Ex Parte Halsey et al

Board of Patent Appeals and Interferences

Apr 4, 2011

10744522 (B.P.A.I. Apr. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/744,522 12/23/2003 Eugene Halsey IV DON03 P-1131 9694
28101 7590 04/05/2011
VAN DYKE, GARDNER, LINN & BURKHART, LLP
SUITE 207
2851 CHARLEVOIX DRIVE, S.E.
GRAND RAPIDS, MI 49546
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
04/05/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EUGENE IV HALSEY and CATHERINE A. GETZ
____________

Appeal 2010-004876
Application 10/744,522
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 54-56, 62, 65-67, 73, 76-81, 85, 89-91, and
101-111.2 An oral hearing was held on March 23, 2011. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Final Office Action mailed Mar. 6, 2009 (“Final”).
2 Appeal Brief filed Jun. 30, 2009 (“App. Br.”).
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The invention relates to a method of manufacturing “an improved
conductively coated transparent substrate as used in an interactive touch
information display such as a transparent digitizer, near field imaging touch
screen, electromagnetic touch screen, or an electrostatic touch screen.”
(Spec. 1:8-11.)
Appellants request review of the following grounds of rejection (App.
Br. 10-11):
1. claims 54-56, 67, 78-81, 89 and 101-111 under 35 U.S.C. § 103(a) as
unpatentable over Applicant’s Disclosure (i.e., Appellants’ admitted prior
art, Spec. 1, “BACKGROUND OF THE INVENTION,” hereafter “AAPA”)
in view of Olson (US 6,261,700, iss. Jul. 17, 2001) (Ans.3 3-5) or Machol
(US 5,719,705, iss. Feb. 17, 1998) (Ans. 6-8);
2. claims 62, 73, 85, 90 and 91 under 35 U.S.C. § 103(a) as unpatentable
over AAPA in view of Olson (Ans. 5) or Machol (Ans. 8) as applied to
claims 54-56, 67, 78-81, 89, and 101-111, and further in view of Kuhlman
(US 4,786,767, iss. Nov. 22, 1988);
3. claims 65, 66, 76 and 77 under 35 U.S.C. § 103(a) as unpatentable
over AAPA in view of Olson (Ans. 5-6) or Machol (Ans. 8-9) as applied to
claims 54-56, 67, 78-81, 89, and 101-111, and further in view of Stoddard
(US 4,838,656, iss. Jun. 13, 1989);
4. claims 54 and 55 under 35 U.S.C. § 103(a) as unpatentable over
AAPA in view of Jitsukata (US 5,689,157, iss. Nov. 18, 1997) (Ans. 9-10);
5. claims 56, 62, 67, and 73 under 35 U.S.C. § 103(a) as unpatentable
over AAPA in view of Jitsukata as applied to claims 54 and 55, and further
in view of Kuhlman (Ans. 10-11);

3 Examiner’s Answer mailed Oct. 28, 2009.
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6. claims 65, 66, 76, and 77 under 35 U.S.C. § 103(a) as unpatentable
over AAPA in view of Jitsukata as applied to claims 54 and 55, and further
in view of Stoddard (Ans. 11-12);
7. claims 78-81, 89, and 101-111 under 35 U.S.C. § 103(a) as
unpatentable over AAPA in view of Jitsukata as applied to claims 54 and 55,
and further in view of Olson (Ans. 12-13); and
8. claims 85, 90, and 91 under 35 U.S.C. § 103(a) as unpatentable over
AAPA in view of Jitsukata in view of Kuhlman and Olson (Ans. 13-14).
Appellants’ traversal of the above-listed grounds of rejection is based
on limitations common to independent claims 54, 85, 89, and 111. (See
App. Br. 16-45; claim 54 (italicized language) infra p. 4.) Appellants do not
present separate arguments in support of the dependent claims and,
therefore, each of these claims will stand or fall with the respective
independent claim from which it depends. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants focus their arguments on independent claim 54, as well as on
Olson (App. Br. 16-37), urging that Machol (App. Br. 41) and Jitsukata
(App. Br. 43) are “cumulative to the disclosure of Olson and fall[] well short
of establishing a prima facie case of obviousness of the claimed invention
for at least the reasons discussed” in connection with the rejections based on
Olson.4 Therefore, we focus our discussion on independent claim 54, which

