Ex Parte Moon

Patent Trial and Appeal Board

Sep 29, 2014

10319563 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte HONG MAN MOON
____________

Appeal 2012-010400
Application 10/319,563
Technology Center
____________

Before, ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1–3, 5–7, 9–11, and 13–15. We have jurisdiction under
35 U.S.C. § 6. An oral hearing was held on September 9, 2012.
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below (with text in bold for emphasis):
1. A liquid crystal display device, comprising:
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a first substrate having a liquid crystal display panel region divided by
a pixel area and a dummy area surrounding the pixel area, wherein a
passivation layer and a plurality of thin film transistors and pixel electrodes
are formed in the pixel area of the liquid crystal display panel region;
a second substrate having a black matrix, a color filter and a common
electrode over the black matrix and the color filter;
a sealant located in a peripheral region of the dummy area between the
first and second substrates;
a plurality of column spacers on the common electrode only in the
pixel area except the dummy area of the liquid crystal display panel
region;
a liquid crystal layer between the first and second substrates; and
a first alignment layer on the passivation layer and a second alignment
layer directly on the column spacers on the second substrate, wherein the
pixel electrodes are disposed between the first alignment layer and the
passivation layer and directly formed on the passivation layer,
wherein the column spacers are not in the dummy area to prevent
liquid crystal depletion when dropping liquid crystal to form the liquid
crystal layer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kurauchi et al. US 6,323,921 B1 Nov. 27, 2001
(hereafter “Kurauchi”)
Ikeda et al. US 6,671,025 B1 Dec. 30, 2003
(hereafter “Ikeda”)
Miwa et al. US 6,946,679 B2 Sept. 20, 2005
(hereafter “Miwa”)

THE REJECTION
Claims 1–3, 5–7, 9–11, and 13–15 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Kurauchi in view of Miwa and Ikeda.

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ANALYSIS
As an initial matter, we note that Appellant presents similar arguments
for each of independent product claims 1, 5, and 13, as well as for method
claim 91, and we, therefore, select claim 1 as representative of these
independent claims. Appeal Br. 12–20. Accordingly, we confine our
discussion to appealed claim 1 pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii).
It is the Examiner’s basic position that Kurauchi teaches the elements
of claim 1, except for (1) column spacers not located in the dummy area to
prevent liquid crystal depletion when forming the liquid crystal layer, for
which the Examiner relies upon Miwa (Ans. 5) and (2) a second alignment
layer directly on the column spacer, for which the Examiner relies upon
Ikeda (Ans. 5-6). Appellant’s arguments focus on the teachings of
Kurauchi in view of Miwa, and hence we focus on this combination of
references also.
Appellant argues that the applied art does not suggest the elements of
claim 1, and in particular, the element pertaining to "a plurality of column
spacers on the common electrode only in the pixel area except the dummy
area of the liquid crystal display panel region . . . wherein the column
spacers are not in the dummy area to prevent liquid crystal depletion
when dropping liquid crystal to form the liquid crystal layer." Appeal Br.
13. Appellant argues that the Examiner admits that Kurauchi does not teach

