Ex Parte Iyer et al

Patent Trial and Appeal Board

Aug 24, 2018

13881571 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/881,571 04/25/2013
32692 7590 08/28/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Suresh S. Iyer
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.
66904US004 9436
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/28/2018 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
Exparte SURESH S. IYER, YU YANG, MARKI. PELLERITE, and
PRADNY AV. NAGARKA
Appeal2017-010976
Application 13/881,571
Technology Center 1700
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
AVEL YN M. ROSS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 5-8. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real parties in interest as "3M Company ...
and its affiliate 3M Innovative Properties Company" (Appeal Brief filed
February 24, 2017 (hereinafter "Br.") 3).
2 Br. 3-5; Final Office Action entered November 3, 2016 (hereinafter "Final
Act.") 3-7; Examiner's Answer entered May 11, 2017 (hereinafter "Ans.")
3-9.
Appeal2017-010976
Application 13/881,571
I. BACKGROUND
The subject matter on appeal relates to an article comprising a
conductive member (silver) disposed on a portion of a surface of a
chemically-strengthened glass and a layer comprising a cured product of
components comprising a curable polysilazane on at least a portion of the
conductive member and at least a portion of the chemically-strengthened
glass adjacent to the conductive member (Specification filed April 25, 2013
(hereinafter "Spec.") 2, 11. 2-7). According to the Appellants,
"[ a ]dvantageously, and unexpectedly polysilazane-based barrier coatings
according to the present disclosure are effective at mitigating the effects of
humidity, and may surpass commercially available current alternatives" (id.
at 2, 11. 8-10).
Representative claim 5 is reproduced from the Claims Appendix to the
Appeal Brief (Br.), with key limitations emphasized, as follows:
5. An electronic article comprising:
a conductive member disposed on a portion of a surface of
chemically-strengthened glass, wherein the conductive member
comprises silver;
a layer comprising a cured reaction product of
components comprising a curable polysilazane on at least a
portion of the conductive member and at least a portion of the
surface of the chemically-strengthened glass adjacent to the
conductive member[,]
wherein the electronic article is a capacitive touch
sensor.
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Application 13/881,571
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections under pre-AIA 35
U.S.C. § I03(a) as follows:
A. Claims 5, 7, and 8 as unpatentable over Hayashi, 3 Suginoya et
al. 4 (hereinafter "Suginoya"), Shindo, 5 and Schulz et al. 6
(hereinafter Schulz"); and
B. Claim 6 as unpatentable over Hayashi, Suginoya, Shindo,
Schulz, and Kanitz et al. 7 (hereinafter "Kanitz").
(Ans. 3-9; Final Act. 3-7.)
III. DISCUSSION
The Appellants focus their arguments primarily on claim 5, providing
only skeletal remarks about other claims (Br. 4--5). Therefore, we confine
our discussion to claim 5, which we select as representative pursuant to 37
C.F.R. § 4I.37(c)(l)(iv). Consistent with this rule, claims 6-8 stand or fall
with claim 5. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011).
The Examiner finds that Hayashi describes a touch sensor electronic
device including most of the limitations recited in claim 5 but acknowledges
three differences between Hayashi's device and the claimed subject matter
(Ans. 3-5). First, the Examiner finds that although Hayashi discloses a glass
substrate (Hayashi Fig. 3, sealing substrate 31) on which a silver conductive
3 US 2009/0051274 Al, published February 26, 2009.
4 US 6,050,870, issued April 18, 2000.
5 US 2002/0034885 Al, published March 21, 2002.
6 US 6,819,316 B2, issued November 16, 2004.
7 US 6,734,622 Bl, issued May 11, 2004.
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Application 13/881,571
member (cathode) 11 is disposed, it does not describe the glass substrate 31
as being a chemically-strengthened glass (Ans. 3). To resolve this
difference, the Examiner relies on Suginoya's teaching that chemically-
strengthened glass provides improved impact strength and concludes that a
person having ordinary skill in the art would have combined Hayashi and
Suginoya for that reason (id.). Second, the Examiner finds that although
Hayashi teaches a silicon-based gas barrier layer 19 (Hayashi Fig. 3), it does
not teach "a layer comprising a cured reaction product of components
comprising a curable polysilazane," as specified in claim 5 (Ans. 4). To
resolve this difference, the Examiner relies on Shindo's teaching that silicon-
based coatings formed from polysilazanes provide improved resistance to
cracking, oxidation, and gas permeation and concludes that a person having
ordinary skill in the art would have used Shindo' s polysilazane-based
