Ex Parte Hubbard et al

Patent Trial and Appeal Board

Apr 1, 2016

13152523 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/152,523 06/03/2011 Graham J. Hubbard
34238 7590 04/05/2016
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
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.
2156-801A 7057
EXAMINER
DUCLAIR, STEPHANIE P.
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
04/05/2016 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):
patents@carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRAHAM J. HUBBARD, KEITH P. PARSONS, and
TIMOTHY N. WRIGHT
Appeal2014-002343
Application 13/152,523 1
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHERM. KAISER, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the decision2 of the
Primary Examiner rejecting claims 1-15. Final Act. 2-9. We have
jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was held on March 29,
2016. We affirm in part.
OPINION
Appellants' invention "relates generally to methods of forming anti-
reflective transparent conductive films." Spec. 1, 11. 5---6.
1 Appellants identify the real party-in-interest as MacDermid Autotype Ltd.
Appeal Br. 2.
2 Final Office Action, mailed June 10, 2013 ("Final Act.").
Appeal2014-002343
Application 13/152,523
Claim 1, reproduced below, is representative of the appealed subject
matter:
1. A method of applying a transparent conductive film to
a polymeric substrate having a texture therein, the method
comprising the steps of:
a) providing a polymeric material having a texture
disposed therein; and
b) conformally applying a transparent conductive material
to the polymeric material to produce a conformal transparent
conductive film thereon;
wherein the conformal transparent conductive film has a
texture corresponding to the texture of the polymeric material
and wherein the texture has a period that is not larger than the
wavelength of visible light, whereby the conformal transparent
conductive film is antireflective.
Appeal Br. 9.
The Examiner rejected claims 1 and 4--13 under 35 U.S.C. § 103(a) as
obvious over the combination of Suzuki3 and Noguchi; 4 claims 2 and 3
under 35 U.S.C. § 103(a) as obvious over the combination of Suzuki,
Noguchi, and Yanagishita; 5 claim 3 under 35 U.S.C. § 103(a) as obvious
over the combination of Suzuki, Noguchi, and Masuda; 6 and claims 14 and
15 under 35 U.S.C. § 103(a) as obvious over the combination of Suzuki,
Noguchi, and Murota. 7 Final Act. 2-9.
3 Suzuki et al., U.S. Patent No. 7,014,912 B2, issued Mar. 21, 2006.
4 Noguchi et al., US 2007/0216997 Al, published Sept. 20, 2007.
5 Takashi Yanagishita, Kazuyuki Nishio, & Hideki Masuda, Antireflection
Polymer Hole Array Structures by Imprinting Using Metal Molds from
Anodic Porous Alumina, 1 APPLIED PHYSICS EXPRESS 067004, 067004-1-
067004-3 (2008).
6 Masuda et al., US 2007/0289874 Al, published Dec. 20, 2007.
7 Murota et al., US 2010/0025638 Al, published Feb. 4, 2010.
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Application 13/152,523
Appellants present three arguments that apply to all claims on appeal.
First, Appellants argue that Noguchi's base material is not textured, so it
would not have been obvious to a person of ordinary skill in the art to
texture a base layer. Appeal Br. 5 (citing Noguchi, Figs. IA, IB). This
argument does not persuade us that the Examiner committed harmful error in
rejecting Appellants' claims. Although Noguchi's layer 2 has flat surfaces,
Noguchi discloses constructing texture on those flat surfaces, which creates
a textured surface.
Second, Appellants argue that Suzuki teaches making a layer above
the transparent conductive layer textured, as opposed to texturing a layer on
which the transparent conductive layer is constructed, as claimed. Appeal
Br. 5 (citing Suzuki, Figs. 2, 6). Accordingly, argue Appellants, it would not
have been obvious to a person of ordinary skill in the art to texture a base
layer. Id. As discussed above, though, the Examiner relied on Noguchi
rather than Suzuki to teach texturing a base layer, so the fact that Suzuki
does not teach texturing a base layer is immaterial. We are not persuaded by
this argument that the Examiner committed harmful error.
Third, Appellants argue that neither Suzuki nor Noguchi teaches or
suggests creating a textured transparent conductive layer in the way claimed,
by sputtering the transparent conductive material on top of a textured lower
surface, making it hindsight to find that the combination teaches this
method. Appeal Br. 5. We do not find it persuasive of harmful error on the
Examiner's part that neither reference individually teaches or suggests the
entire claimed method. The Examiner relied on the finding that a person of
ordinary skill in the art would have found the claimed method obvious in
light of the combined teachings of Suzuki and Noguchi. Final Act. 2-3.
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Application 13/152,523
One cannot show nonobviousness by attacking references individually when
the rejection is based on a combination of references. In re Keller, 642 F.2d
413, 425 (CCPA 1981). Each reference cited by the Examiner must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). As to the combination of Suzuki and Noguchi being hindsight,
Appellants do not offer more than a bare statement, without further
argument or evidence, that this is the case. This statement is unpersuasive
for two reasons: it is attorney argument and it is conclusory. SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
("[M]ere statements of disagreement ... as to the existence of factual
disputes do not amount to a developed argument."); In re Pearson, 494 F .2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence.").
At the oral hearing, Appellants argued that Suzuki and Noguchi do not
teach making the top surface of a transparent conductive layer textured or
antireflective. This argument is an expansion of the statement in the Appeal