4 Appellants’ arguments in the Reply Brief directed to the rejections based
on Machol and Jitsukata (see Rep. Br. 15-31) do not appear to be directed to
issues raised by the Examiner for the first time in the Answer. (Compare
Ans. with Final 2-15.) Accordingly, these arguments are untimely and will
not be considered, good cause not having been shown why the arguments
could not have been presented in the Principal Brief on Appeal.
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is reproduced below from the Claims Appendix (App. Br. 52 (emphasis
added)):
54. A method for making an interactive information device
comprising:

1) forming a reduced contrast, increased light
transmitting, conductively coated panel by providing a
transparent substrate5 having first and second surfaces, applying
a patterned, transparent, conductive layer on at least one surface
of said first and second surfaces of said substrate such that there
is at least one area having a conductive layer6 thereon and an
adjacent second area without a conductive layer on said one
substrate surface, and applying a transparent layer of metal
oxide commonly overlying both said one and said second areas
of said one substrate surface including selecting said metal
oxide layer to have a refractive index at the sodium D line and
a thickness that, in combination, reduce optical contrast
between said one area and said second area such that visible
contrast between said one area and said second area is reduced
and optical inhomogeneity between said one area and said
second area is reduced leading to reduced visual delineation by
a viewer when viewing light reflected from said coated
panel, and light transmission through said coated panel is
increased by said layer of metal oxide that commonly overlies
both said one and said second areas; and

2) attaching said conductively coated panel to an electro-
optic display for displaying information when electricity is
applied thereto.

FINDINGS OF FACT

At the time of Appellants’ invention, it was known in the art to use a
conductively coated transparent substrate, e.g., a transparent conductive thin

5 E.g. glass or optical plastic (Spec. 4:21-22).
6 E.g. indium tin oxide or doped tin oxide (Spec. 5:9-10).
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film on a rigid glass substrate, to form an interactive touch information
display panel. (AAPA, ll. 8-12.) More specifically, these known display
panels generally include a region having a transparent conductor deposited
in a specific pattern as required by product design (“a coated region”)
immediately adjacent to a region devoid of transparent conductor (“an
uncoated region”). (Id., ll. 12-16.) A known disadvantage of the prior art
display panels is that “the contrast between the coated and adjacent uncoated
region is plainly visible in reflected light, often leading to consumer
dissatisfaction.” (Id., ll. 16-18.) At the time of Appellants’ invention, it was
also known that this optical inhomogeneity results from the difference in
optical properties of the coated region (typically having a refractive index
greater than 1.65) and the uncoated region (typically having a refractive
index in the range of 1.5 to 1.55). (Id., ll. 18-22.)
The Examiner finds that the AAPA discloses the invention as claimed
in claim 54 with the exception of the step of “applying a transparent layer of
metal oxide” (see Claim 54 (italicized language) supra p. 4). (See Ans. 3-4.)
Appellants do not dispute this finding. (See generally, App. Br. 16-37, e.g.
23-24, bridging para.; cf., App. Br. 13-14 (discussing AAPA).)
Olson teaches that antireflective properties of a multilayer optically
functional composite will be diminished, “if the indices of refraction of
adjacent layers . . . are different” due to “reflectance of light at the interface
of such adjacent layers.” (Col. 2, ll. 3-6.) Olson explains that in electronic
equipment, the antireflective properties of the plastic or glass display panels
are important because glare or reflection of light impairs the transparency of
the panels. (Col. 1, ll. 50-55). Olson teaches that “[t]o reduce the amount of
glare on plastic or glass, the surface can include a layer of a metal oxide
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(such as silicon dioxide or indium tin oxide (ITO)), or suitably alternating
layers of metal oxides, such as ITO/SiO2.” (Col. 1, ll. 55-59.) Olson
specifically discloses forming an antireflective coating using “alternating
layers of ITO and SiO2 or ITO and SiOx with a combined thickness of about
50 Angstroms to about and 3000 Angstroms.” (Col. 21, ll. 57-63.)
The Examiner, relying on the above-cited disclosure in Olson and the
AAPA (Ans. 3-4; 15), determines
[i]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to form a layer of
SiO2 on the conductive layer [of the AAPA display panel], as
taught by Olson, because a SiO2 layer would reduce the
amount of reflected light, thus improving the performance by
reducing the glare

(Ans. 4).

