Ex parte Oomen et al.

Board of Patent Appeals and Interferences

Oct 27, 2000

08433664 (B.P.A.I. Oct. 27, 2000)

As noted by the Examiner, the appendix to the brief1
included a slight error in claim 8, i.e., “Al” had been
omitted from the claim.
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publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EMMANUEL W.J.L OOMEN and JOSEPH G. VAN LIEROP
____________
Appeal No. 1998-1060
Application No. 08/433,664
____________
ON BRIEF
____________
Before URYNOWICZ, FLEMING, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 5 through 9. An amendment after final rejection (paper
no. 8) canceled claim 9 and replaced it with claim 10. Thus
the claims on appeal are 5 through 8 and 10, all claims1
pending in this application.
Appeal No. 1998-1060
Application No. 08/433,664
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The invention relates to a method of manufacturing a
filtering layer on the faceplate of a display device such as a
cathode ray tube. In particular, the filtering layer contains
silicon dioxide, a metal oxide, and a dye.
The sole independent claim 5 is reproduced as follows:
5. A method of manufacturing a filtering layer of
silicon on a display screen of a display device, characterized
in that the filtering layer is manufactured by providing, on
the display screen, a coating of a mixture of an alcoholic
solution of an alkoxysilane compound, an alkoxy compound of at
least one metal selected from the group consisting of Ge, Zr,
Al and Ti, acidified water and a black dye and then heating
said thus coated display screen to a temperature sufficient to
form silicon dioxide from the alkoxysilane compound and to
form an oxide of said metal from said alkoxy compound thereby
forming the filtering layer comprising silicon dioxide, an
oxide of the metal and the dye.
The Examiner relies on the following references:
Kato et al. (Kato) 4,787,716 Nov. 29, 1988
Kawamura et al. (Kawamura) 5,291,097 Mar. 1, 1994
(filed May 1, 1991)
Kojima et al. (Kojima) EP 517,611 Dec. 9, 1992
Appellants’ Admitted Prior Art(APA)(pg. 1, line 20-pg. 2, line
2)
Claims 5 through 8 and 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over either APA or Kojima in view
of Kawamura and further in view of Kato.
Appeal No. 1998-1060
Application No. 08/433,664
-3-
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the brief, reply brief,
supplemental reply brief, answer, answer to reply brief and
response to supplemental reply brief.
OPINION
After a careful review of the evidence before us, we will
not sustain the rejection of claims 5 through 8 and 10 under
35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the reasonable teachings or suggestions found in
the prior art, or by a reasonable inference to the artisan
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
Appeal No. 1998-1060
Application No. 08/433,664
-4-
1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied,
469 U.S. 851 (1984)).
The Examiner reasons that APA and Kojima teach the
claimed method of manufacturing a cathode ray tube having a
filtering layer with silicon dioxide and a dye but fail to
teach incorporating a metal oxide in the coating composition
of the filter layer. Kawamura teaches a cathode ray tube
having a layer on the face plate comprising of a dye, an
electroconductive metal oxide and silica gel (answer-page 5).
The Examiner states:
Therefore, it would have been obvious for one
skilled in the art at the time the invention was
made to have incorporated a metal oxide as evidenced
by Kawamura et al. (5,291,097) in either Applicant’s
admitted state of the art (specification, pg. 1,
line 20-pg. 2, line 2) or Kojima (EP-517611)
filtering layer because one skilled in the art would
want to obtain the benefits associated with the
metal oxide’s use, i.e. effective in removing the
electricity generated on the panel by static
induction (col. 1, lines 5-10). [Answer-pages 5 and
6.]
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Application No. 08/433,664
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Appellants argue that APA fails to teach the use of an
alkoxy compound of the metal to form the metal oxide (brief-
top of page 5) and Kojima fails to teach forming the silicon
dioxide from alkoxysilane and the metal oxide from an alkoxy
compound of the metal. Further, Kawamura fails to teach
forming the metal oxide by heating an alkoxy derivative of the
metal (brief-top of page 6).
Claim 5 recites that the silicon dioxide is formed from
heating the alkoxysilane compound, and the metal oxide is
formed from heating the alkoxy compound of the metal. We note
that APA does teach forming the silicon dioxide from heating
the alkoxysilane compound (as indicated by the Examiner).
However, Appellants are correct in that APA does not teach
forming the metal oxide from an alkoxy compound of the metal.
Appellants are further correct in that Kojima and Kawamura
also fail to teach forming the metal oxide from an alkoxy
compound of the metal. Even though Kawamura teaches the
desirability of using a metal oxide in the filtering layer of
a cathode ray tube coating, we see no teaching of the claimed
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Application No. 08/433,664
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method of obtaining this element in the coating. The Examiner
states:
Hence, it is the Examiner’s position that one
skilled in the art at the time [of] the invention
would have found the use of an alkoxy compound, i.e.
tetraalkoxy metal, as an obvious variation for the
manufacturing of a metal oxide layer. [Answer-page
7.]

We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference, common knowledge or unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Knapp-Monarch
Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re
Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Furthermore, the Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
Appeal No. 1998-1060
Application No. 08/433,664
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established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087,
37 USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-
13.
Since there is no evidence in the record that the prior
art suggested the claimed method of heating an alkoxy compound
of the metal to obtain the metal oxide, we will not sustain
the Examiner’s rejection of claim 5.
The remaining claims on appeal also contain the above
limitation discussed in regard to claim 5 and thereby, we will
not sustain the rejection as to these claims.
Appeal No. 1998-1060
Application No. 08/433,664
-8-
We have not sustained the rejection of claims 5 through 8
and 10 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
STANLEY M. URYNOWICZ, Jr. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
jg
Appeal No. 1998-1060
Application No. 08/433,664
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CORPORATE PATENT COUNSEL
US PHILIPS CORPORATION
PATENT DEPARTMENT
580 WHITE PLAINS ROAD
TARRYTOWN, NY 10591