Ex parte KHAN et al.

Board of Patent Appeals and Interferences

Sep 9, 1998

08384090 (B.P.A.I. Sep. 9, 1998)

Application for patent filed February 6, 1995.1
1
Paper No. 19
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BABAR A. KHAN, JACOB BRUININK,
ADRIANUS L.J. BURGMANS,
HENRI R.J.R. VAN HELLEPUTTE,
PETRUS F.G. BONGAERTS,
KAREL E. KUIJK, THOMAS S. BUZAK,
KEVIN J. ILCISIN and PAUL C. MARTIN
______________
Appeal No. 97-3246
Application 08/384,0901
_______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and KRASS, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 11 through 16. Claims 1 through 10 have been withdrawn
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Application 08/384,090
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in response to a restriction requirement.
The instant invention pertains to plasma-addressed liquid
crystal (PALC) displays. More particularly, the channel
substrate of a PALC display panel is fabricated by anodically
bonding a thin sheet of glass to the substrate to cover the
plasma channels in such a manner so as to result in less
stress in the thin sheet, thus permitting post processing of
the sheet.
Representative independent claim 11 is reproduced as
follows:
11. A plasma-addressed display device comprising a layer
of electro-optic material, data electrodes coupled to the
electro-optic layer and adapted to receive data voltages for
activating portions of the electro-optic layer, a plurality of
spaced elongated plasma channels containing an ionizable gas
and electrodes and extending generally transverse to the data
electrodes for selectively switching on said electro-optic
portions, said plasma channels being formed between walls in a
substrate, and a thin sheet attached to the said substrate to
cover the channels,
characterized in that the thin sheet is anodically bonded
to the substrate.

The examiner relies on the following references:
Iwama 5,349,454 Sept. 20, 1994
Matsumoto et al.
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Application 08/384,090
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(Matsumoto) 5,444,335 Aug. 22, 1995
Kimura
(European Patent Application) 0 597 432 May 18, 1994
Claims 11 through 13, 15 and 16 stand rejected under
35 U.S.C. § 102(b) as anticipated by Iwama. Claims 14 and 16
stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the examiner cites Iwama and Matsumoto with
regard to claim 14 and Iwama and Tanamachi with regard to
claim 16.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
Turning first to the rejection under 35 U.S.C. § 102(b),
the examiner contends that Iwama discloses all that is claimed
but for the anodically bonding the thin sheet to the
substrate. Appellants apparently agree with this analysis
based on a lack of argument in this regard as to any
particular claim limitation save for the anodically bonding.
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The examiner states that no patentable weight was given
to the
anodic bonding process because applicant [sic,
applicants’] admitted prior art EP-581,376 in column
2, lines 1-10 clearly discloses that bonding also
includes anodic or fusion bonding [Final Rejection-
page 5].
This reasoning is not understood. The European patent cited
by the examiner forms no part of the statement of the
rejection. The rejection is one of anticipation under 35
U.S.C. § 102(b) over Iwama. EP-581,376 is not before us and
may not be used,
in any manner, as evidence to reject the claims since this
reference forms no part of the rejection before us. See In re
Hoch, 428 F.2d 1341, 166 USPQ 406 (CCPA 1970). If the
examiner is attempting to use this reference’s teaching as
evidence that it would have been obvious to employ anodic
bonding in Iwama, an obviousness rejection under 35 U.S.C. §
103 should have been made. The only rejection before us,
regarding claims 11 through 13, 15 and 16 is one of
anticipation under 35 U.S.C. § 102(b) over Iwama and that is
all that we consider in this regard.
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The examiner cites In re Hughes, 496 F.2d 1216, 182 USPQ
106 (CCPA 1974) for the proposition that when a product is
incapable of description by product claims which are of
different scope, an applicant is entitled to product-by-
process claims that recite the novel process as a hedge
against the possibility that the broader product claims may be
invalidated.
We are familiar with Hughes and do not see how that case
supports the examiner’s position that the claimed anodic
bonding limitation may be ignored. Whereas, in general,
process steps in a product claim may be ignored because
determination of patentability is based on the product itself
and not on the process of making that product, In re Thorpe,
777 F.2d 695,
227 USPQ 964 (Fed. Cir. 1985), Hughes establishes an exception
to that rule where the product is incapable of being described
solely by structure or physical characteristics.
In the instant case, it is the anodic bonding between the
thin glass sheet and the substrate that is said to give the
invention its improved characteristics over the prior PALCs.
There would appear to be no reasonable alternative ways to
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describe this characteristic in terms of physical structure
but, if so, it would appear from Hughes that the burden was on
the Patent and Trademark Office to indicate where or how
appellants’ invention is, or may be, so described. We find
that the examiner has not met this burden.
While the examiner cites Hughes and contends that the
claimed “anodically bonded” limitation is a process limitation
not permitted “under the Hughes rule” [answer-page 6], we find
just the opposite. In our view, Hughes supports appellants’
position [principal brief-page 7] that since there is no other
way to claim the product to accurately describe the feature
which distinguishes the product from the prior product,
“anodically bonded” must be given patentable weight.
In responding to appellants’ argument, the examiner
spends two pages [answer-pages 4-5] discussing U.S. Patent No.
5,438,343, referred to in the instant specification and
incorporated by reference therein. We are at a loss to
understand what bearing this patent has on the instant
rejection under 35 U.S.C. § 102(b). First, this patent forms
no part of the examiner’s rejection. Second, it is doubtful
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that the patent even constitutes a viable reference because of
the date of publication and the common assignee vis-a-vis the
instant application. Finally, the patent appears to be
directed to gas discharge displays rather than to PALCs as is
the instant claimed invention. In any event, the examiner’s
statements, at pages 4-5 of the answer, regarding this patent
appear to have no relevance to the rejection at hand.
Accordingly, we will not sustain the rejection of claims
11 through 13 and 15 under 35 U.S.C. § 102(b). Further, we
will not sustain the rejection of claims 14 and 16 under 35
U.S.C. § 103
since neither Matsumoto nor Tanamachi provides for the
deficiency of Iwama, i.e., neither reference teaches or
suggests the claimed “anodically bonded” limitation.
We note, in passing, however, that with regard to claim
14, even though the combination of Iwama and Matsumoto does
not meet the “anodically bonded” limitation of claim 12, and
even though we would agree with appellants that it would not
have been obvious to even make the combination since Iwama is
directed to PALCs and Matsumoto is directed to gas discharge
lamps, we do not agree with appellants that Matsumoto’s
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teaching of “at least” 60 Torr, meaning that a pressure above
760 Torr would be acceptable, would not meet the limitation of
claim 14 requiring a pressure “below 1 Atm,” or 760 Torr. Of
course, a pressure above 760 Torr, although acceptable to
Matsumoto, would not meet the claim language. However, a
range of 60-760 Torr is still acceptable to Matsumoto and any
pressure within that range does meet the claim limitation of
“below 1 Atm.”
The examiner’s decision is reversed.
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REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ERROL A. KRASS )
Administrative Patent Judge )

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Application 08/384,090
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Corporate Patent Counsel
U.S. Philips Corporation
580 White Plains Road
Tarrytown, NY 10591
Appeal No. 97-3246
Application 08/384,090
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EAK/cam