ISSUES
Appellants contend the Examiner reversibly erred in rejecting claim
54, raising the following issues for our consideration:
1. Is the Examiner’s obviousness determination based on an
erroneous interpretation of the claim limitations “contrast” and “optical
inhomogeneity” as synonymous with “reflectivity” (see App. Br. 19-20;
Rep. Br. 5-6)?
2. Is the Examiner’s obviousness determination based on improper
hindsight reasoning (see e.g., Rep. Br. 7-10)?
3. Did the Examiner fail to provide a reasonable basis to conclude
that the claimed method would inherently result from the proposed
combination of the AAPA and Olson (Rep. Br. 10-13)?
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4. Did the Examiner err in determining that a preponderance of the
evidence, taking into account Appellants’ evidence of commercial success,
weighs in favor of obviousness (Rep. Br. 14)?
We answer each of these questions in the negative for the reasons
explained in the Answer and below.
ANALYSIS
Issue 1: Is the Examiner’s obviousness determination based on an
erroneous interpretation of the claim limitations “contrast” and “optical
inhomogeneity” as synonymous with “reflectivity”?

The claim 54 method recites a step of applying a transparent layer of a
metal oxide selected to have a refractive index and thickness that, in
combination, reduce optical contrast and optical inhomogeneity. Appellants
contend the Examiner’s obviousness determination is based on an erroneous
interpretation of this step as reading on a step of applying a layer of SiO2 on
a conductive layer to reduce the amount of reflected light and thus improve
the performance of the layer by reducing the glare. (App. Br. 19-20; Rep.
Br. 6-7.) Appellants rely on the Lynam Declaration7 to establish that
reducing reflectivity/glare is not the same as reducing optical contrast and
optical inhomogeneity, and that a commonly-overcoating metal oxide layer
that differentially reduces reflectivity at respective bare and adjacent coated
areas can actually lead to an increase in optical inhomogeneity. (App. Br.
25-29; Rep. Br. 6; Lynam Dec., ¶¶ 10-14, e.g. ¶ 14 (“Plainly, the ‘522
application teaches and claims a method of reducing optical inhomogeneity
by selecting both the thickness and the refractive index of the commonly-

7 Declaration of Dr. Niall R. Lynam, executed January 5, 2009 (“Lynam
Dec.”).
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overcoating metal oxide so as to reduce contrast --- and this can be achieved
by either an increase or decrease in reflectance at the defined at least one
area having a conductive layer thereon and the adjacent second area without
a conductive layer on the substrate surface.”).)
In the Response to Argument, the Examiner does not dispute
Appellants’ contention that a reduction in reflectivity will not necessarily
result in a reduction in optical contrast and inhomogeneity. (Ans. 15.)
Rather, the Examiner clarifies that the obviousness determination is based on
a finding that Olson suggests applying an overcoating of the same metal
oxide on the same substrate and conductor used in Appellants’ claimed
method, the applied layer being a thickness which overlaps the thickness of
Appellants’ preferred SiO2 layer. (Ans. 15.)
Based on the Examiner’s Response, the merits of which we discuss
more fully below in connection with Issue 3, we cannot agree with
Appellants’ contention that the Examiner misinterpreted the claim
requirements of reducing optical contrast and optical inhomogeneity as
synonymous with reducing reflectivity.
Issue 2: Is the Examiner’s obviousness determination based
on improper hindsight reasoning?

