Ex Parte Pires

Board of Patent Appeals and Interferences

Jan 12, 2010

10930555 (B.P.A.I. Jan. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID G. PIRES
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Appeal 2009-007317
Application 10/930,555
Technology Center 1700
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Decided: January 12, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2009-007317
Application 10/930,555

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and 3. Claims 5-
10 stand withdrawn from consideration. Claim 1 is illustrative:
1. A method for providing an electrical connection to the front
electrode of a piece cut from an EL panel, wherein an EL panel is a substrate
including one or more luminous areas, wherein each luminous area is
formed by a dielectric layer and a phosphor layer between a rear electrode
and a front electrode, and wherein at least some of the layers and electrodes
are formed by the steps of depositing a layer of ink and curing the ink, said
method comprising:
covering said piece to define a[sic] area for making electrical contact;
removing the rear electrode from said area by dissolving the rear
electrode with a first solvent;
dissolving the phosphor layer and the dielectric layer from said area
with a second solvent to reveal the front electrode of said piece;
covering said front electrode with a conductive layer in said area to
reinforce said front electrode to receive an electrical connector.

The Examiner relies upon the following references as evidence of
obviousness:
Toyoyasu 6,624,571 B1 Sept. 23, 2003
Zovko 5,830,028 Nov. 3, 1998
Nakamura JP 04-039892 Feb. 10, 1992

Appellant’s claimed invention is directed to a method for providing
an electrical connection to the front electrode of a piece cut from an EL
panel. Some of the layers and electrodes of the panel are formed by curing a
deposited layer of ink.
Appealed claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Toyoyasu in view of Zovko and Nakamura.
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Appeal 2009-007317
Application 10/930,555

We have thoroughly reviewed the respective positions advanced by
Appellant and Examiner. In so doing, we find that the Examiner has not
carried the burden of establishing the obviousness of the claimed subject
matter. Accordingly, we will not sustain the Examiner’s rejection.
The Examiner acknowledges that Toyoyasu fails to teach “the
formation of the at least some layers such as electrode layer, dielectric and
phosphor layer by the steps of depositing a layer of ink and curing the ink”
(Ans. 4, para. 1). The Examiner relies upon Zovko, however, for teaching
the steps of depositing the rear electrode, dielectric and phosphor layers as
an ink that is dried to cure. The Examiner draws the legal conclusion that it
would have been obvious to combine Zovko’s teaching into the process of
Toyoyasu “for producing[an] EL device with low cost and advantageously
with less grainy appearance” (Ans. 4, para. 3).
Appellant makes the argument that Toyoyasu is related to a thin film
EL and, since Zovko relates to a thick film EL, the references are not
combinable. Indeed, Toyoyasu makes reference to thin layers having
nanometer dimensions of thickness. Unfortunately, the Examiner’s Answer
provides no response to this substantive argument presented by Appellant.
Manifestly, this constitutes reversible error. It is fundamental that the
Examiner, in the first instance, must provide a rationale why references are
properly combinable, and must also provide a convincing rebuttal to an
Appellant’s argument that the combination is improper.
Since the Examiner has not established on this record that one of
ordinary skill in the art would have considered the disclosures of Toyoyasu
and Zovko combinable in light of Appellant’s argument to the contrary, we
are constrained to reverse the Examiner’s rejection.
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Appeal 2009-007317
Application 10/930,555

REVERSED

tc

Paul F. Wille
Cantor Colburn, LLP
22nd Floor
20 Church St.
Hartford, CT 06103

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