Ex Parte Prakash

Board of Patent Appeals and Interferences

Jan 28, 2010

11070070 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHIVA PRAKASH
____________________

Appeal 2008-004009
Application 11/070,070
Technology Center 1700
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Decided: January 28, 2010
____________________

Before: CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-9 and 11-19. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
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Appellant’s invention relates to a process for forming an electronic
device such as an organic light-emitting diode (OLED) (Spec. 1:7-13; and
14:36-38). Claims 1 and 11 are illustrative:
1. A process for forming an electronic device comprising:

forming a first layer over a substrate, wherein the first layer includes
an organic layer; and

depositing a second layer over the substrate after forming the first
layer, wherein depositing the second layer is performed using ion beam
sputtering.

11. A process for forming an electronic device comprising:

placing a workpiece within a depositing chamber of a depositing
apparatus, wherein the workpiece comprises a substrate and an organic layer
overlying the workpiece;

generating a plasma within a plasma-generating chamber of the
depositing apparatus, wherein the plasma is not in direct contact with the
workpiece;

sending an ion beam from the plasma-generating chamber towards a
target within the depositing chamber, wherein the target includes a material;
and

depositing a layer of the material over the organic layer.

The Examiner maintains, and Appellant seeks review, of the
following rejections:
1. The rejection of claims 1-9 under 35 U.S.C. § 102(b) as anticipated by
Grushin (US 2003/0144487 A1, pub. Jul. 31, 2003).
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2. The rejection of claims 11-13 and 15-19 under 35 U.S.C. § 103(a) as
unpatentable over Grushin in view of Hashimoto (US 5,674,368,
granted Oct. 7, 1997).
3. The rejection of claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Grushin in view of Hashimoto, and further in view
of Yasushi (JP 07-113173, pub. May 2, 1995 (as translated)) and
Appellant's Admitted Prior Art.

II. DISCUSSION
A. ANTICIPATION BY GUSHIN
With respect to the rejection of claims 1-9 as anticipated by Grushin,
Appellant argues claims 1, 2, 8, and 9 separately. Therefore, we decide the
issues on appeal as they arise for each of these claims. The other claims
stand or fall with the claims from which they depend.
1. CLAIM 1
The Examiner finds that Grushin describes depositing a second layer
(anode layer 110) over organic layers (layers 120, 130, and 140) by a
physical vapor deposition process including ion beam sputtering (Ans. 2-3).
Appellant contends that the claims are not anticipated by Grushin, and
the Examiner has not established one-to-one correspondence between
elements disclosed in the reference and the claimed subject matter (Br. 4;
Reply Br. 1). In particular, Appellant appears to contend that, based upon
the elements and definitions disclosed in the Specification, Grushin does not
form a first layer over a substrate, wherein the first layer includes an organic
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layer and Grushin does not deposit a second layer as required by claim 1
(Br. 4-5; Reply Br. 1-2).
a. ISSUE
The issue is: Has Appellant established that the Examiner reversibly
erred in finding that Grushin describes a process meeting all the
requirements of claim 1?
b. FINDINGS OF FACT
Appellant’s Specification states:
The term “substrate” is intended to mean a base material
that can be either rigid or flexible and may include one or more
layers of one or more materials, which can include glass,
polymer, metal or ceramic materials or combinations thereof.
The reference point for a substrate is the beginning point of a
process sequence. The substrate may or may not include
electronic components, circuits, or conductive members.
(Spec. 7:10-15.)

