Ex Parte Lim et al

Board of Patent Appeals and Interferences

Aug 25, 2006

09840082 (B.P.A.I. Aug. 25, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JOO SOO LIM & IN BYEONG KANG
_______________

Appeal No. 2006-1628
Application No. 09/840,082
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ON BRIEF
_______________

Before JERRY SMITH, BARRY, and SAADAT, Administrative Patent Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-3, 5-7, 9, 11-13, 15-17, 19, and 21, which
constitute all the claims pending in this application.
The disclosed invention pertains to a liquid crystal display device with a
pixel electrode between a gate line and a data line with a switching device
therebetween and a charging device on the gate line. A light-shielding member
overlaps the switching device and extends from an end at the pixel electrode side
of a metal thin film provided with the switching device into the pixel area. A light-
Appeal No. 2006-1628
Application No. 09/840,082

shielding member also overlaps the metal thin film upper electrode of the
charging device. As a result, light is blocked from the metal thin films of the
switching device and charging device thus preventing undesired reflections that
would otherwise degrade image quality.

Representative claim 1 is reproduced as follows:

A liquid crystal display device comprising:

a pixel electrode at a pixel area between a gate line and a data line;

a switching device at an intersection between the gate line and the data
line, the switching device comprising a light-shielding member overlapping the
switching device and extending from an end at the pixel electrode side of a metal
thin film provided within the switching device into the pixel area, the light
shielding member covering and extending past all sides of the metal thin film with
a margin sufficient to block light incident on the metal thin film, wherein the
switching device is a thin film transistor at the intersection between the gate line
and the data line for driving the pixel electrode, and wherein the metal thin film of
the switching device is a drain electrode connected to the pixel electrode.

The examiner relies on the following references:

Yanagawa et al.
(Yanagawa)
6,266,117 Jul. 24, 2001
(filed Mar. 2, 1998)

Murade 6,297,862 Oct. 2, 2001
(filed Jun. 12, 1998)

The admitted prior art shown in Figs. 1-3 of the application.

