Ex parte Kamamori et al.

Board of Patent Appeals and Interferences

Aug 24, 1999

07840345 (B.P.A.I. Aug. 24, 1999)

Application for patent filed February 24, 1992. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HITOSHI KAMAMORI, KOJI IWAS, TAKAKAZU FUKUCHI,
MITSURU SUGINOYA, TSUTOMU WATANABE and TOSHIAKI OTA
____________
Appeal No. 96-0763
Application No. 07/840,3451
____________
ON BRIEF
____________
Before PAK, OWENS, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1, 6, 7, 9 through 11 and 14
through 16, as amended under 37 CFR § 1.116 after the final
rejection. See the amendments filed May 11, 1994 (paper no.
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Application No. 07/840,345
12), and December 9, 1994 (paper no. 17). Further see the
respective advisory actions dated June 1, 1994 (paper no. 13),
refusing entry of the amendment and the advisory action dated
January 31, 1995 (paper no. 19) granting entry of both
amendments after the final rejection.
THE INVENTION
The invention is drawn to a method for the manufacture of
a color filter which may be used for a liquid crystal display.
The method of manufacture comprises forming a series of layers
on a substrate as follows;
1. A conductive film having stripe patterns with gaps between
the stripe patterns is formed on an insulative surface of a
substrate.
2. A colored layer is formed on the stripe patterns of the
conductive film such that gaps exist between the stripe
patterns of the colored layer.
3. A transparent conductive film is formed over the stripe
patterns of both the colored layer and in the gaps.
4. A metal film having a lattice pattern is formed over the
transparent conductive film to shield light transmittance
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Application No. 07/840,345
The word, “the” was added in the amendment filed October2
26, 1993 (paper no. 9). Although,”the” was subsequently
omitted in the amendment filed May 11, 1994 under Rule
116(paper no. 12), we conclude that the omission was
inadvertent and typographical. Therefore, “the” is present in
claim 1, line 6.
passing through the gaps between the stripe patterns of the
colored layer on the conductive film.
THE CLAIMS
Claim 1 and 6 are illustrative of appellants invention and
are reproduced below.
1. A method of manufacturing a color filter, comprising
the steps of:
forming a conductive film having stripe patterns on an
insulative surface of a substrate such that gaps exist between
the stripe patterns;
forming a colored layer on the stripe patterns of the2
conductive film by electrodeposition such that gaps exist
between the stripe patterns of the colored layer;
forming a transparent conductive film over the stripe
patterns of the colored layer and in the gaps; and
forming a metal film having a lattice pattern over the
transparent conductive film so as to shield light transmittance
passing through the gaps between the stripe patterns of the
colored layer on the conductive film.
6. A method of manufacturing a color filter according to
claim 1, including a step of forming an inorganic film on the
colored layer before the step of forming the transparent
conductive film.
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Application No. 07/840,345
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the
following references.
Hatano et al. (Hatano) 4,935,757 Jun. 19,
1990
Yanagisawa 5,128,786 Jul. 7,
1992
Sekimura, European Patent 0,226,218 Jun. 6,
1987
Application (EPA’218)
Ohgawara, European Patent 0,338,412 Oct. 10,
1988
Application (EPA’412)
THE REJECTIONS
Claims 1, 7, 10, 11, and 14 through 16 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hatano in view
of Yanagisawa and further in view of EPA’412.
Two new grounds of rejection were entered in the Answer,
and responded to by appellant in the Reply Brief. They are as
follows;
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Application No. 07/840,345
Claims 1, 6, 7, 9 through 11 and 14 through 16 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Hatano in view of Yanagisawa further in view of EPA’412, and
further in view of EPA’218.
Claims 6 and 9 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellants regard as the invention.
OPINION
As an initial matter appellants submit that the claims are
grouped in two groups separately patentable on their own
merits. Claims 1, 7, 10, 11, and 14 through 16 constitute the
first group. Claims 6 and 7 constitute the second group.
Accordingly, we select claims 1 and 6 respectively as
representative of each group of claims. See 37 CFR 1.192 §
(c)(5)(1994).
We have carefully considered appellants’ arguments for
patentability. However, we are in complete agreement with the
examiner that the claimed subject matter is unpatentable in
view of the applied prior art. Accordingly, we will sustain
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the examiner’s rejection for essentially those reasons
expressed in the Answer. However, we will not sustain the
rejection under the second paragraph of 35 U.S.C. § 112.
The Rejection Under 35 U.S.C. § 112
The legal standard for definiteness under the second
paragraph of 35 U.S.C. § 112 is whether a claim reasonably
apprises those of ordinary skill in the art of its scope. In
re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). The first inquiry is to determine whether the
claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
The examiner’s position is that the phrase “forming an
inorganic film on the colored layer” is indefinite due to its
breadth, Answer, page 5. However, breadth itself is not
indefinite. In re Gardner, 427 F.2d 786, 788, 166 USPQ 138,
140 (CCPA 1970). The definiteness of the language employed
must be analyzed not in a vacuum, but in light of the teachings
of the particular application. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). Applying the analysis set
forth above, appellant’s specification, page 7, discloses SiO2
and other inorganic films. One of ordinary skill in art
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Application No. 07/840,345
reading the claims in light of the specification would be
possessed with a reasonable degree of certainty as to the
subject matter encompassed within the claims. Even, if we
accept the examiners analysis that the inorganic layer could be
another ITO film, the additional permutation would not result
in an indefinite claim. Only a broader interpretation of the
claimed subject matter would be the result. Accordingly, the
examiner has failed to establish with respect to the phrase
“forming an inorganic film on the colored layer” that one of
ordinary skill in the art would not be apprised of the scope of
the claims containing this phrase.
Based on the above analysis, the rejection under § 112 is
not sustained.
The Rejections under § 103
