Ex Parte Ota et al

Board of Patent Appeals and Interferences

Mar 31, 2011

10931805 (B.P.A.I. Mar. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/931,805 09/01/2004 Hidenobu Ota 9319S-000851 9152
27572 7590 03/31/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
MCDONALD, RODNEY GLENN
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
03/31/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIDENOBU OTA, YUKIHIRO ENDO,
and OSAMU IWAMOTO
____________

Appeal 2009-006919
Application 10/931,805
Technology Center 1700
____________

Before CHUNG K. PAK, CHARES F. WARREN, and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3 and 5-8. We have jurisdiction
pursuant to 35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006919
Application 10/931,805

2

Appellants’ claimed invention is directed to a method of forming an
inorganic alignment film. Appellants’ method provides an alignment film of
inorganic material on a base substrate using a milling step of irradiating ion
beams onto the base surface substrate on which the alignment film is to be
formed (Spec. para. 0011). The method is said to be useful for providing o
film having excellent light resistance with a suitably inclined surface (tilt
angle) that is useful for regulating alignment properties of liquid crystal
molecules of a liquid crystal panel used in electronic apparatus (Spec. paras.
0012 - 0043). Appellants apply an acceleration voltage of about 800 to 1400
Volts to the ion beams during the milling step irradiation (App. Br. 4-52).
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A method of forming an inorganic alignment
film made substantially of an inorganic material on a base substrate,
comprising:
a milling step of irradiating ion beams onto a surface of the base
substrate, on which the inorganic alignment film is to be formed, from a
direction inclined at a predetermined angle өb with respect to a direction
vertical to the surface; and
a film-forming step of forming the inorganic alignment film on the base
substrate onto which the ion beams are irradiated,

2 Our references to the Appeal Brief (App. Br.) are to the Brief filed July 11,
2008 and our references to the Reply Brief (Reply Br.) are to the Reply Brief
filed December 01, 2008. The Appeal Brief includes the page number 16 for
all of the pages, except the first page. We apply our own numbers in
referencing the Appeal Brief pages beginning with page 1 for the first page
and continuing in numeric order.
Appeal 2009-006919
Application 10/931,805

3
wherein in the milling step, an acceleration voltage of the ion beams
during the irradiation of the ion beams is about 800 to about 1400 V.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Little 4,152,529 May 9, 1979
Krueger 4,456,515 Jun. 26 1984
Shigeta 5,268,781 Dec. 1, 1993
Burke 5,658,439 Aug. 19, 1997
Callegari 6,061,114 May 8, 2000

The following rejections are maintained by the Examiner:3

3 The last three obviousness rejections pertaining to certain dependent claims
appear in the Final Office Action (FOA) and have not been withdrawn by
the Examiner (FOA 6-8; Ans.3-4). The Examiner contends that these latter
rejections are grounds of rejection not to be reviewed on appeal. We
disagree. A reading of the Appeal Brief and the Reply Brief, taken as a
whole, reveals that Appellants are contesting all of the rejections pertaining
to appealed dependent claims 5-8, albeit on the basis of features found in
claim 1 that carry forward to these appealed dependent claims and
arguments made with respect to the three rejections pertaining to
independent claim 1 (App. Br. 1, 3, 5, 10, and 11; Reply Br. 2-4, and 7).
This is made apparent by the fact that the only rejections maintained by the
Examiner pertaining to dependent claims 7 and 8 are among the rejections
that the Examiner contends are not subject to review on appeal. Yet, the
rejections that pertain to these claims are contested by Appellants (App. Br.
10-11). In these dependent claim rejections, the Examiner applies additional
reference(s) for the added features of the dependent claims; but, the
Examiner otherwise relies on the same references employed in the separate
rejections that pertain to independent claim 1 for asserting non-patentability
of the claim 1 limitations imported into the dependent claims by their
dependency status. Thus, Appellants’ argument against the Examiner’s
obviousness rejections of the dependent claims, including claims 7 and 8, on
the basis of the features argued for claim 1, puts the dependent claim
rejections in contention on appeal (App. Br. 10-11).
Appeal 2009-006919
Application 10/931,805