The following rejections are on appeal before us:
1. Claims 1-3, 5-7, 9, 11-13, 15-17, and 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the admitted prior art in view of
Murade.
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2. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the admitted prior art in view of Murade and further in view of
Yanagawa.
Rather than repeat the arguments of appellants or the examiner, we make
reference to the briefs and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants' arguments set forth in
the briefs along with the examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
We first consider the examiner's rejection of claims 1-3, 5-7, 9, 11-13, 15-
17, and 19 under 35 U.S.C. § 103(a) as being unpatentable over the admitted
prior art in view of Murade. 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, 5 USPQ2d
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1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434
(Fed. Cir. 2002). In particular, the examiner must show that there is a teaching,
motivation, or suggestion of a motivation to combine references relied on as
evidence of obviousness. Id. at 1343. The examiner cannot simply reach
conclusions based on the examiner’s own understanding or experience - or on
his or her assessment of what would be basic knowledge or common sense.
Rather, the examiner must point to some concrete evidence in the record in
support of these findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697 (Fed. Cir. 2001). Thus the examiner must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the examiner’s
conclusion. However, a suggestion, teaching, or motivation to combine the
relevant prior art teachings does not have to be found explicitly in the prior art, as
the teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an implicit
showing is what the combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art. In re Kahn, 441 F.3d 977, 987-88, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re Kotzab, 217 F.3d 1365, 1370,
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55 USPQ2d 1313 (Fed. Cir. 2000). See also In re Thrift, 298 F. 3d 1357, 1363,
63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the examiner are
an essential part of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made by
appellants have been considered in this decision. Arguments which appellants
could have made but chose not to make in the briefs have not been considered
and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
Regarding independent claims 1, 5, 9, 11, 15, and 19, the examiner's
rejection essentially finds that the admitted prior art teaches every claimed
feature except for the light-shielding member (1) extending from an end at the
pixel electrode side of a drain electrode of the thin film transistor (TFT), and (2)
extending from an end at the pixel electrode side of the storage capacitor upper
electrode (metal thin film) into the pixel area. The examiner also indicates that
the claims differ from the admitted prior art in calling for the light-shielding
member to cover and extend past all sides of the drain electrode (metal thin film)
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with a margin sufficient to block light incident on the metal thin film [answer,
pages 3-5].
The examiner cites Murade as teaching a light shielding member that
covers and extends over the source/drain region of a TFT to block incident light
onto the source/drain region. The examiner also indicates that Murade's light-
shielding member extends over the upper electrode of the storage capacitor
[answer, pages 5 and 6]. The examiner finds that it would have been obvious to
one of ordinary skill in the art at the time of the invention to extend the light-
shielding film of the admitted prior art to cover the drain electrode and upper
electrode of the storage capacitor to block incident light thereon to (1) minimize
TFT leakage current; (2) improve display contrast; and (3) display high-quality
images free from image-degrading effects, such as cross-talk [answer, page 6].
Regarding independent claims 1, 9, 11, and 19, appellants argue that
Murade does not suggest that the metal thin film of the drain electrode of the TFT
should be covered by the light-shielding layer with a margin sufficient to block
light incident on the metal thin film as claimed [brief, page 8; emphasis in
original]. Rather, appellants note that Murade only concerns shielding the
semiconductor channel region and LDD regions of the TFT from incident light to
minimize leakage current because light affects the electrical conductivity of
semiconductor/polysilicon materials [brief, pages 8 and 9; reply brief, page 2].
Murade, however, is not concerned with shielding the claimed metal thin film
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elements since incident light would not readily affect a metal's electrical
conductivity [reply brief, page 2].
Appellants also note that the channel region in the admitted prior art is
already covered by the light-shielding layer 11. Thus, Murade does not provide
any suggestion or motivation to extend the light-shielding member of the
admitted prior art with a margin sufficient to block light incident on the metal thin
film of the TFT's drain electrode as claimed [brief, page 9].
Regarding independent claims 5, 9, 15, and 19, appellants argue that
there is no metal film in Murade. Rather, Murade teaches shielding a non-
metallic capacitance line 16 to prevent adverse effects due to incident light [brief,
page 10; emphasis in original]. Appellants also argue that Murade fails to
provide any motivation or suggestion to extend the light-shielding layer to cover
the storage capacitor's metallic upper electrode since Murade, at best, only
teaches shielding a structure formed of doped polysilicon material [brief, page
11]. According to appellants, Murade does not therefore provide a proper
motivation to extend the light-shielding member into the pixel area with a margin
sufficient to block light incident on the metal upper electrode of the storage
capacitor as claimed [brief, pages 11 and 12; emphasis in original].
We will sustain the examiner's rejection of claims 1-3, 5-7, 9, 11-13, 15-17,
and 19. At the outset, we agree with appellants that the examiner's rationale to
extend the light-shielding member in the admitted prior art device is problematic
essentially for the reasons noted by appellants. However, the teachings of
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Murade considered alone amply establish at least a prima facie case of
obviousness. In short, the examiner's reliance on the admitted prior art device to
establish a prima facie case of obviousness is merely cumulative to the teachings
of Murade. In our view, the obviousness rejection of claims 1-3, 5-7, 9, 11-13,
15-17, and 19 is proper based solely on the teachings of Murade.
Murade discloses a light-shielding member 6 that overlaps the TFT and
covers the TFT's channel region 1c, LDD regions 1d, 1e, and source/drain
regions 1a, 1b [Murade, Fig. 2]. As shown in Fig. 2, the light-shielding member 6
also overlaps the pixel electrode 14 including the junction between the drain
region 1b and pixel electrode 14. In our view, at least the portion of pixel
electrode 14 that directly contacts drain region 1b reasonably constitutes a "drain
electrode" giving the term its broadest reasonable interpretation. Because this
electrode is an ITO film according to col. 9, line 9, the drain electrode therefore is
a metal thin film.
Although Murade teaches suppressing leakage current by preventing light
from impinging on the various elements of the TFT as noted in col. 7, lines 54-60,
we see no reason why light would also not impinge on the metallic drain
electrode. In this regard, we note that Fig. 2 of Murade shows (1) the light-
shielding member 6 directly overlapping the drain electrode, and (2) the light-
shielding member 6 extending well beyond the drain electrode. Although Murade
does not expressly discuss preventing light from impinging directly on the
metallic drain electrode, the feature is nevertheless inherent to the structure
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shown in Fig. 2. If a feature is inherent in the prior art, it is irrelevant that the
prior art did not recognize such a feature or even if the feature was unknown.
Toro Co. v. Deere & Co., 355 F.3d 1313, 1321, 69 USPQ2d 1584, 1590 (Fed.
Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a
prior-art embodiment…is enough for inherent anticipation, even if that fact was
unknown at the time of the prior invention."). See also Atlas Powder Co. v. Ireco,
Inc., 190 F.3d 1342, 1348-49, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (noting
that it is irrelevant that the prior art does not recognize a key aspect of an
invention if such an aspect is nevertheless inherent in the prior art).
Regarding the charging device, we agree with the examiner that the data
line 3, scan line 2, and associated insulation together reasonably constitutes a
storage capacitor as claimed [see answer, pages 5 and 6]. In addition, the
capacitor's upper electrode (i.e., data line 3) is an aluminum film [Murade, col. 7,
lines 28 and 29]. We see no reason why the light-shielding member 6 would not
block incident light from impinging on the capacitor's upper electrode as
claimed.1 In particular, Fig. 2 of Murade shows (1) the light-shielding member 6
directly overlapping the upper electrode 3, and (2) the light-shielding member 6
extending well beyond the upper electrode in the vicinity of the capacitor.
Although Murade may not have discussed or even recognized the advantages of
blocking incident light on the capacitor's upper electrode, such a recognition is