Appellant defines the phrase “organic active layer,” but does not
define the phrase “organic layer,” the phrase used in claim 1 (Spec. 6 and
Spec., generally).
Appellant does not define “second layer” (Spec., generally).
Appellant’s Specification includes various embodiments of processes
for forming an electronic device and states that other methods similar or
equivalent to those described can be used without departing from the scope
of the invention (Spec. 8:8-12; Spec., generally). For instance, the
Specification discloses a process involving forming a first electrode layer 32
over a substrate 31 and then forming an organic layer 34 over the first
electrode layer 32 (Spec. 8:37; Spec. 9:29; Fig. 3). The organic layer 34
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includes an organic active layer 38, and optionally, a buffer layer, charge-
injection layer, charge-transport layer, charge-blocking layer or any
combination thereof (Spec. 9:30-37; Fig. 3).
Grushin discloses forming an electronic device including a
hole/injection transport layer 120, photoactive layer 130, and optionally an
electron transport layer 140 between an anode 110 and cathode 150
(Grushin, ¶ [0102] and Fig. 7).
Layers 120, 130, and 140 contain organic molecules (Ans. 7; Grushin,
¶¶ [0009-35], [0038], [0107] and [0127]
Appellant acknowledges that Grushin discloses an organic layer
including “an electron hole/injection transport layer 120, an ‘electroactive
layer’ 130 which is the photoactive layer, and optional layer 140 comprising
an electron transport material.” (Br. 4, ll. 22-23.)
Grushin describes forming the electronic device on a substrate which
can be adjacent the anode or cathode (Grushin, ¶¶ [0036] and [0124]). The
device can be formed by sequentially vapor depositing the individual layers
on the substrate (Grushin ¶ [0131]). When the substrate is adjacent the
cathode, the organic layers (120, 130, and 140) are deposited before the
anode layer 110. The anode layer 110 is usually applied by a physical vapor
deposition process (Grushin, ¶ [0125]). Physical vapor deposition includes
all forms of sputtering including ion beam sputtering (Grushin, ¶ [0125]).
c. PRINCIPLES OF LAW
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
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art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). While we consult the Specification to determine the meaning of the
claim terms, we take care to not limit the claim to the specific embodiments
disclosed in the Specification when the terms appear to have a broader
meaning. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”)
and Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc)
(“[T]he line between construing terms and importing limitations can be
discerned with reasonable certainty and predictability if the court's focus
remains on understanding how a person of ordinary skill in the art would
understand the claim terms. For instance, although the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“The law of anticipation does not require that the reference ‘teach’
what the subject patent teaches. Assuming that a reference is properly ‘prior
art,’ it is only necessary that the claims under attack, as construed by the
court, ‘read on’ something disclosed in the reference, i.e., all limitations of
the claim are found in the reference, or ‘fully met’ by it.” Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).

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d. ANALYSIS
Given that the terms “organic layer” and “second layer” have not been
defined in the Specification, we cannot say that “organic layer” as used in
claim 1 fails to encompass the organic layers 120, 130, and 140 of Grushin
or that “second layer” as used in the claim fails to encompass the anode
layer 110 of Grushin. "It is a bedrock principle of patent law that the claims
of a patent define the invention to which the patentee is entitled the right to
exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (internal quotations omitted). In other words, “the name of the game
is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).
The Examiner has established that Grushin teaches depositing organic
layers (120, 130, and 140) over a cathode layer 150 on a substrate and then
ion-beam sputtering a second layer (anode layer 110) over the organic
layers. Appellant has not established that the findings of the Examiner in
this regard were in error. Given the breath of the claim, we cannot say that
Appellant has established that the Examiner reversibly erred in finding that
Grushin describes a process within the scope of claim 1.
2. CLAIM 2
Claim 2 requires that the organic layer of claim 1 comprise an organic
active layer.
The Examiner finds that Grushin discloses a photoactive layer that is
organic (Ans. 3).
Appellant contends that the Specification provides a specific
definition for “organic active layer” and the photoactive lanthanide metal
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complex of Grushin’s photoactive layer 130 would not be considered an
organic active layer under this definition (Br. 5).
a. ISSUE
The issue: Has Appellant shown the Examiner reversibly erred in
finding that Grushin describes an organic active layer as required by claim
2?
b. FINDINGS OF FACT
As noted by Appellant, the Specification defines “organic active
layer” as “one or more organic layers, wherein at least one of the organic
layers, by itself, or when in contact with a dissimilar material is capable of
forming a rectifying junction.” (Br. 4-5, citing Spec. 6:14-18.)
The Examiner does not make any finding with regard to whether the
photoactive layer 130 of Grushin meets the definition set forth in
Appellant’s Specification, nor does the Examiner respond to Appellant’s
argument (Ans. 3 and 6-8).
c. ANALYSIS
The Examiner has not presented any evidence that the photoactive
layer 130 of Grushin is an “organic active layer” as defined by the
Specification. Therefore, the Examiner has not established that Grushin
includes the “organic active layer” required by claim 2.
Appellant has shown that the Examiner reversibly erred in finding that
Grushin describes an organic active layer as required by claim 2.
3. CLAIM 8
Claim 8 requires that the second layer include an insulating layer.