According to Appellants,
if one of ordinary skill in the art were faced with the problem of
visible contrast on a pattern-coated substrate, one would not be
led towards use of the antireflective coating of Olson, since
Olson merely teaches application of an antireflective coating on
a generally uniform substrate (without pattern-coated
conductive coatings) to reduce glare. Moreover, clearly there
would not have been a reasonable expectation of success to one
of ordinary skill in the art that use of the antireflective coating
of Olson would reduce contrast between the bare and coated
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substrate regions disclosed in Applicants' Disclosure in the
Background section of the '522 patent application, particularly
since the substrate of Olson is not pattern-coated and thus
Olson does not even recognize a contrast issue.

(App. Br. 30-31.)
To render an invention obvious, the prior art does not have to address
the same problem addressed by a patent applicant. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007); see also, In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.”).
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal – and even
common-sensical – we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In
such situations, the proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable
of combining the prior art references.

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). “[A] reasonable expectation of success,
not absolute predictability” supports a conclusion of obviousness. In re
Longi, 759 F.2d 887, 897 (Fed. Cir. 1985).
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In our view, the facts and reasons relied on by the Examiner (see
Findings of Fact supra pp. 4-6) support a conclusion that one of ordinary
skill in the art would have been motivated to form a layer of silicon dioxide
on the covered and uncovered regions of the AAPA display panel in order to
improve the performance of the AAPA display panel in view of Olson’s
disclosure that SiO2, alone or when layered with ITO, will reduce glare on a
glass substrate. Moreover, one of ordinary skill in the art would have had a
reasonable expectation of success in reducing glare in forming a layer of
SiO2 on the covered and uncovered regions of the AAPA display panel since
Olson applies a layer of SiO2 over the same types of materials present in the
covered and uncovered regions of the AAPA display panel, i.e., an
electrically conductive material (e.g., ITO)8 and glass. (See Ans. 14).
Appellants have not argued that the ordinary artisan would not have
possessed the knowledge and skills necessary to combine the AAPA and
Olson in the manner proposed by the Examiner.
Accordingly, we find the Examiner established proper motivation to
combine the prior art, and are not persuaded that the Examiner relied on
improper hindsight reasoning.

8 (See Ans. 4-5 (Examiner’s undisputed determination that “it would have
been obvious to one having ordinary skill in the art at the time the invention
was made to make the conductive layers [of the AAPA display panel] from
any suitable conductive material, such as ITO or doped tin oxide, motivated
by a desire to reduce static charge and because it has been held to be within
the general skill of a worker in the art to select a known material on the basis
of its suitability and desired characteristics.”).)
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Issue 3: Did the Examiner fail to provide a reasonable basis to conclude
that the claimed method would inherently result from the proposed
combination of the AAPA and Olson?

Appellants argue
Olson is only concerned with establishing a hardcoat and
reducing reflection in order to reduce glare so as to obviate
wash-out of displayed information being viewed on likes of a
sunny day, [therefore,] any selection of the metal oxide layer
(both in thickness and refractive index) made by Olson would
be made to provide the desired protective feature and anti-glare
feature, and would not necessarily reduce visible optical
inhomogeneity for a given glass substrate with a given
patterned conductive material disposed thereon as claimed in
the present invention.

(Rep. Br. 11-12.)
Appellants’ argument fails to refute the Examiner’s finding that “the
prior art teaches substantially identical materials (and thus substantially
identical refractive indices) and even a substantially identical oxide
thickness” (Ans. 15). These findings support the Examiner’s determination
that the claimed reduction in visible contrast and optical inhomogeneity
would inherently result from the proposed combination of the AAPA and
Olson (id.).9
Where the Examiner establishes a reasonable assertion of inherency
and thereby evinces that a claimed process appears to be identical to a
process disclosed by the prior art and/or that the products claimed by the

9Compare Olson supra pp. 5-6 with Spec. 5:31-33 (noting that the metal
oxide layer increases visible light transmission through the display panel,
while the patterned conductor reduces glare from incident light (Spec. 5:31-
32)).

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applicant and disclosed in the prior art appear to be the same, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977).
Appellants’ arguments alone fail to demonstrate a patentable
difference between the claimed method and the method of the AAPA as
modified by Olson.
Issue 4: Did the Examiner err in determining that a preponderance of the
evidence, taking into account Appellants’ evidence of commercial success,
weighs in favor of obviousness?