1 Although insulative layer 15 is disposed between the light-shielding member 6 and the
capacitor's upper electrode 3, the insulative layer 15 is a silicon oxide film (BPSG) which is a
transparent material [see Murade, col. 12, lines 39-41]. Because such a transparent material
would not block incident light, the presence of this intervening transparent layer does not affect
the ability of light-shielding member 6 to block incident light on the capacitor's upper electrode.
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irrelevant when the feature is nevertheless inherent to the prior art structure as
noted previously. See Toro, 355 F.3d at 1321, 69 USPQ2d at 1590.
Although appellant argues that Murade suggests dispensing with the light-
shielding member for metal capacitor electrodes [brief, page 11], we note this
suggestion pertains to embodiments other than the first embodiment discussed
above. In particular, the passages noted by appellants pertain to the second and
fourth embodiments -- not to the first embodiment relied upon by the examiner
and discussed above [see Murade, col. 14, line 63 - col. 15, line 5; col. 16, line
33 - col. 17, line 38].
Even though we find Murade anticipatory for the reasons noted above,
obviousness rejections can nevertheless be based on references that happen to
anticipate the claimed subject matter. In re Meyer, 599 F.2d 1026, 1031, 202
USPQ 175, 179 (CCPA 1979). Furthermore, in affirming a multiple-reference
rejection under 35 U.S.C. § 103, the Board may rely on less than the total
number of references relied on by the examiner. In re Bush, 296 F.2d 491, 496,
131 USPQ 263, 266- 67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150
USPQ 441, 444 n.2 (CCPA 1966). In short, the teachings of the admitted prior
art relied upon by the examiner in establishing a prima facie case of obviousness
are merely cumulative to the teachings of Murade. And, as we noted previously,
Murade expressly and implicitly teaches all claimed limitations. Accordingly, we
will sustain the examiner's obviousness rejection of independent claims 1, 5, 9,
11, 15, and 19 solely on the disclosure of Murade. Since appellants have not
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separately argued the patentability of dependent claims 2, 3, 6, 7, 12, 13, 16, and
17, these claims fall with the independent claims. See In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). See also 37 CFR
§ 41.37(c)(vii).
We now consider the rejection of claim 21 under 35 U.S.C. § 103(a) based
on the admitted prior art in view of Murade and further in view of Yanagawa. We
find that the examiner has established at least a prima facie case of obviousness
of this claim that appellants have not persuasively rebutted. Here, the examiner
has (1) pointed out the teachings of the admitted prior art and Murade, (2)
pointed out the perceived differences between these references and the claimed
invention, and (3) reasonably indicated how and why these references would
have been modified to arrive at the claimed invention [answer, page 7]. Once the
examiner has satisfied the burden of presenting a prima facie case of
obviousness, the burden then shifts to appellants to present evidence or
arguments that persuasively rebut the examiner's prima facie case. Appellants
did not persuasively rebut the examiner's prima facie case of obviousness.
Although we find that the teachings of the admitted prior art are merely
cumulative to the teachings of Murade for the reasons noted previously, the
examiner has nevertheless established a prima facie case of obviousness based
solely on the teachings of Murade and Yanagawa. We will therefore sustain the
examiner's obviousness rejection of claim 21 based on Murade and Yanagawa.
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In summary, we have sustained the examiner's rejection with respect to all
claims on appeal. Therefore, the decision of the examiner rejecting claims 1-3,
5-7, 9, 11-13, 15-17, 19, and 21 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MASHID D. SAADAT )
Administrative Patent Judge )

JS/jaj/rwk
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