Brief that "[ o ]ne cannot just make an ITO or transparent conductive surface
textured" because "[a Jn ITO or transparent conductive surface is made by
sputtering or other similar methods, where texture cannot be directly
achieved." Appeal Br. 5. This argument is not persuasive of harmful error
on the part of the Examiner. First, this is mere attorney argument without
any citation to supporting evidence.
Second, Appellants' claims do not require the top surface of the
transparent conductive layer to have any texture or to be antireflective.
Instead, the claims require the "transparent conductive film [to have] a
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Application 13/152,523
texture corresponding to the texture of the polymeric material" and the
"transparent conductive film [to be] antireflective." Id. at 9. This texturing
is to be achieved by "conformally applying a transparent conductive material
to the [textured] polymeric material to produce a conformal transparent
conductive film" that "has a texture corresponding to the texture of the
polymeric material." Id. Although not explicitly identified as such in
Appellants' briefing, this presents an issue of claim construction: what are
the proper meanings of "conformally applying," "texture," and
"antireflective" with respect to a transparent conductive film?
Appellants argue that these terms should be limited to referring to the
upper surface of the film rather than to either the upper surface or the lower
surface. We are not persuaded that this claim construction is appropriate in
this proceeding. The PTO gives a disputed claim term its broadest
reasonable interpretation during patent prosecution. In re Hyatt, 211 F .3d
1367, 1372 (Fed. Cir. 2000). The "broadest reasonable interpretation" rule
recognizes that "before a patent is granted the claims are readily amended as
part of the examination process." Burlington Indus. v. Quigg, 822 F.2d
1581, 1583 (Fed. Cir. 1987). Thus, a patent applicant has the opportunity
and responsibility to remove any ambiguity in claim term meaning by
amending the application. In re Prater, 415 F.2d 1393, 1404-05 (CCPA
1969). Additionally, the broadest reasonable interpretation rule "serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified." In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984)) (internal quotation marks omitted). Appellants
have not identified any clear definition of these terms in the Specification,
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nor have they directed us to any evidence or provided any developed
argument that suggests that the Examiner's interpretation of these terms is so
broad as to be unreasonable.
In addition to the arguments discussed above that apply to all the
claims on appeal, Appellants also make two arguments with respect to
particular sets of claims. First, with respect to claims 6 and 7, Appellants
argue that "a person of ordinary skill in the art would not think that [physical
vapor deposition or sputtering] could produce a textured surface." Appeal
Br. 6. This argument is unpersuasive because it is merely attorney argument
without further development or any citation to supporting evidence.
SmithKline Beecham Corp., 439 F.3d at 1320; Pearson, 494 F.2d at 1405.
As discussed above, Appellants have not shown any harmful error in the
Examiner's finding that the combination of Suzuki and Noguchi would have
taught or suggested to the person of ordinary skill in the art the claimed
production of a textured transparent conductive layer by depositing the
transparent conductive material on a lower textured layer.
Second, with respect to claims 12 and 13, Appellants argue that the
Examiner erred by relying on Suzuki's disclosure of "surface resistivity of
not more than 1012 Q/o" to teach or suggest the claimed 100-600 Q/sq or
300-500 Q/sq. Appeal Br. 6-7. We are persuaded by this argument. As
Appellants note, "if [a] reference's disclosed range is so broad as to
encompass a very large number of possible distinct compositions, this might
present a situation analogous to the obviousness of a species when the prior
art broadly discloses a genus." Id. at 7 (quoting Manual of Patent
Examining Procedure (MPEP), 9th ed.,§ 2144.05 (July 2015)). The
Examiner did not explain adequately why the extremely broad range of zero
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to one trillion rl/sq taught by Suzuki would have rendered obvious the much
narrower ranges claimed by Appellants. This is particularly true given that
the particular examples disclosed by Suzuki have surface resistivity values
that in no case are less than 2 x 107 rl/sq. Suzuki, col. 11, 11. 26-46. There
is still a significant difference between Suzuki's lowest disclosed value of 20
million rl/sq and Appellants' claimed ranges of 100-600 rl/sq and 300-500
n/sq.
Because Appellants persuade us that the Examiner committed harmful
error in rejecting claims 6 and 7 as obvious over the combination of Suzuki
and Noguchi, we reverse that rejection. Because none of Appellants' other
arguments persuade us that the Examiner committed harmful error, we
affirm all the other rejections.
ORDER
The Examiner's rejection of claims 6 and 7 under 35 U.S.C. § 103(a)
as obvious over the combination of Suzuki and Noguchi is reversed. The
Examiner's rejections of claims 1, 4, 5, and 8-13 under 35 U.S.C. § 103(a)
as obvious over the combination of Suzuki and Noguchi; of claims 2 and 3
under 35 U.S.C. § 103(a) as obvious over the combination of Suzuki,
Noguchi, and Yanagishita; of claim 3 under 35 U.S.C. § 103(a) as obvious
over the combination of Suzuki, Noguchi, and Masuda; and of claims 14 and
15 under 35 U.S.C. § 103(a) as obvious over the combination of Suzuki,
Noguchi, and Murota are affirmed.
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Application 13/152,523
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED-IN-PART
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