1 On pages 17–18 of the Appeal Brief, Appellant recites the claim
language of claim 9 and argues that “[f]or similar reasons as discussed with
respect to claim 1”, the applied art does not suggest the features of claim 9.
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this aspect of the claimed subject matter, and relies upon Miwa for so doing.
Appeal Br. 13.
Appellant argues that the spacers 15 in Figure 1 of Miwa are micro-
ball type spacers, and not column spacers. See Miwa, col. 11, ll.41–46,
Figure 1. Appeal Br. 13. Appellant explains that column spacers are
different from ball spacers, which are scattered or dispersed, because column
spacers are patterned on the substrate by a photolithography process, and
refers to paragraph [0005] of the instant application in this regard. As such,
Appellant submits that although it appears in Figure 1 of Miwa that the ball
spacers 15 are provided only in the pixel area, those of ordinary skill in the
art would appreciate that the ball spacers 15 necessarily exist outside the
pixel area as well because the ball spacers 15 are provided by a dispersing or
scattering method without any masking process. See Miwa, col. 9, ll. 57–
col. 12, ll. 35. Appeal Br. 13-14.
In reply, the Examiner states that Miwa teaches in the first and second
embodiments that the spacers are dispersed only between the alignment film
124 and the alignment film 126 (Miwa, col. 13, ll. 23-26), and are not
formed in the dummy area, and that one skilled in the art would have found
it obvious to have located the column spacers of Kurauchi over the display
area only, according to Miwa. Ans. 7.
In reply, Appellants argue, inter alia, that with regard to the first and
second embodiments of Miwa, Miwa merely discloses that the ball spacers
15 are dispersed without describing how they are dispersed in a space
between the alignment film 124 and the alignment film 116. Appellants
submit that because the conventional technology of dispersing ball spacers is
a scattering method, one skilled in the art would understand that the ball
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spacers 15 shown in Figure 1 of Miwa would exist outside the pixel area as
well. Reply Br. 4. Appellant further explains that ball spacers may move
around following the flow of liquid crystal into a dummy area during the
process of providing the liquid crystal between the two substrates. Reply Br.
5. Nevertheless, Miwa discloses (as the Examiner’s finds) certain
embodiments having spacers that are dispersed only between the alignment
film 124 and the alignment film 116.2 The manner in which the ball
spacers are moved following the flow of liquid crystal into a dummy area is
not described in Miwa such that it is very respectfully noted that Appellant’s
arguments on this point must be considered mere attorney argument not
supported by evidence. Scarborough, at 566.
Appellant also argues that one of the problems that the instant
application tries to solve is to evenly distribute in the dummy area the liquid
crystal formed by a dispensing method. Appellant refers to paragraph
[0062] of the instant application in this regard. Appeal Br. 14. Appellant
argues that, different from the claimed column spacers that are patterned and
fixed at specific locations, that one of ordinary skill in the art would
appreciate that the ball spacers 15 of Miwa may move around following the
flow of liquid crystal, and may move to a dummy area even if the ball
spacers 15 of Miwa were present only in the pixel area at the time they were

2 At the bottom of page 4 of the Reply Brief, Appellant argues that,
assuming that the ball spacers 15 in Figure 1 of Miwa are only formed
between the two alignment layers 116 and 124, it does not necessarily mean
that the ball spacers are not formed in the dummy area because the size of
the alignment layers would be greater than the pixel area to prevent the
outermost pixels from suffering from an orientation failure of liquid crystal.
However, this proposition is not supported by evidence in the record before
us. See, In re Scarborough, 500 F.2d 560, 566 (CCPA 1974).
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dispersed, regardless of whether the liquid crystal is formed by a dispensing
method or a vacuum injection method. Appellant also argues, in a similar
manner, that a problem that the present application tries to solve is the
resistance against the flow of liquid crystal dropped on the substrate caused
by the column spacers patterned in the dummy area. Appeal Br. 15.
Appellant argues that Miwa is silent as to how the liquid crystal 14 is filled
between the two substrates (vacuum process versus a liquid crystal dropping
method). Id. In this regard, Appellant submits that thus the aspect of the
claim of "the column spacers are not in the dummy area to prevent liquid
crystal depletion when dropping liquid crystal to form the liquid crystal
layer" cannot be inherent in Miwa.
We first note that the mere fact that the prior art does not disclose the
same purpose (i.e., evenly distributing in the dummy area the liquid crystal
formed by a dispensing method/resolving the resistance against the flow of
liquid crystal dropped) for the claimed invention, does not defeat the
Examiner’s rejections. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). “As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
With regard to the inherency issue, we agree with Examiner’s
position as set forth on page 8 of the Answer. We add that the claim
limitation of “when dropping liquid crystal to form the liquid crystal layer”
[emphasis added], is an optional limitation. The Court in In re Johnston 435
F.3d 1381, 1384 (2006) discussed how limitations in the permissive form are
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optional, and do not narrow the claims because the step can be omitted.3
See also MPEP § 2106 II C4. In this context, while we appreciate
Appellant’s position concerning resolving problems associated with a liquid
crystal dropping step, the import of such a step as it pertains to claim scope
is lessened by the optional claim limitation present in the claim.5
We are thus not persuaded by Appellant’s arguments and affirm the
rejection.
CONCLUSIONS OF LAW AND DECISION
The rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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3 As exemplary, optional statements include those limitations “stated in the
permissive form ‘may’” as in Johnston (“said wall may be smooth”) and “do
not narrow the claim because they can always be omitted” (Johnston 435
F.3d at 1384).
4 MPEP § 2106 II C states “[l]anguage that suggests or makes optional but
does not require steps to be performed…does not limit the scope of a claim”
(italics added).
5 Incidentally, method claim 9 recites “forming a liquid crystal layer
between the first and second substrates”, which is not specific as to how the
liquid crystal layer is formed.