11913872 (P.T.A.B. Aug. 21, 2014)

Ex Parte Gohda et al

Patent Trial and Appeal BoardAug 21, 2014

11913872 (P.T.A.B. Aug. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte TADASHI GOHDA and KIMITAKA OHHATA __________ Appeal 2012-004992 Application 11/913,872 Technology Center 2800 ___________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE Tadashi Gohda, et al. (“Appellants”) appeal under 35 U.S.C. § 134 from a final rejection of claims 5, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over Seki.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal is directed to a method for manufacturing an organic electroluminescent element. Claim 5 is representative of the subject matter on appeal and is reproduced below from the Claims Appendix of the Appeal Brief dated August 31, 2011 (“App. Br.”). The limitations at issue are italicized. 1 US 6,852,994 B2, issued February 8, 2005. Appeal 2012-004992 Application 11/913,872 2 5. A method for manufacturing an organic electroluminescent element including a first electrode, a buffer layer provided on the first electrode, a light emitting layer provided on the buffer layer and containing an electroluminescent light emitting material, and a second electrode provided on the light emitting layer, the method comprising the steps of: calculating a maximum volume where the ink is retained by surface tension thereof on a top surface of the buffer layer based on a surface of the buffer layer and a contact angle of the ink with the buffer layer, the ink being retained by surface tension on the top surface of the buffer layer; discharging onto the buffer layer an ink containing the electroluminescent light emitting material, a volume of the ink being larger than the maximum volume obtained in the calculating step; and obtaining the light emitting layer by drying the ink discharged on the buffer layer. B. DISCUSSION The Examiner finds that Seki discloses a method for manufacturing an organic electroluminescent (EL) element. See Ans. 4-6.2 The Examiner finds Seki “is silent with respect to the step of ‘calculating a maximum volume where the ink is retained by surface tension thereof on a top surface of the buffer layer based on a surface of the buffer layer and a contact angle of the ink with the buffer layer, the ink being retained by surface tension on the top surface of the buffer layer’” as recited in claim 5.3 Ans. 7. However, the Examiner finds: 2 Examiner’s Answer dated December 13, 2011. 3 Claim 5 recites, in relevant part, the step of “calculating a maximum volume where the ink is retained by surface tension thereof on a top surface of the buffer layer.” App. Br. 17 (emphasis added). The phrase “the ink” lacks antecedent basis. The “discharging” step recited in claim 5, however, refers to “an ink containing the electroluminescent light emitting material.” App. Br. 17. We understand “the ink” recited in the “calculating” step of claim 5 to be “an ink containing the electroluminescent light emitting material” recited in the Appeal Applica [S e a b b . fr b Ans. 7 ( In applyin injection L and/or c 26-28. emitting “dischar Appella basis fo 2012-0049 tion 11/91 eki] speci lectrolumi mount of a e greater t uffer layer . . an exce om a curre e obtained emphasis particula g ink comp /transport S the met ight emitti onducting Seki Figur layer 18 ging” step nts should r “the ink” 92 3,872 fically dis nescent (E n ink comp han a disc (a hole in llent organ nt leakage . added). r, Seki Fig osition 17 ation laye eki Fig. 5 hod of ma to on ng layer 1 heat treatm e 6, reprod on hole inj . In the ev consider a in the “ca closes in ( L) device osition fo harge amo jection/tra ic electrol and havin ure 5, repr , containin r 16. Seki is a sectio nufacturin e embodim 8 is subseq ent, or ca uced belo ection/tran ent of fur mending lculating” 3 col. 8, line is formed r forming unt of an i nsportation uminescen g high lig oduced be g light em , col. 4, ll. nal view d g the orga ent of the uently for using a ni w, illustra sportation ther prose claim 5 to step. s 35-45) th by setting the light e nk compo layer) an t (EL) dev ht emissio low, illust itting mat 24-26. epicting a nic EL dev invention med by re trogen gas tes the step layer 16. cution, the correct the at the org a discharg mitting lay sition for t d the resu ice that is n efficien rates the s erials, ont step in ice accord . moving th to flow. of formin Examiner lack of a anic e er to he lt is that free cy can tep of o hole ing e solvent, Seki, col. 4 g light and the ntecedent , ll. Appeal Applica T covered having a teaching claim 5 T a volum “calcula volume been he amount routine T [I th v w la 1 App. Br 2012-0049 tion 11/91 S the met he Examin by the lig high ligh in Seki, t would hav he Examin e of ink th ting” step of ink reci ld that it is of ink of a experimen he Appell ]t may hav e time of olume of e ould prov yer 18 can 6. . 