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The Examiner finds that:
As to claim 8, Grushin cites "In addition, any of the
above-described layers can be made of two or more layers.
Alternatively, some or all of inorganic anode layer 110, the
hole transport layer 120, the photoactive layer 130, and
cathode layer 150, may be surface treated to increase charge
carrier transport efficiency. The choice of materials for each
of the component layers is preferably determined by balancing
the goals of providing a device with high device efficiency",
which reads on appellant's limitation in claim 8 of including an
insulating layer as part of the second layer.
(Ans. 4.)
Appellant disagrees with the Examiner’s finding that this portion of
Grushin, which Appellant attributes to paragraph [0129], discloses the
required insulting layer (Br. 6).
a. ISSUE
The issue is: Has Appellant established that the Examiner reversibly
erred in finding that Grushin describes an insulating layer as required by
claim 8?
b. FINDINGS OF FACT
According to the Specification, “[t]he term ‘insulating’ and its
variants are intended to mean a material, layer, member, or structure having
an electrical property such that it substantially prevents a significant number
of charge carriers from flowing through such material, layer, member or
structure.” (Spec. 6:8-11.)
The portion of Grushin cited by the Examiner does not specifically
describe incorporating an insulating layer (Grushin, ¶ [0129]).

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c. PRINCIPLES OF LAW
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102. In re Schaumann, 572 F.2d
312, 317 (CCPA 1978).
d. ANALYSIS
The portion of Grushin quoted by the Examiner does not specifically
describe incorporating an insulating layer. Nor has the Examiner provided
any reason to believe that any of the layers identified by Grushin is
insulating as required by claim 8.
Appellant has established that the Examiner reversibly erred in
finding that Grushin describes an insulating layer as required by claim 8.
4. CLAIM 9
Claim 9 requires that the organic layer of claim 1 be “at least part of
an electronic component within the electronic device.”
The Examiner finds that Grushin discloses organic layers (120) and
(130) as part of an LED (Ans. 4).
Appellant contends that:
As to claim 9, Grushin discloses in FIG, 7 and the
disclosure that an organic layer and a photoactive layer
comprising lanthanide metal complexes are part of an
LED (which Grushin defines as a light-emitting device,
page 2, paragraph 0045). Claim 9 depends from the
process of claim 1 wherein the organic layer 34 which is
comprised of an organic active layer 38 and optional
layer 36 is at least part of an electronic component
within the electronic device. Therefore, Grushin does
not read on claim 9.
(Br. 6.)
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a. ISSUE
Has Appellant established that the Examiner reversibly erred in
finding that organic layers (120) and (130) are organic layers within an
electronic component of an electronic device as required by claim 9?
b. FINDINGS OF FACT
Appellant does not explain how an LED fails to be an “electronic
component” within “an electronic device” as claimed.
Appellant’s Specification states that “[e]xamples of electronic devices
include Organic Light-Emitting Diodes (‘OLEDs’).” (Spec. 1:12-13.)
c. ANALYSIS
As found by the Examiner, Grushin’s organic layers are part of an
LED and an LED, as evidenced by Appellant’s Specification, is an
electronic device. Therefore, Appellant has not convinced us of a reversible
error in the finding of the Examiner with respect to claim 9.