coatings as the barrier layer in Hayashi's device (id.). Third, the Examiner
finds that although Hayashi discloses touch sensor display devices, it does
not disclose a capacitive touch sensor as required by claim 5 (id. at 5). To
bridge this gap, the Examiner relies on Schulz's teachings to conclude that
it would have been obvious to one having ordinary skill in the art
to have used the capacitive touch sensor of Schulz as the touch
sensor generally called for in modified Hayashi because such a
touch sensor is made by an efficient low cost manufacturing
method and has protective functionality
(id. at 5).
The Appellants do not dispute: (i) the Examiner's finding that Hayashi
teaches a silver conductive material (i.e., cathode 11) "disposed on portion
of' a glass substrate 31, as required by claim 5; and (ii) the Examiner's
determination that Suginoya's teachings would have prompted a person
having ordinary skill in the art to use a chemically-strengthened glass as
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Application 13/881,571
Hayashi's glass substrate 31 (Br. 4--5). Nor do the Appellants argue that
Hayashi's gas barrier layer 19 is not "on at least a portion of the conductive
member and at least a portion of the surface of' glass substrate 31, as
required by claim 5 (id.). Rather, the Appellants contend that Hayashi,
Suginoya, and Shindo do not disclose a capacitive touch sensor (id. at 4). In
addition, the Appellants argue that "the polysilazane of Shindo is converted
to silica (i.e., Si02) after heat treatment" and "[h Jenee, even if one were to
include the teaching of Shindo, the polysilazane layer would be converted to
silica (Si02) before it was laminated to any touch panel ... " (id.).
Furthermore, the Appellants argue that their disclosures in the Specification
(Spec. 2, 11. 8-12; 9, 1. 1-10, 1. 20 (Examples 1 and 2 and Comparative
Examples A and B)) provide evidence of unexpected results (Br. 4--5).
We have fully considered the Appellants' arguments but find them
insufficient to identify any reversible error in the Examiner's rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Hayashi's Figure 3 is reproduced as follows:
FIG. 3
Hayashi's Figure 3 above depicts a schematic sectional view of an organic
electroluminescent (EL) device 1 comprising, inter alia, a cathode layer 11,
a sealing substrate 31 (e.g., glass), and a hard gas barrier layer 19 (e.g., a
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Appeal2017-010976
Application 13/881,571
silicon compound such as silicon nitride) (Hayashi ,r,r 4, 34, 62, 69, 78, 83,
and 116). Hayashi teaches that the organic EL device may be used in
apparatuses, such as a cellular telephone or personal computer, inclusive of
touch panel-including apparatuses (id. ,r,r 162-163, 166; Figs. 8A and 8B).
Although Hayashi does not teach a capacitive touch sensor, the
Appellants do not provide any argument on the Examiner's reliance on
Schulz for this limitation (Ans. 5). Therefore, consistent with the
Examiner's position (id. at 6), the Appellants' skeletal argument that
Hayashi, Suginoya, and Shindo do not teach a capacitive touch sensor, (Br.
4), is ineffective.
Regarding the polysilazane limitation recited in claim 5, we discern
no error in the Examiner's analysis based on the combination of Hayashi and
Shindo (4--5, 6-7), which we adopt as our own. Contrary to the Appellants'
belief (Br. 4) ("Appellant submits unjustifiable, motivation to use
polysilazane for the gas barrier layer 19 in Hayashi modified by Suginoya";
bolding added), claim 5 does not require a polysilazane as the "layer
comprising a cured reaction product of components comprising a curable
polysilazane." To the contrary, the broadest reasonable interpretation of "a
cured reaction product of components comprising a curable polysilazane"
( emphasis added) recited in claim 5, taking into account the written
description in the Specification, includes Shindo's glassy Si02 layer made
from polysilazanes (Shindo ,r 67).
Finally, we find no merit in the Appellants' position that their
Specification provides evidence of unexpected results. The disclosure in the
Specification (Spec. 2, 11. 8-12) merely touts the invention with conclusory
statements that are not supported by objective evidence ( e.g., comparative
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data). Although Examples 1 and 2 and Comparative Examples A and B
provide some data, they are insufficient for the reasons well-stated by the
Examiner (Ans. 8-9), which we adopt as our own.
For these reasons and those given by the Examiner, we uphold the
Examiner's rejection as maintained against claim 5.
IV. SUMMARY
Rejections A and Bare sustained. Therefore, the Examiner's final
decision to reject claims 5-8 is affirmed.
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
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