Appellants rely on secondary considerations of non-obviousness,
namely that the claimed method has achieved commercial success. (App.
Br. 45-46.) Appellants contend that sales of the Apple iPhone establish
commercial success of the claimed invention since “Apple uses interactive
devices made in accordance with the method of the presently claimed
invention.” (App. Br. 46.) The sole evidence relied on in support of
Appellants’ contention is the Lynam Declaration. 10 (App. Br. 46.) Dr.
Lynam testified he has
personal knowledge that the ‘522 Application Claimed
Prescription has been successfully commercialized at a joint
venture involving Optera, a company that is related to the

10 See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that
argument by counsel cannot take the place of evidence); In re Mehta, 347
F.2d 859, 866 (CCPA 1965) (treating an unsworn exhibit as argument); cf.
In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (noting that mere conclusory
statements of superiority in the Specification and/or the Brief, unsupported
by factual evidence, are of little probative value).

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assignee (see www.optera.com). For example, each of the
Apple iPHONEs bought by millions of consumers to date uses
an interactive information device that utilizes a transparent
substrate having a surface coated with a patterned transparent
conductive layer, and with a metal oxide layer commonly
overcoating bare and transparent conductive-coated areas that
reduces contrast between those areas, with reduction in optical
inhomogeneity achieved between the adjacent bare and
transparent conductive-coated areas.

(Lynam Dec. ¶ 19.)
Commercial success or other secondary considerations may
presumptively be attributed to the claimed invention only where “the
marketed product embodies the claimed features, and is coextensive with
them.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir.
2006) (quoting Brown & Williamson Tobacco Corp. v. Phillip Morris, Inc.,
229 F.3d 1120, 1130 (Fed. Cir. 2000)). An applicant must produce hard
evidence of commercial success, in particular, evidence of commercial
success within the relevant market. Kansas Jack, Inc. v. Kuhn, 719 F.2d
1144, 1150-51 (Fed. Cir. 1983) (“The evidence of commercial success
consisted solely of the number of units sold. There was no evidence of
market share, of growth in market share, of replacing earlier units sold by
others or of dollar amounts, and no evidence of a nexus between sales and
the merits of the invention.”); see also In re Huang, 100 F.3d 135, 139-40
(Fed. Cir. 1996). Moreover, “asserted commercial success of the product
must be due to the merits of the claimed invention beyond what was readily
available in the prior art.” Asyst Tech., Inc. v. Emtrak, Inc., 544 F.3d 1310,
1316 (Fed. Cir. 2008) (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co.,
106 F.3d 1563, 1571 (Fed. Cir. 1997)).
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We have considered Appellants’ evidence, but are in agreement with
the Examiner that it is unpersuasive of commercial success attributable to
the claimed invention. When stating that the “‘522 Application Claimed
Prescription has been successfully commercialized,” Dr. Lynam fails to
specify that he is referring to commercialization of the methods recited in
each of the appealed independent claims. Moreover, while Dr. Lynam
testifies that the Apple iPhone “uses an interactive information device that
utilizes . . . a metal oxide layer . . . that reduces contrast,” he fails to
explicitly state that the device is made using the methods of the appealed
independent claims. In other words, the evidence fails to establish that the
display panel used in the marketed iPhone was made by a method that
embodies the claimed features and is coextensive with them. Dr. Lynam
testified that Apple iPhone s have been purchased by millions of consumers.
However, the record is devoid of any evidence of actual sales, market share,
growth in market share, etc. of interactive information devices made in
accordance with the claimed methods. Further, Appellants’ evidence fails to
establish that commercial success of the Apple iPhone is due to the merits of
the claimed invention beyond what was readily available in the prior art,
e.g., interactive information devices made by other conventional methods.
CONCLUSION
Appellants have not persuaded us of reversible error in the Examiner’s
obviousness determination. Therefore, we sustain each of the above-listed
grounds of rejection. The Examiner’s decision to reject claims 54-56, 62,
65-67, 73, 76-81, 85, 89-91, and 101-111 is affirmed.

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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).
AFFIRMED

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