Ex Parte Moradi

Board of Patent Appeals and Interferences

Oct 22, 2003

09386972 (B.P.A.I. Oct. 22, 2003)

1 The advisory action mailed March 4, 2002 (paper no. 7)
states that for purposes of appeal the amendment after final
rejection mailed February 12, 2002 (paper no. 6) will be entered.
This amendment has not yet been clerically entered.
1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BEHNAM MORADI
__________
Appeal No. 2003-1249
Application 09/386,972
___________
ON BRIEF
___________
Before OWENS, TIMM and DELMENDO, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the examiner’s refusal to allow
claims 2, 4-7, 10, 11, 13, 14, 16, 17, 19, 20, 22, 23 and 25-27
as amended after final rejection, and claims 28-33 which were
added after final rejection.1 These are all of the claims
pending in the application.
Appeal No. 2003-1249
Application 09/386,972

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THE INVENTION
The appellants claim a field emission device and a method
for making it. Claims 4 and 17 are illustrative:
4. A method of manufacturing a field emission device, the
method comprising:
operating the field emission device in a pressure of at most
about 10-8 Torr for at least approximately 15 minutes to remove
at least a portion of materials from within said field emission
device; and
sealing the field emission device;
17. A field emission device formed by a method comprising:
operating the field emission device in a pressure of at most
about 10-8 Torr for at least approximately 15 minutes to remove a
least a portion of outgassed materials through a tube before
pinching off the tube to seal the field emission device.
THE REFERENCES
Itoh et al. (Itoh) 5,564,958 Oct. 15, 1996
Watkins et al. (Watkins) 5,827,102 Oct. 27, 1998
Konuma 6,042,441 Mar. 28, 2000
(filed Apr. 2, 1998)
THE REJECTION
Claims 2, 4-7, 10, 11, 13, 14, 16, 17, 19, 20, 22, 23
and 25-33 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Konuma in view of Itoh and Watkins.
Appeal No. 2003-1249
Application 09/386,972

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OPINION
We reverse the aforementioned rejection and remand the
application to the examiner. In our discussion of the examiner’s
rejection we need to address only the independent claims, i.e.,
method claims 4 and 11 and device claims 17 and 23.
Method claims 4 and 11
Konuma discloses a method for cleaning and exhausting a
cathode ray tube (CRT), at pressures which can reach as low as
10-9 Torr, and then sealing the CRT (col. 3, lines 66-67; col. 4,
lines 6-7; col. 5, lines 20-24 and 44-47; col. 6, line 67 -
col. 7, line 2). Konuma places a getter in the CRT, heats the
getter for 20 seconds to absorb gases in the CRT, heats an
electron lens for 5 seconds, impresses a voltage on the CRT’s
cathode and cathode cone for 0.5-2 minutes to emit electrons
which collide with gases emitted though heating the getter,
thereby forming ions which sputter-clean the cathode cone, and
then seals a tube used to provide the vacuum in the CRT (col. 4,
lines 5-18; col. 5, lines 1-49; col. 5, line 60 - col. 6, line 5;
col. 6, line 24 - col. 7, line 55). This method also can be
applied to a flat panel display (col. 7, lines 56-59).
Appeal No. 2003-1249
Application 09/386,972

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Itoh discloses a method for cleaning, evacuating and sealing
a flat panel display device by 1) repeatedly, several times,
feeding the device with electricity to emit electrons from the
cathode for several minutes while evacuating the device to about
10-7 Torr, introducing reducing gas into the device until the
pressure is 10-2 to 500 Torr, holding this pressure in the device
for a few minutes, and evacuating the device to about 10-7 Torr,
2) evacuating the device for about 6 hours at about 300ºC, and
3) sealing an evacuation tube or sealing lid to form a high
vacuum in the device (col. 6, line 64 - col. 7, line 27).
Watkins discloses a method for evacuating and then sealing a
field emission display device (col. 1, lines 6-8). The device is
evacuated by maintaining it in a chamber at a pressure which can
be 10-8 Torr for a sufficient time, e.g., 1-2 hours, to reach
equilibrium and outgas water and other contaminants through a gap
between the device’s peripheral seal material and back plate, and
is sealed by compressing and optionally heating the seal material
(col. 6, lines 5-31).
The examiner argues that the reason why Konuma removes
harmful gas atoms to the greatest extent feasible and limits the
time of operation during evacuation apparently is to protect the
cathode from damage by ion bombardment during sputter cleaning of
Appeal No. 2003-1249
Application 09/386,972