4
Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Little. Claims 1-3, 5, and 6 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Shigeta in view of Little. Claims 1-3
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Krueger
in view of Little. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Krueger in view of Little and Shigeta. Claim 8
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Shigeta
in view of Little, or Little, or Krueger in view of Little, each further in view
of Callegari. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shigeta in view of Little, or Little, or Krueger in view of
Little, each further in view of Callegari and Burkle.
We reverse the stated rejections for substantially the reasons set forth
in the Appeal Brief and Reply Brief.
The Examiner contends, as set forth initially in the anticipation
rejection of claims 1-3, and as further relied on in all of the obviousness
rejections, that the teaching of Little that “the voltage of the ion beam can be
1-3 kiloelectron volt” translates into a description of an ion beam voltage
(1,000 – 3,000 Volts) that anticipates, or renders obvious under 35 U.S.C. §
103(a), the claimed “about 800 to about 1,400 V” milling step acceleration
voltage limitation (Ans. 5-9; Little, col. 3, ll. 45-47).
Concerning this same claim feature of independent claim 1, the
Examiner further contends, with respect to the obviousness rejections
employing Shigeta as evidence of obviousness, that the claimed acceleration
voltage lower limit of “about 800” volts reads on the 500 volt ion beam
disclosure found in Example 3 of Shigeta (Ans. 6, 8, 9; Shigeta, col. 4, l. 7).
Appellants contend otherwise (App. Br. 8-11; Reply Br. 4-7).
Appeal 2009-006919
Application 10/931,805

5
Consequently the dispositive issues in this appeal are:
Has the Examiner established that Little describes a milling step of
irradiating ion beams onto a base substrate surface, wherein “an acceleration
voltage of the ion beams during the irradiation of the ion beams during the
irradiation of the ion beams is about 800 to about 1400 V”, as recited in
appealed claim 1.
If not, with respect to the obviousness rejections that rely, in part, on
Shigeta as evidence of obviousness, has the Examiner established that 500
volts is “about 800 volts” when claim 1 is given its broadest reasonable
construction as it would be understood by one of ordinary skill in the art?
We answer both questions in the negative.

PRINCIPLES OF LAW
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The factual determination of anticipation requires the disclosure in a
single reference of every element of the claimed invention, either explicitly
or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Establishing a prima facie case of obviousness of an invention
requires “an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

Appeal 2009-006919
Application 10/931,805

6
FINDINGS OF FACT
Appellants describe applying “[a]n acceleration voltage of ions” “to
the leading out electrode M12” to accelerate the ions “such that ion beams
are irradiated toward the base substrate 100” (Spec. para. 0099; Fig. 4).
Little discloses a method and apparatus for inducing parallel
alignment of liquid crystal material, wherein a beam of neutralized ions of a
specified energy level are used to provide small streaks or grooves on an
electrode surface (col. 1, ll. 43-52). Little discloses that “[t]he specific
material of the ion beam may be any gas which will provide a scrubbing
action. Such a gas is argon at an energy of 1-3 kilo-electron-volts” (col. 3,
ll. 45-47).
Little further discloses (col. 2, ll. 24-35; Figs. 1 and 2):
The present invention includes a duoplasmatron ion
source 12 having a gas inlet 14 of any suitable gas, preferably
an inert gas, such as of argon, an electrode outlet 16 for
directing ions formed from the gas toward a target, and a
neutralizer 18, such as for maintaining the target electronically
neutral, thereby for preventing the buildup of positive charges
on the target. Because of the existence of electrons from
neutralizer 18, the average charge density or space charge of the
ion beam is also kept neutral.

Shigeta discloses a method of producing a homeotropic-alignment
liquid crystal display device wherein an ionized gas (oxygen) was used to
irradiate a substrate surface having a silicon dioxide coating deposited
thereon at an ion beam power of 500 V., 40 mA for two minutes prior to
coating with a homeotropic alignment film. (col. 5, l. 63 – col. 6, l. 42).