B. OBVIOUSNESS OVER GRUSHIN AND HASHIMOTO
With regard to the rejection of claims 11-13 and 15-19 as obvious
over the combination of Grushin and Hashimoto, Appellant does not argue
any claim apart from the others. We select claim 11 as representative for
deciding the issues on appeal.
Claim 11 is directed to a process for forming an electronic device and
includes specific steps of ion-beam sputtering a layer of material onto an
organic layer overlying a substrate.
The Examiner applies Grushin for its teaching of ion-beam sputtering
an anode layer onto organic layers overlying a substrate. The Examiner
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acknowledges that Grushin does not disclose the details of the ion-beam
sputtering process used for forming the anode layer. The Examiner finds
that Hashimoto describes the details of an ion-beam sputtering process. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time the invention was made to use Hashimoto’s ion-beam
sputtering process to form Grushin’s anode layer 110 because Hashimoto’s
apparatus and process would allow formation of layer 110 of Grushin (Ans.
4).
Appellant contends that Hashimoto is non-analogous art, there is no
motivation to combine the teachings of Hashimoto with the teachings of
Grushin, and Appellant's advantages are not fairly taught or suggested by the
references (Br. 7).
1. ISSUES
Has Appellant established that the Examiner reversibly erred in
finding that Hashimoto is within the scope of the prior art of which the
ordinary artisan would be presumed to be aware, and concluding that the
process of claim 11 would have been obvious to one of ordinary skill in the
art based upon the teachings of Grushin and Hashimoto?
2. PRINCIPLES OF LAW
To label a reference as analogous art “merely connotes that it is
relevant to a consideration of obviousness under § 103 as ‘prior art.’” In re
Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). A reference is relevant where it
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned. In re Kahn, 441 F.3d
977, 986-87 (Fed. Cir. 2006). “A reference is reasonably pertinent if, even
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though it may be in a different field from that of the inventor’s endeavor, it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.”
In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In other words, “familiar
items may have obvious uses beyond their primary purposes.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007).
“[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR, 550 U.S. at 420.
3. FINDINGS OF FACT
Hashimoto discloses an ion-beam sputtering apparatus (Hashimoto,
col. 1, ll. 7-15; col. 9, ll. 11-15; Fig. 8). Hashimoto’s apparatus includes a
sputtering ion source 414, a target 415 irradiated with the ion beam 416, and
a disk holder 417 that holds a disk (substrate) onto which the film is formed
by ion-beam sputtering (See, e.g., Hashimoto, col. 9, ll. 11-15; Fig. 8).
Hashimoto provides evidence that the ion-beam sputtering process
was conventionally used to deposit a film onto a disk (such as a polymethyl
methacrylate polymer (PMMA) disk to be used as laser disks) (Hashimoto,
col. 1, ll. 16-28; col. 3, ll. 1-2).
Hashimoto’s apparatus is said to solve various problems associated
with ion-beam sputtering films onto substrates (Hashimoto, col. 1, ll. 7-15;
col. 4, l. 59 to col. 5, l. 30).
4. ANALYSIS
Because Hashimoto is directed to solving problems in the process of
ion-beam sputtering films, Hashimoto’s disclosure would have logically
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commended itself to the attention of those attempting to ion-beam sputter to
deposit films onto substrates or workpieces. Moreover, Hashimoto indicates
that ion-beam sputtering was a known process for depositing layers or films
onto substrates including organic-type workpieces. One of ordinary skill in
the art would have had reason to use the process and apparatus of Hashimoto
to solve the problems Hashimoto solves. It appears that using the process
and apparatus of Hashimoto would have been merely the use of a known
technique for its known and predictable results.
We cannot say that Appellant has established that the Examiner
reversibly erred in finding that Hashimoto is within the scope of the prior art
of which the ordinary artisan would be presumed to be aware, and
concluding that the process of claim 11 would have been obvious to one of
ordinary skill in the art based upon the teachings of Grushin and Hashimoto.

C. OBVIOUSNESS OVER GUSHIN, HASHIMOTO, YASUSHI,
AND ADMISSION
With respect to the rejection of claim 14, the Examiner added Yasushi
as evidence that it was well known in the art to place the workpiece so it
does not lie along a line defined by a principal deflected angle as required by
claim 14 (Ans. 6 and 9).
Appellant contends that Yasushi does not disclose any significance for
the angle and, therefore, the pertinence of the reference is not apparent from
the reference itself (Br. 11; Reply Br. 3-4).
1. ISSUE
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Has Appellant established that the Examiner reversibly erred in
finding that Yasushi provides evidence that it was known in the art to place
the workpiece as claimed?
2. FINDINGS OF FACT
There is no dispute that Yasushi illustrates an ion-beam sputtering
device configured as required by claim 14 (Ans. 6 and 9; Br. 11; Reply Br.
3-4).
In the process of Yasushi, a thin film is sputtered onto substrate 7
(Yasushi, Abstract).
3. PRINCIPLE OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
4. ANALYSIS
The Examiner has established that it was known in the art to place the
workpiece so that it does not lie along a line defined by a principal deflected
angle. While Yasushi does not disclose why the workpiece is so placed, this
fact does not defeat the Examiner’s rejection. The use of the known
configuration disclosed by Yasushi would still achieve film or layer
formation in the ion-beam sputtering process and would have been obvious
for this predictable result. Appellant does not rely upon any evidence of
unexpected results.
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Appellant has not established that the Examiner reversibly erred in
finding that Yasushi provides evidence that it was known in the art to place
the workpiece as claimed.

VI. CONCLUSION
On the record before us, we sustain the rejection of claims 1, 4-7, and
9 under 35 U.S.C. § 102(b) as anticipated by Grushin, but we do not sustain
the rejection of claims 2, 3, and 8 on this ground.
We further sustain the rejection of claims 11-13 and 15-19 under
35 U.S.C. § 103(a) as unpatentable over Grushin in view of Hashimoto.
We also sustain the rejection of claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Grushin in view of Hashimoto, and further in view
of Yasushi and Appellant's Admitted Prior Art.

VII. DECISION
The decision of the Examiner is affirmed-in-part.

VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).
AFFIRMED-IN-PART

cam

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