Ex Parte Lee

Board of Patent Appeals and Interferences

Jun 19, 2008

10032062 (B.P.A.I. Jun. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YUN BOK LEE
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Appeal 2008-0425
Application 10/032,062
Technology Center 2800
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Decided: June 19, 2008
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
ROBERT E. NAPPI, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-5, 7, 8, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2008-0425
Application 10/032,062

Appellant’s invention relates to a liquid crystal display device
arranged in a matrix type and which includes gate and data lines, and a pixel
electrode provided at an intersection of the gate and data lines. A thin film
transistor is provided for responding to a scanning signal of the gate line for
switching the data signal of the data line into the pixel electrode. Further
included is an alignment film formed on a portion of the gate line, the data
line, and the pixel electrode to determine the primary alignment direction of
a liquid crystal. (Specification 7-9).
Claim 1 is illustrative of the invention and reads as follows:

1. A liquid crystal display device having liquid crystal
cells arranged in a matrix type, comprising:
a gate line for receiving a scanning signal;
a data line for receiving a data signal;
a pixel electrode provided at an intersection of the gate line and the
data line to drive a liquid crystal cell;
a thin film transistor for responding to the scanning signal to switch
the data signal into the pixel electrode;
a common line laterally adjacent to the pixel electrode along a
direction of one of the gate and data lines; and
an alignment film formed on at least a portion of the gate line, the data
line and the pixel electrode to determine a primary alignment direction of a
liquid crystal,
wherein the pixel electrode and the common electrode are disposed
directly on an insulating layer that serves as the gate insulating layer of the
thin film transistor, and wherein the alignment film directly contacts upper
and side surfaces of the common line, upper and side surfaces of the pixel
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Application 10/032,062

electrode, and upper surfaces of the source and drain electrodes of the thin
film transistor.
The Examiner relies on the following prior art references to show
unpatentability:
Mizutome1 US 6,072,555 Jun. 6, 2000
Kim (Kim ’970) US 6,177,970 B1 Jan. 23, 2001
Shin US 6,271,903 B1 Aug. 7, 2001
(filed Jan. 22, 1998
Kim (Kim ’727) US 6,388,727 B1 May 14, 2002
(filed Nov. 9, 1999)

Claims 1-4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shin in view of Kim ’970.
Claims 5, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shin in view of Kim ’970 and further in view of Kim
’727.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

1 The Mizutome reference is not part of any stated ground of rejection but,
rather, is cited as evidence in support of the Examiner’s rejection of claims
1-4, 7, and 8 based on Shin and Kim ’970.
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Application 10/032,062

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claims 1-4, 7,
and 8, would one of ordinary skill in the art at the time of the invention have
found it obvious to combine Shin and Kim ’970 to render the claimed
invention unpatentable?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 5, 19,
and 20, would one of ordinary skill in the art at the time of the invention
have found it obvious to modify the combination of Shin and Kim ’970 by
adding the teachings of Kim ’727 to render the claimed invention
unpatentable?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
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Application 10/032,062

S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
The rejection of claims 1-4, 7, and 8 based on Shin and Kim ’970
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claims 1 and 4 based on the combination of Shin and
Kim ’970, Appellant asserts that the Examiner has failed to set forth a prima
facie case of obviousness since a proper basis for the proposed combination
of references has not been established. After reviewing the arguments of
record from Appellant and the Examiner, we are in general agreement with
Appellant’s position as stated in the Briefs.
The Examiner proposes (Ans. 3-5) to modify the liquid crystal display
device structure of Shin by forming the alignment film so that it is in direct
contact with the surfaces of the common line as disclosed by Kim ’970. As
argued by Appellant (App. Br. 6-7; Reply Br. 3), however, such a
modification would necessitate the removal of the insulating layers (Figure
2, element 58; Figure 14, element 24) which separates the pixel and common
electrodes which are formed in different planes. We agree with Appellant
that such removal would interfere with the operation of Shin’s device since
Shin’s insulating layers 58 or 24 are required for the proper function of the
capacitive coupling structures 65 and 66 which operate to cancel the
parasitic capacitance generated during driving of the liquid crystal cell.
(Shin, col. 6, l. 63- col. 7, l. 6).
Although the Examiner, in attempting to address Appellant’s
arguments, has contended (Ans. 6) that the proposed modification of Shin
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would not destroy the operation of Shin’s device, no evidence or reasoned
analysis has been presented to support the Examiner’s position. While the
Examiner is correct that the particulars of the parasitic capacitance
cancelling structure are discussed in Shin only with respect to the Figure 2
embodiment, and not the prior art Figure 13 structure relied on by the
Examiner, it is apparent that similar parasitic capacitance cancelling
structure exists in both structures. As described and illustrated in Shin, both
the Figure 2 and Figure 13 structures have pixel and common electrodes
formed in different planes and separated by insulating layers 58 and 24,
respectively. Further, the described capacitance generating sections 65 and
66 formed by extending the ends of the pixel electrode 54 on a portion of the
insulator layer 58 over the common electrodes 53 in Shin’s Figure 2
embodiment are remarkably similar to the pixel electrode extension ends
illustrated in Shin’s Figure 13 prior art structure.
We are further of the view that even assuming, arguendo, that a
proper basis were established for the combination of Shin and Kim ’970,
there is no indication from the Examiner as to how and in what manner the
teachings of Kim ’970 would be applied to Shin to arrive at the claimed
invention. In other words, any possible suggestion to apply an alignment
film in direct contact with the surfaces of a common electrode such as
disclosed in Kim ’970 to the liquid crystal device structure of Shin would
have to ignore the fact that the insulating layer which separates the pixel and
common electrodes in Shin, which layer would have to be removed to
implement the proposed modification, is required for proper operation of
Shin’s device.
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We do note that it is proper for an Examiner to consider, not only the
specific teachings of a reference, but inferences a skilled artisan might draw
from them. It is equally important, however, that the teachings of prior art
references be considered in their entirety. See W.L.Gore & Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983). In particular, in
order for us to accept the Examiner’s conclusions in the present factual
situation, we would have to improperly selectively ignore significant
portions of the disclosure of the Shin reference. In our view, given the
disparity of problems addressed by the applied Shin and Kim ’970 prior art
references, and the differing solutions proposed by them, any attempt to
combine them could only come from a hindsight reading of Appellant’s own
disclosure.
In view of the above discussion, we are of the opinion that the applied
prior art references, even if combined, do not support the obviousness
rejection. We, therefore, do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1 and 4, nor of claims 2, 3, 7, and 8
dependent thereon.

The rejection of claims 5, 19, and 20 based on Shin, Kim ’970, and Kim’727
We also do not sustain the Examiner’s obviousness rejection of claims
5, 19, and 20. The Examiner has applied the teachings of Kim ’727 to Shin
and Kim ’970 to address the electrode material features set forth in claims 5,
19, and 20. We find nothing, however, in the disclosure of Kim ’727 which
overcomes the innate deficiencies of Shin and Kim ’970 discussed supra.

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CONCLUSION
In summary, we have not sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of any of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-5, 7, 8, 19, and 20 is reversed.

REVERSED

eld

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