Ex Parte LI et al

Patent Trial and Appeal Board

Nov 12, 2013

12113687 (P.T.A.B. Nov. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte CHENGTAO LI, JUAN VELASQUEZ,
TODD ADKINS, KEITH D. WEISS,
and YANA SHVARTSMAN
____________________

Appeal 2012-001301
Application 12/113,687
Technology Center 3700
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
LYNNE H. BROWNE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001301
Application 12/113,687
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to electrical connections for film insert
molded windows. Claim 1, reproduced below, is illustrative of the claimed
subject matter and is the sole independent claim involved in this appeal:
1. A plastic window comprising:
a transparent plastic substrate having first and second
sides;
a plastic film, the film being thinner than the substrate
and bonded to the first side of the substrate;
an electrically conductive grid including a conductive
connector location, the conductive grid being encapsulated
between the substrate and the film; and
an electrical connector, the electrical connector extending
into the substrate from the second side of the substrate and
being in electrical contact with the conductive connector
location whereby an electrical voltage supply can be connected
to the conductive connector location and whereby an electrical
current caused to flow through the conductive grid.

REJECTION
Claims 1-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishio (US 6,103,999, iss. Aug. 15, 2000) and Orcutt (US
4,396,826, iss. Aug. 2, 1983). Ans. 5.

Appeal 2012-001301
Application 12/113,687
3
OPINION
The Examiner found that Nishio discloses the basic device of claim 1,
except for the electrical connector extending from the second side—the side
opposite the film. Ans. 5. The Examiner reasons:
It would have been obvious to one of ordinary skilled in
the art at the time of invention to provide the electrical
connector extending into the substrate from the second side of
the substrate as taught by Orcutt et al. in order to provide
electrical power for the plastic window from second side of
substrate of Nishio et al.
Ans. 8. This reasoning is essentially circular. App. Br. 5. The Examiner
proposes to modify Nishio’s device without any explanation as to why
providing electrical power for the plastic window from the second side of
substrate would have been a desirable or known and obvious alternative. The
only further explanation provided by the Examiner is that reason to modify
Nishio stems from “the knowledge generally available to one of ordinary
skill in the art.” Ans. 13. However, the Examiner does not identify what that
knowledge consists of, or provide any evidence of such knowledge. Citing
Orcutt to merely demonstrate the existence of a claim element is not enough
to establish the obviousness of the proposed combination. Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617
F.3d 1296, 1303 (Fed. Cir. 2010).
A conclusion of obviousness must be supported with an explanation
that has some basis in fact. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). There are various ways a conclusion of obviousness may be
supported with articulated reasoning having rational underpinnings. See,
Appeal 2012-001301
Application 12/113,687
4
e.g., MPEP § 2143. Where, as here, the Examiner fails to articulate such
reasoning we are constrained to reverse the rejection as legally insufficient.

DECISION
The Examiner’s rejection is reversed.

REVERSED

mls