Ex Parte Kim et al

Patent Trial and Appeal Board

Jun 20, 2013

10988481 (P.T.A.B. Jun. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/988,481 11/15/2004 Tae Won Kim 146394-2 1163
62204 7590 06/21/2013
GE Licensing
ATTN: Brandon, K1-2A62A
1 Research Circle
Niskayuna, NY 12309
EXAMINER
POMPEY, RON EVERETT
ART UNIT PAPER NUMBER
2812
MAIL DATE DELIVERY MODE
06/21/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte TAE WON KIM,1
Min Yan, Christian Maria Anton Heller, Marc Schaepkens,
Thomas Bert Gorczyca, Paul Alan McConnelee, and
Ahmet Gun Erlat
________________

Appeal 2012-001495
Application 10/988,481
Technology Center 2800
________________

Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Tae Won Kim, Min Yan, Christian Maria Anton Heller, Marc
Schaepkens, Thomas Bert Gorczyca, Paul Alan McConnelee, and

1 The real party in interest is listed as General Electric Company. (Appeal
Brief, filed 5 May 2011 (“Br.”), 2.)
Appeal 2012-001495
Application 10/988,481

2
Ahmet Gun Erlat (“Kim”) timely appeal under 35 U.S.C. § 134(a) from the
final rejection of claims 1-17, 19-30, and 39-41.2 We have jurisdiction
under 35 U.S.C. § 6. We reverse.
OPINION
A. Introduction3
This is the second time claims based on the 481 Specification have
come before us on appeal. In the first appeal,4 the Examiner’s rejection of
substantially identical claim 1 as anticipated by Graff5 was reversed, as were
all rejections of other claims for obviousness in view of the combined
teachings of Graff with other references. Subsequent to the Board’s
Decision, prosecution was reopened in view of newly discovered prior art.6
In due course, this appeal was filed.
The critical limitation in the present appeal, as in the first appeal, is
the term “inorganic-organic interface zone.” The Board found (Kim I 8) that

2 Copending claim 42 is not before us, but stands objected to by the
Examiner as being dependent from a rejected claim, but is otherwise
allowable. (FR 21.)
3 Application 10/988,481, High integrity protective coatings,
filed 15 November 2004 as a continuation in part of 10/879,468,
filed 30 June 2004, now U.S. Patent 7,449,246 (11 November 2008). The
specification is referred to as the “481 Specification,” and is cited as “Spec.”
4 Board Appeal 2009-006924 (BPAI 1 October 2009), (“Kim I”).
5 Gordon Lee Graff et al., Smoothing and barrier layers on high Tg
substrates, U.S. Patent 6,492,026 B1 (2002).
6 Office Action mailed 9 April 2010 (approved by the Technology Center
Director, at page 30.)
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the 481 Specification “instructs that ‘a coating of the present invention does
not have distinct interfaces at which the composition of the coating changes
abruptly.’ (Spec. 7, ¶ [0031].)” Thus, the Board held, consistent with the
ordinary meaning of the word “zone” and the supporting disclosure, that the
interface between the inorganic and the organic layer in the claimed articles
is not “abrupt.” (Kim I, 8.) We adhere to that construction.
In the prior appeal, the Board found that the Examiner had failed to
come forward with evidence that the articles described by Graff contained a
barrier layer in which the inorganic-organic interfaces were not abrupt, but
graded into one another. (Id.) We are called upon today to determine
whether the Examiner has come forward with evidence that such an interface
zone would have been obvious in view of the combined teachings of Graff
and additional references. For the reasons set forth infra, we find that the
Examiner has not carried that burden.
Representative Claim 1 reads:
A composite article comprising:
at least one high integrity protective coating, said high
integrity protective coating comprising
at least one organic-inorganic composition barrier
coating layer and
at least one planarizing layer,
wherein the barrier coating layer comprises
an organic zone and
an inorganic zone and
an organic-inorganic interface zone between the
organic zone and the inorganic zone.
(Claims App., Br. 14; paragraphing and emphasis added.)
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The Examiner maintains the following grounds of rejection:7
A0. Claims 1-14, 16, 22, and 24-29 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Graff8
and Walther.9
A1. Claim 15 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Graff, Walther, and Tanaka.10
A2. Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Graff, Walther, and
Bermel.11
A3. Claim 20 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Graff, Walther, and Naruse.12
A4. Claims 21, 23, and 30 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Graff, Walther, and
Robinson.13
A5. Claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Graff, Walther, and
Strasilla.14

7 Examiner’s Answer mailed 16 August 2011 (“Ans.”).
8 See n.5, supra.
9 Marten Walther et al., Vessel of plastic having a barrier coating and a
method of producing the vessel, U.S. Patent 5,736,207 (1998).
10 Atsushi Tanaka et al., U.S. Patent 5,712,695 (1998).
11 Marcus S. Bermel, U.S. Patent 7,048,823 B2 (23 May 2006), based on an
application filed 3 July 2002.
12 Hideaki Naruse and Hiroshi Iwanaga, U.S. Patent Application Publication
2004/0219380 A1 (4 November 2004), based on an application filed 23
March 2004.
13 Julian Robinson et al., WO 03/087247 A1 (2003).
14 Dieter Strasilla et al., U.S. Patent 5,151,318 (1992).
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A6. Claim 41 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Graff, Walther, Strasilla, and Naruse.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner finds that Graff teaches a barrier layer and a
planarizing layer, deposited on a high Tg substrate. (Ans. 5.) The Examiner
finds further that “Graft [sic: Graff15] does not expressly teach the barrier
stack comprises an organic-inorganic interface zone between the organic
zone and the inorganic zone.” (Ans. 6, ll. 3-4.) The Examiner finds that
Walther teaches a “vessel including a barrier layer comprising adjacent
organic and inorganic layers.” (Id. at ll. 5-6, citing Walther Fig. 3, items 32
and 33, and col. 6, ll. 57-59.) The Examiner finds further that Walther
explains that there is a zone between the organic and inorganic layers
“wherein the two layers mix.” (Ans. 6, ll. 7-8, citing Walther, col. 3,
ll. 64-6.) The Examiner also finds that Walther is “analogous prior art
because it is solving the same problem as in the instant invention, that is
providing good adhesion which mitigates the chance for delamination
between the organic and inorganic material zones.” (Ans. 6, ll. 14-17, citing
Spec. 11 [0046].)