12 (emph 92 3,872 eki Fig. 6 hod of ma to on er finds S ht emitting t emission he Examin e been ob er also fin at is large . Howeve ted in the not inven result-eff tation.” A ants do no e been ob [the Appel ach of the ide an opti complete asis added is a sectio nufacturin e embodim eki teache layer to o efficiency er conclud vious to on ds Seki is r than the m r, the Exam “dischargi tive to dis ective vari ns. 9. t dispute th vious to o lants’] inv first and s mal arrang ly cover th ). Howev 4 nal view d g the orga ent of the s that the b btain an o and reduc es that the e of ordin silent with aximum iner finds ng” step o cover the o able withi at: ne having ention to c econd ink ement in e hole inje er, the Ap epicting a nic EL dev invention uffer laye rganic ele ed curren “calculat ary skill in respect to volume ob there is n f claim 5 i ptimum o n given pr ordinary s alculate e compositi which the ction/tran pellants ar step in ice accord . r must be ctrolumine t leakage. ing” step r the art. A the step o tained in o evidence s critical a r workable ior art con kill in the xactly wha ons 14 and light emitt sportation gue that: ing completely scent elem Based on ecited in ns. 8. f discharg the that the nd “it has dischargi ditions by art at t 17 ing layer ent this ing ng Appeal 2012-004992 Application 11/913,872 5 [T]he Examiner has completely failed to provide any support or any plausible logical reasoning for the Examiner’s allegation that, because Seki et al. teaches including more of one of the first and second ink compositions 14 and 17 in the channel of Seki et al., one having ordinary skill in the art would have found it necessary or desirable to calculate a maximum volume of ink that could be included in the channel of Seki et al. Nowhere in Seki et al., or in any other prior art cited by the Examiner, is there any teaching of any reason for calculating a maximum volume of ink that can be injected into a channel while still being retained by surface tension. App. Br. 11-12 (emphasis added). As for the “discharging” step recited in claim 5, the Appellants argue there is no teaching or suggestion in Seki or any other prior art “of supplying an amount of ink that will exceed a maximum calculated volume of ink that will fit within a channel such that some of the ink will spill out from the channel.” App. Br. 14 (underlining omitted). In response to the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art “to optimize the discharging amount of ink for forming the light emitting layer of [Seki] by routine experimentation” (Ans. 9-10), the Appellants correctly point out that: “[A] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 195 USPQ 6 (CCPA 1977) . . . . App. Br. 15. The Appellants argue that the Examiner has failed to prove that the amount of ink dispensed into the channel in Seki’s method is a result-effective variable. See App. Br. 15. The Appellants contend that: One having ordinary skill in the art at the time of [the Appellants’] invention would have understood that the light emitting layer of Seki Appeal 2012-004992 Application 11/913,872 6 et al. is either arranged to cover the buffer layer or Seki et al. or not. Seki et al. does not teach or suggest any amount of variation in the amount of covering of the buffer layer that could have been “optimized” by one having ordinary skill in the art as alleged by the Examiner. Reply Br. 6.4 The Appellants’ arguments are supported by the record. We find the Examiner has improperly engaged in a hindsight reconstruction of the claimed method. That is, absent the Appellants’ disclosure, there is no reason on this record why one of ordinary skill in the art would have modified the method of Seki to include the “calculating” and “discharging” steps recited in claim 5. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.”). For this reason, the § 103(a) rejection is not sustained. C. DECISION The decision of the Examiner is reversed. REVERSED lp 4 Reply Brief dated January 25, 2012.