the first [11] and second [12] electrically conductive
metallic traces of each pair of the plurality of pairs
having a length of overlap relative to each other of at
least 5 times their separation distance, and wherein there
are at least 50 of the electrically conductive metallic
traces/ cm2.
Appeal Br. 23 (claims appendix) (emphasis added).
OPINION
Appellants have identified a reversible error in the Examiner's finding
of the length of overlap required by claim 1 in pairs of traces taught by Lee.
The Examiner finds that Lee's Figure 1 depicts areas where pairs of
traces have a length of overlap relative to each other of at least 5 times their
separation distance as required by claim 1. Final 3.
3
Appeal2017-008261
Application 14/437,511
We reproduce Figure 1 of Lee below:
ls
~ . t~~":. ~~*'"'~:-·.:t;:,~l·~ .~v.:. :~>\;~~'~"~·~~'
t
~
Figure 1 of Lee is an illustration of an electric conductive pattern with
a straight line drawn thereon for use in a calculation of distance distribution
ratio.
As can be seen from Lee's Figure 1, the traces (shown as irregular
lines moving from left to right) of the electric conductive pattern are neither
configured in pairs nor are they regularly distanced from each other over any
appreciable length.
We agree with Appellant that Lee's irregularly spaced traces do not
overlap for the lengths required by claim 1. Appeal Br. 5-7. This is because
overlap is defined in the Specification in a way that excludes the
irregularities of Lee. Appellant's Specification defines "overlap" as follows:
The term overlap refers to portions of two adjacent separated
electrically conductive metallic traces that make up a pair, as
described herein, or that are each a member of separated but
adjacent pairs, the electrically conductive traces being separated
(physically and electrically) from each other in the plane of the
substrate, the portions being approximately parallel with each
4
Appeal2017-008261
Application 14/437,511
other or maintaining an approximately constant separation
from each other over the overlap distance (length).
Spec. ,r 16 ( emphasis added).
In response to Appellant's argument that Lee does not teach the
required length of overlap, the Examiner determines that Lee's traces are
"approximately parallel." Ans. 4--6. But we agree with Appellant that the
Examiner is reading "approximately" too broadly. Reply Br. 3-7. Although
claim terms must be given their broadest reasonable interpretation, the
interpretation cannot be divorced from the Specification. In re Suitco
Swface, 603 F.3d 1255, 1259 (Fed. Cir. 2010); see also In re Fout, 675 F.2d
297,300 (CCPA 1982) ("Claims must always be read in light of the
specification.").
Appellant's Specification conveys a meaning for "approximately"
consistent with the ordinary meaning of "nearly correct or exact: close in
value but not precise." Reply Br. 3 (quoting "Approximate." Merriam-
Webster.com. Merriam-Webster, n.d. Web. 12 May 2017). Appellant's
Figures 1--4 each show an embodiment of trace pairs having the required
overlap. Spec. ,r,r 16-20. Each pair has portions overlapping one another in
either a parallel relationship (Figs. 1-3) or in a relationship that maintains a
constant separation (Fig. 4). Id. It is apparent from the Specification that
"approximately" was added to take into account accidental variations from
exactly parallel and exactly constant separation. "Approximately" does not
encompass the intended variances in separation shown in Lee.
The Examiner also determines Appellant's argument is not persuasive
because Lee discloses that the conductive traces "may be formed of straight
lines, or various modifications such as curved lines, wave lines and zigzag
5
Appeal2017-008261
Application 14/437,511
lines." Ans. 6 (quoting Lee ,r 60) (emphasis added). The Examiner infers
that the traces of Lee's Figure 1 "may be formed of straight lines that do not
cross each other" and, thus, "Lee discloses conductive traces that are
approximately parallel and maintain an approximately constant separation
distance from each other." Ans. 6. But paragraph 60 of Lee is not directed
specifically to the Figure 1 embodiment, it is a general disclosure of line
types preceding a more specific disclosure of various embodiments using the
line types. Paragraph 61 discloses a specific embodiment with zigzag lines
that are not in pairs maintained with a constant separation. See Lee Fig. 1.
Other embodiments have straight lines, such as the embodiment of Figure 2,
but these embodiments contain lines that cross each other. These lines are in
physical contact and, thus, they are not separated pairs as required by
claim 1. See Spec. ,r 16 (Defining "separated" as referring to traces that are
"not in physical or in electrical contact with each other, except when, for
example, electrically connected through the electrically conductive layer.").
That Lee does not envision using non-crossing straight line pairs is further
evidenced by Lee's disclosure that the pattern of traces is to be irregular to
prevent the occurrence of the Moire phenomenon. Lee ,r 43.
The Examiner has not established that Lee describes an embodiment
with separated pairs of traces having lengths overlapping for the distance
required by claim 1.
The Examiner further finds that "in the event that it is determined that
Lee does not explicitly disclose such limitation, then alternatively, Petersen
discloses that the pitch, or the separation distance between adjacent
conductive traces, can vary from less than 10 microns to 500 microns
([O 155]), therefore, the length of overlap relative to each other can be at least
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Application 14/437,511
5 times the separation distance." Final 3--4. That the pitch between the
traces can vary does not overcome the fact that Lee desires an irregular
pattern of traces and the ordinary artisan would not have maintained an
approximately parallel or constant separation between a portion of pairs of
traces that has a length of at least time 5 the separation distance as required
by claim 1 when following the teachings of Lee.
The Examiner's reliance on Mohindra to reject claim 12 does not cure
the deficiency discussed above.
CONCLUSION
In summary:
1-11, 13, 14 § 102(a) Lee
1-11, 13, 14 § 103(a) Lee, Petersen
12 § 103(a) Lee, Petersen,
Mohindra
Summar
DECISION
The Examiner's decision is reversed.
REVERSED
7
1-11, 13, 14
1-11, 13, 14
12
1-14