15 With the exception of the listing in the “Evidence Relied Upon” section of
the Answer, and the header or the first rejection, the Examiner appears to
mis-type “Graff” as “Graft” or “Graf.” A more plausible explanation,
however, is that the word-processing spell checker altered “Graff” in the
Final Rejection to —Graft—.
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Kim argues that Walter is concerned with coatings for a plastic vessel,
in which flexibility, mechanical stability, and adhesiveness are primary
concerns. (Br. 7, ll. 16-17 and 21-22.) Kim argues further that, in contrast,
the appealed claims are concerned with coatings for optoelectronic devices
in which low oxygen permeability, high transparency, etc. are of special
concern. (Id. at ll. 18-21, and para. bridging 7-8). Kim argues that Walther
is not analogous art and that there is no reason to combine the teachings of
Walther with those of Graff. (Id. at para. bridging 8-9.)
Our reviewing court has held that “[t]he presence or absence of a
motivation to combine references in an obviousness determination is a pure
question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
A related inquiry, whether applied prior art is “analogous” to the arts
involved in the inventor’s endeavors, has been used to define the scope of art
relevant to the consideration of obviousness. See, e.g., In re GPAC Inc.,
57 F.3d 1573, 1577-78 (Fed. Cir. 1995) (“the scope of the relevant prior art
[includes] that reasonably pertinent to the particular problem with which the
inventor was involved. . . . Therefore, the prior art relevant to an
obviousness determination necessarily encompasses not only the field of the
inventor’s endeavor but also any analogous arts”) (internal quotations and
citations omitted). It does not follow, however, that naming a common field
of endeavor to which two references might be pertinent suffices to establish
that the particular teachings of the references are reasonably pertinent to one
another, such that those teachings may be combined to establish
obviousness. Reasonable pertinence for combination arises from a
recognition demonstrable in the prior art of a concern common to the
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references. Hindsight recognition that the routineer would have been able to
make combination without undue experimentation is not the test of
obviousness.
In the present case, the evidence and argument advanced by the
Examiner does not establish the reasonable pertinence of the concerns of
Walther with those of Graff. Graff is concerned with visual display devices
comprising high temperature substrates having improved transparent barrier
stacks that protect environmentally sensitive display devices. While it
cannot be denied that adhesion of a protective layer to an underlying
substrate is a common concern, the Examiner has not shown that the mixed
inorganic-organic zone between the inorganic zone and the organic zone in
the coverings for plastic bottles described by Walther would have been
recognized by the ordinary worker as being relevant to the interface between
the inorganic zone and the organic zone in the barrier stacks described by
Graff. As Kim takes some pains to point out (Br. 9-10), the mechanism by
which Walther achieves adhesion between inorganic and organic layers does
not appear to have any substantive relevance to the relations between the
inorganic and organic layers described by Graff.
The Examiner has not relied on the remaining references applied to
the other claims in any way that cures the deficiencies of Graff and Walther.
We therefore reverse the remaining rejections for obviousness.
Perhaps some of the Examiner’s misapprehensions arise from the
seeming breadth of the claims, coupled with the specificity of Kim’s
arguments. The claims are not necessarily limited to optoelectronic devices,
as Kim appears to assume (e.g., Br. 6, ll. 1-9). The relation to optoelectronic
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devices arises from the recitation of a “planarizing layer” and the definition
of an “organic-inorganic interface zone.” In the claim construction, we have
taken pains not to read limitations from the Specification into the claims.
Rather, we have only applied the definition of the implicitly disputed term
“organic-inorganic interface zone.” On the present record, no thicknesses or
relative thicknesses of layers are required to meet the claimed article,
contrary to some of Kim’s arguments (e.g., Br. 7, ll. 1-3, arguing for
a 5-30 nm thickness of the interface zone). On the other hand, as the
Examiner recognized (Ans. 27, first full para.), the claims are not limited to
a single layer, as argued by Kim (e.g., Br. 9).
The Examiner’s overall approach is laudable. Demonstrating
obviousness in view of apparently very distant prior art can be a powerful
tool “to achieve a complete exploration of the applicant’s invention and its
relation to the prior art,” so that, while the claims can be amended,
“ambiguities [can] be recognized, scope and breadth of language explored,
and clarification imposed,” in order to “fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (internal cites omitted). Such
clarification cannot be achieved, however, on the basis of prior art references
that are not combined in a way that makes technological sense.
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C. Order
We reverse the rejection of claims 1-17, 19-30, and 39-41.
REVERSED
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