Appeal 2009-006919
Application 10/931,805

7
DISCUSSION
Concerning the anticipation rejection of claims 1-3 over Little, the
Examiner asserts that the disclosed 1-3 kilo-electron volt energy level of the
argon ion beam of Little conveys a description of the claimed “about 800 to
about 1400 V” acceleration voltage of the ion beams used in Appellants’
milling step. However, other than the simple conversion of kilo to one
thousand, the Examiner has not carried the burden to establish that the argon
beam energy level referred to by Little would be recognized by one of
ordinary skill in the art as providing a description of Appellants’ method of
using an acceleration voltage of about 800 to about 1400 volts (argued
applied potential difference) for the ion beams used in the milling step of
appealed claim 1. In this regard, it appears that the Examiner considers the
energy level of the argon ion beam reported by Little, in kilo-electron volts,
to be a measure, in kilo-volts, of an acceleration voltage applied by Little to
achieve this argon ion beam energy level. However, the Examiner has not
furnished any evidence to substantiate this assertion. Nor has the Examiner
explained how the mass of the argon atoms/ions of the argon beam are taken
into account in performing the Examiner’s proposed conversion of the
disclosed ion beam energy levels of Little into an acceleration force or
voltage applied, corresponding to that required by the method of claim 1.
Looked at another way, while one electron volt may be a measure or
indicator of the energy added to an electron by being drawn through a
potential difference of one volt, the Examiner has not informed the appeal
record of such with any evidence relied upon in the stated rejections, much
less explained how the [total] energy of the neutralized argon beam
Appeal 2009-006919
Application 10/931,805

8
employed by Little readily converts to a description of the claimed
acceleration voltage.
On this record, we are constrained to reverse the Examiner’s
anticipation rejection, as well as the obviousness rejection of claims 1-3 over
Krueger in view of Little, which likewise is founded on the Examiner’s
unsubstantiated assertion that Little provides a description of the claimed
acceleration voltage.
Concerning the Examiner’s obviousness rejection of claims 1-3, 5,
and 6 over Shigeta in view of Little, the Examiner additionally argues that
the claimed acceleration voltage of about 800 to about 1400 volts reads on
the disclosed 500 Volt disclosure of Shigeta (Ans. 6 and 8). However, as
correctly argued by Appellants, the Examiner misconstrues the claim term
“about 800” in asserting that 500 volts is about 800 volts (App. Br. 9; Reply
Br. 6). The Examiner has not proffered a persuasive rationale to explain
why it may have been obvious to one of ordinary skill in the art to increase
the applied voltage of Shigeta for the irradiation of the silicon dioxide film
of Shigeta to an acceleration voltage within the claimed range.
On this record, we reverse the Examiner’s obviousness rejection over
Shigeta in view of Little.
Regarding the remaining obviousness rejections of several of the
dependent claims, these rejections rely on the same reasoning and teachings
of Shigeta and/or Little for allegedly teaching the acceleration voltage
limitation imported into these claims by virtue of their dependency on claim
1. The additional applied references are not relied on by the Examiner for
teaching or suggesting this claim feature. It follows that we shall likewise
reverse the remaining obviousness rejections.
Appeal 2009-006919
Application 10/931,805

9

CONCLUSION/ORDER
The Examiner’s decision to reject claims 1-3 under 35 U.S.C. §
102(b) as being anticipated by Little; to reject claims 1-3, 5, and 6 under 35
U.S.C. § 103(a) as being unpatentable over Shigeta in view of Little; to
reject claims 1-3 under 35 U.S.C. § 103(a) as being unpatentable over
Krueger in view of Little; to reject claims 5 and 6 under 35 U.S.C. § 103(a)
as being unpatentable over Krueger in view of Little and Shigeta; to reject
claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Shigeta in view
of Little, or Little, or Krueger in view of Little, each further in view of
Callegari; and to reject claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Shigeta in view of Little, or Little, or Krueger in view of
Little, each further in view of Callegari and Burkle is reversed.

REVERSED

sld

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS MI 48303