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the cathode (answer, pages 3-4). The cathode cleaning time, the
examiner argues, obviously varies based upon the nature of the
display device (answer, page 4). The examiner argues, without
providing evidentiary support, that a flat panel display requires
more cleaning time than a CRT because, unlike a CRT, its cathodes
are energized only intermittently (answer, pages 4-5).
As evidence that a flat panel display requires a longer
cleaning time than a CRT the examiner relies upon Itoh and
Watkins (answer, pages 5-6). Although Itoh repeats, several
times, a step of emitting electrons from the cathode for a few or
several minutes, he does this in a procedure in which reducing
gas, instead of Konuma’s getter, is used for cleaning. Watkins
uses an exemplified cleaning time of 1-2 hours, but does not use
Konuma’s getter or electron emission from the cathode. The
examiner has not provided evidence that the cleaning times of
Itoh and Watkins are longer than Konuma’s disclosed CRT cleaning
time due to a difference in the devices cleaned rather than being
due to differences in the cleaning procedures. The examiner has
provided only speculation to that effect, and such speculation is
not a sufficient basis for a prima facie case of obviousness.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301 F.2d
Appeal No. 2003-1249
Application 09/386,972

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686, 690, 133 USPQ 360, 364 (CCPA 1962). “‘Common knowledge and
common sense,’ even if assumed to derive from the agency’s
expertise, do not substitute for authority when the law requires
authority.” In re Lee, 277 F.3d 1338, 1345, 61 USPQ2d 1430, 1435
(Fed. Cir. 2002).
The examiner, therefore, has not established that one of
ordinary skill in the art would have combined the teachings of
Konuma, Itoh and Watkins to arrive at the appellant’s claimed
method. Accordingly, we reverse the rejection of independent
method claims 4 and 11 and the claims which depend therefrom.
Device claims 17 and 23
The examiner argues that the device claims “are unpatentable
since the appellant has shown no difference between the display
devices as manufactured by the process therein and that of Konuma
as modified by the teachings of Itoh and Watkins” (answer,
pages 6-7). This argument is not well taken because, as
discussed above regarding the method claims, the examiner has not
established that one of ordinary skill in the art would have
combined the teachings of Konuma, Itoh and Watkins. We therefore
reverse the rejection of independent device claims 17 and 23 and
the claims which depend therefrom.
Appeal No. 2003-1249
Application 09/386,972

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REMAND
The appellant’s device claims are in product-by-process
form. Thus, the patentability of the claimed invention is
determined based on the product itself, not on the method of
making it. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
966 (Fed. Cir. 1985) (“If the product in a product-by-process
claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior art product was
made by a different process.”). Whether a rejection is under
35 U.S.C. § 102 or § 103, when the appellant’s product and that
of the prior art appear to be identical or substantially
identical, the burden shifts to the appellant to provide evidence
that the prior art product does not necessarily or inherently
possess the relied-upon characteristics of the appellant’s
claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ
594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180
USPQ 324, 326 (CCPA 1974). The reason is that the Patent and
Trademark Office is not able to manufacture and compare products.
See Best, 562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459
F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Appeal No. 2003-1249
Application 09/386,972

2 The examiner also should consider, with respect to the
appellant’s method and device claims, Japanese patent application
laid-open publication no. 299129/1990 discussed by Konuma
(col. 2, lines 31-39).
8
The appellant’s specification (page 9, lines 9-19) indicates
that Itoh’s cleaning pressure of about 10-7 Torr falls within the
appellant’s pressure range of at most about 10-8 Torr. Although
Itoh’s introductions of reducing gas interrupt his few to several
minute periods of cleaning using electron emission from the
cathode, Itoh’s total time of cathode electron emission is the
sum of several repeats of periods of a few to several minutes
each. Thus, Itoh’s total cathode electron emission time
approaches or equals the appellant’s minimum field emission
device operating time of 15 minutes.
We remand the application to the examiner for the examiner
and the appellant to address on the record whether, because
Itoh’s cleaning pressure is within the appellant’s range, Itoh’s
cathode electron emission time approaches or equals that of the
appellant, Itoh provides additional cleaning using several
introductions of reducing gas, and after cleaning the device
Itoh, like the appellant, evacuates the device and seals it by
pinching off a tube, the device produced by Itoh’s method is the
same or substantially the same as that of the appellant.2
Appeal No. 2003-1249
Application 09/386,972

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DECISION
The rejection of claims 2, 4-7, 10, 11, 13, 14, 16, 17, 19,
20, 22, 23 and 25-33 under 35 U.S.C. § 103 over Konuma in view of
Itoh and Watkins is reversed. The application is remanded to the
examiner.
REVERSED and REMANDED
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
TJO/ki
Appeal No. 2003-1249
Application 09/386,972

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