The sole issue before us is whether the examiner has
established a prima facie case of obviousness based upon the
art of record. An analysis of the primary reference to Hatano
requires us to conclude that the sequence of layers used as a
liquid crystal display meets the requirements of the claimed
subject matter. We find that figure 4 of Hatano discloses a
transparent substrate 12. A conductive film 13 is formed on
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the substrate. Color filters 14 are formed on the conductive
film. A second conductive film 15 is formed over the colored
layers. Finally a mask 16 is formed over the second conductive
film. We find all the layers to be transparent or light
transmitting. See Column 3, line 49 to column 4, line 13. We
find the conductive film 13 etched into a pattern of stripes as
required by the claimed subject matter. See column 4, lines 54-
55. We further find the mask 16 has a lattice pattern as
required by the claimed subject matter. See Figure 3. Hatano
is silent as to the composition of the substrate and uses a
resinous black pigment containing mask. Accordingly, Hatano
neither discloses that the substrate has an insulative surface
nor teaches a metal film as a light shielding layer.
Yanagisawa and EPA’412, both directed to liquid crystal
displays disclose glass substrates. See Yanagisawa, col 4, line
16, EPA’412, column 11, lines 43 -46, and examples 1, 6 and 7.
The examiner has found glass to be an insulative surface,
Answer, page 4. Appellants have not disputed the examiners’
finding in their Reply Brief. See page 7. Accordingly, we agree
with and adopt this finding. Based upon the above
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considerations, we conclude that glass substrates are
conventionally used in liquid crystal displays. Accordingly,
it would have been obvious to one of ordinary skill in the art
to have used an insulative glass substrate in the claimed
subject matter.
As to the utilization of metallic shielding layers, both
Yanagisawa and EPA’412 are directed to metallic shielding
layers in liquid crystal displays. We find that EPA’412
discloses the use of either optosetting black ink or a thin
metallic film. See column 4, line 53 to column 5, line 2.
Moreover, we find that EPA’412 discloses that the shielding
layer may be used in numerous alternative locations. It may be
adjacent to a conductive film or to a color filter. See column
5, lines 3 through 14, and column 6, lines 13 - 18. See also
Examples 6 and 7.
Based upon the above findings, we conclude that it would
have been obvious for one of ordinary skill in the art to
prepare appellants’ color filter by incorporating both the
glass substrate of either Yanagisawa or EPA’412 and the thin
metallic shielding layers of EPA’412 in place of the black
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pigmented shielding layer of Hatano to achieve a structure
meeting the requirements of the claimed subject matter.
One issue before us is whether the person having ordinary
skill in the art would have found a suggestion in the teachings
of the references of record to prepare a color filter according
to appellants' claimed process and whether the references would
have revealed that such person would have a reasonable
expectation of success. See In re Vaeck 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991). Based upon our findings
supra, we answer both questions in the affirmative. Hatano
suggests the preparation of liquid crystal displays containing
appellants’ claimed color filter, except as noted supra. The
liquid crystal displays of Yanagisawa and EPA’412 disclose the
conventional use of insulative glass substrates, and the use of
metallic film as shielding layers. EPA’412 provides the
expectancy that whether the shielding layer is adjacent to the
substrate, a conductive electrode or a color filter, it would
function in a successful manner. See column 5, lines 3 - 14.
Accordingly, we conclude that the prior art would have
suggested to those of ordinary skill in the art to make the
claimed color filter and that in so making or carrying out,
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those of ordinary skill in the art would have had a reasonable
expectation of success. Therefore, we will sustain the
rejection of the examiner.
As to the rejection of claims 6 and 9, we find that
EPA’218 discloses a liquid crystal display containing an
inorganic film layer atop a colored filter layer, which
functions as a protection layer, wherein, “[t]ransparent
electrodes can be formed further thereon.” See page 4, lines
22 - 55. Accordingly, an inorganic film is formed between the
color filter layer and the transparent electrode layer. We
further find that EPA’412 discloses that films of silicon
dioxide are coated on the electrode layer. See column 12,
lines 29 -32, and Examples 1 and 6. Based upon the above
considerations, we conclude that it would have been obvious to
one of ordinary skill in the art to have used the inorganic
protection layers of EPA’218 and EPA’412 to separate conductive
layers and filter layers.
Appellants have argued both in their principal Brief and
in their Reply Brief that Yanagisawa teaches forming a metal
shielding only on a glass substrate. See Brief, page 9, and
Reply Brief, page 7. However, the claimed subject matter
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before us is directed to a method of manufacture, “comprising.”
The claim is open to additional steps such as the utilization
of a second substrate following application of the metal film
in the process of forming a color filter. The use of two
substrates in this art is entirely conventional as taught by
Hatano Figure 1, 12 and 19, and by Yanagisawa, Figures 5 and
10, 11 and 12. Accordingly, a second glass substrate may be
added after the metal shielding. We conclude that the language
of the claimed subject matter does not preclude a shielding
layer being adjacent to a second substrate.
DECISION
The rejection of claims 1, 7, 10, 11, and 14 through 16
under 35 U.S.C. § 103 as being unpatentable over Hatano in view
of Yanagisawa and further in view of EPA’412 is affirmed.
The rejection of claims 1, 6, 7, 9 through 11 and 14
through 16 under 35 U.S.C. § 103 as being unpatentable over
Hatano in view of Yanagisawa and further in view of EPA’412,
and further in view of EPA‘218 is affirmed.
The rejection of claims 6 and 9 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
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particularly point out and distinctly claim the subject matter
which applicant regards as the invention is reversed.
The decision of the examiner is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
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