Ex Parte McCormick et alDownload PDFPatent Trial and Appeal BoardSep 12, 201612540394 (P.T.A.B. Sep. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/540,394 08/13/2009 32692 7590 09/14/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Fred B. McCormick 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 65585US002 1218 EXAMINER RUDE, TIMOTHY L ART UNIT PAPER NUMBER 2871 NOTIFICATION DATE DELIVERY MODE 09/14/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRED B. McCORMICK, SERGEY A. LAMANSKY, LESLIE A. KREILICH, and MANOJ NIRMAL Appeal2015-000228 Application 12/540,394 Technology Center 2800 Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and BRIAND. RANGE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C. § 134(a) from a final decision of the Primary Examiner to reject claims 1-10 and 21.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 The Appellants state that the real parties in interest are "3M Company ... and its affiliate 3M Innovative Properties Company" (Appeal Brief filed December 12, 2013, hereinafter "Br.," 2). 2 Br. 2; Final Office Action delivered electronically on June 3, 2013, hereinafter "Final Act.," 3-9. On page 1 of the Final Office Action ("Disposition of Claims"), the Examiner indicated that claims 15, 18, 22, and 23 were finally rejected. These claims, however, were withdrawn from consideration pursuant to a restriction requirement (Final Act. 2). Appeal2015-000228 Application 12/540,394 We reverse. BACKGROUND The subject matter on appeal relates to a display device including-in order of arrangement-a first substrate, a first electrode, a light-emitting display material, a second electrode, and a second substrate (Specification, hereinafter "Spec.," 10, 11. 19-27; Fig. 8). Claim 1, the only independent claim on appeal, is reproduced below from page 7 of the Appeal Brief (Claims Appendix), with key limitations indicated in italics, as follows: 1. A display device, comprising layers arranged in the following order: a first substrate; a first electrode; a display material, wherein the display material comprises an OLED material; a second electrode; and a second substrate, wherein at least one of the first and second electrodes comprises: a first transparent or semitransparent conductive layer; a second transparent or semitransparent conductive layer; and a transparent or semitransparent intervening layer located between the first and second conductive layers, wherein the intervening layer comprises a dielectric, wherein the intervening layer includes electrically conductive transparent or semitransparent pathways extending through the intervening layer between and in contact with the first and second conductive layers, wherein the first and second conductive layers each comprise a sheet of material and the first conductive layer is substantially coextensive with the second conductive layer. 2 Appeal2015-000228 Application 12/540,394 THE REJECTION Claims 1-10 and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bright3 in view of Song et al. (hereinafter "Song")4 (Examiner's Answer delivered electronically on July 18, 2014, hereinafter "Ans.," 2-12; Final Act. 3-9). DISCUSSION The Examiner found (Final Act. 3-5) that Bright describes a display device as specified in claim 1 except: Bright does not expressly disclose [that] the intervening layer (bottom layer 24, Fig. 9) includes electrically conductive pathways extending through the intervening layer between and in contact with the first and second conductive layers (lower layer 22 and middle layer 22, Fig. 9).[5J (Final Act. 5). In an attempt to resolve this difference, the Examiner relied on Song. Specifically, the Examiner found that "Song teaches ... the use of transparent and/or semitransparent [0034] multilayered electrodes for use in flexible displays that have conductive pathways, 30, [0029] [0083] to allow stacking of layers ... to form flexible multilayer electrodes with better transparency" (id.). Based on these findings, the Examiner concluded that "it would have been obvious to one having ordinary skill in the art ... to modify [Bright's] invention with electrically conductive pathways, of the same material as the electrodes, extending through the intervening layer 3 US 2003/0124392 Al, published July 3, 2003. 4 US 2007/0181878 Al, published August 9, 2007. [ 5J The Examiner states that Bright does not "expressly disclose" (emphasis added) the identified claim limitations, leaving open the possibility that Bright may inherently disclose these limitations. The Examiner, however, has not discussed inherent disclosure and, therefore, we do not address it. 3 Appeal2015-000228 Application 12/540,394 between and in contact with the first and second conductive layers to form a better, more transparent, multilayer electrode for use in flexible displays .... " (id. at 6). The Appellants contend that Bright would have taught away from including Song's nano-metal layer within protective polymer layer 24 (as shown in Bright's Figure 9) because Bright's layer 24 is described as enhancing barrier properties by reducing the number of holes and defects in the films upon which or under which they are deposited (Br. 4). The Appellants point out that, by contrast, such defects in the claimed invention would be desirable in that they could result in the electrically conductive pathways specified in claim 1 (id.). The Appellants also argue that Song's teachings are directed to improving the electrical conductivity of an electroconductive polymer layer 40 (as shown in Figure 1 }-not a layer such as an intervening protective polymer layer 24 as disclosed in Bright-and, therefore, if Bright and Song were to be combined, a person of ordinary skill in the art would have included Song's nano-metal layer into Bright's electroconductive layers (i.e., layers 22 shown in Figure 9) rather than intervening protective polymer layers 24 (Br. 4). We agree with the Appellants that the Examiner failed to articulate a sufficient reason with some rational underpinning to support the conclusion that a person having ordinary skill in the art would have combined the references in the manner claimed by the Appellants. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Song teaches that a nano-metal layer 30 positioned between grid electrode 20 and an electroconductive polymer layer 40 can improve the 4 Appeal2015-000228 Application 12/540,394 electroconductivity of a transparent electrode by capturing charges (ii 34; Fig. 1). Thus, as pointed out by the Appellants (Br. 4), "[t]he nanometal layer 30 of Song is not used to form electrical connections between conductive layers" as in the Appellants' claimed invention. Also, as pointed out by the Appellants, Bright's intervening protective polymer layer 24, which the Examiner found to comprise dielectric material (Final Act. 4), is described as "enhanc[ing] barrier properties by reducing the number of holes and defects in the films upon which or under which, they are deposited" (Bright i-f 67). But nothing in the relied-upon evidence indicates that Bright's layer 24 itself may be electroconductive or that a need exists to make it electroconductive. Therefore, we find the Examiner's factual basis for supporting the articulated reason for combining the references to be insufficient. In response to the Appellants' teaching away argument (i.e., that providing Song's nano-metal in Bright's intervening protective polymer layer 24 would be inconsistent with Bright's disclosed purpose for layer 24), the Examiner stated that "[t]he disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior to arrive at the claimed invention" (Ans. 10) (internal citation omitted). The problem, however, is that the Examiner failed-in the first instance-to direct us to evidence or reasoning demonstrating that a person having ordinary skill in the art would have understood Bright's less desirable alternatives to include enhancing layer 24's electroconductivity. At most, a person having ordinary skill in the art may have modified Bright's electroconductive layers 22 to include Song's nano-metal materials to enhance electroconductivity, but, as argued by the Appellants, such a modification would not result in the 5 Appeal2015-000228 Application 12/540,394 invention recited in claim 1, which requires the intervening layers to include electroconductive pathways that extend therethrough. For these reasons, and those set forth in the Appeal Brief, we cannot uphold the Examiner's rejection. SUMMARY The Examiner's final decision to reject claims 1-10 and 21 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation