Ex Parte Tannas

Patent Trial and Appeal Board

Sep 21, 2016

13679979 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/679,979 11/16/2012 Lawrence E. Tannas JR.
23410 7590 09/22/2016
Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
IRVINE, CA 92618
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TNS-017 3893
EXAMINER
DAHIMENE, MAHMOUD
ART UNIT PAPER NUMBER
1713
MAILDATE DELIVERY MODE
09/22/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LA WREN CE E. TANN AS JR.
Appeal2016-006751
Application 13/679,979
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-10, 32-37, 42--46, 52 and 53.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Independent claims 1, 32, and 42 are illustrative of the subject matter
on appeal (emphasis added):
1. A method for resizing an electronic display, the
display comprising a front plate, a back plate, a perimeter seal
spacing the front and back plates apart, and image-generating
medium contained in an area between the front and back plates
1 The real party in interest is stated to be the inventor, Lawrence E. Tannas,
Jr. (App. Br. 2).
Appeal2016-006751
Application 13/679,979
and within the borders of the perimeter seal, the method
compnsmg:
identifying a cut line along each of the front and back
plates to identify a target portion and an excess portion of the
display;
causing the display to separate along the cut lines to
separate the target and excess portions of the display, thereby
creating an exposed edge along the target portion
communicating with the area between the plates of the target
portion;
pressing the plates of the target portion towards one
another to space the plates apart by a predetermined cell gap;
applying adhesive along the exposed edge; and
removing electrical shorts from electrodes at the exposed
edge causing a partial image failure of the target portion.
32. A method for preventing a short circuit in a resized
flat panel display, comprising:
obtaining a target portion of a resized flat panel display
having a resizing seal applied to a cut edge of the display; and
applying a chemical etchant to a cut edge of the resized
flat panel display, in a manner sufficient to increase the
separation distance between circuit electrodes in proximity of
the cut edge.
42. A method for ruggedizing a seal of a resized flat
panel display, comprising:
obtaining a target portion of a resized flat panel display
having a resizing seal applied to a cut edge of the display; and
rubbing the resizing seal with a chemical etchant
sufficient to remove exposed electrodes.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
(a) claims 1-10 as unpatentable over Tannas, Jr. (US 2009/0004944
Al, published Jan. 1, 2009)("Tannas");
2
Appeal2016-006751
Application 13/679,979
(b) claims 32-37, 42--46, 52, and 53 as unpatentable over Tannas in
view of Oke (JP 2007-322610, pub. Dec. 13, 2007; as translated).
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims 1-7is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejection essentially for the reasons set out by the
Examiner in the Answer. On the other hand, we agree with Appellant that
the preponderance of the evidence does not support the Examiner's rejection
of claims 8-10, 32-37, 42--46, 52, and 53.
We add the following primarily for emphasis.
The 103 Rejection of claims 1-10 over Tannas
Appellant's principal argument regarding claim 1 in the Appeal Brief
is that Tannas does not disclose removing electrical shorts, and that the goal
of Tannas is the opposite of removing shorts since he focuses on replacing or
closing circuits that were damaged, and not to open a short circuit (App. Br.
8-11 ). In the Reply Brief, Appellant reiterates these arguments, and
presents additional new arguments2 regarding U.S. Patent No. 6,204,906
which is discussed in Tannas (Reply Br. 2-5; Tannas i-f 73).
2 Any new arguments and new facts relied upon in the Reply Brief which
were not raised or relied upon in the Appeal Brief will not be considered by
the Board unless good cause is shown. 37 C.F.R. § 41.37(c)(l)(iv) ("Except
as provided for in § § 41.41, 41. 4 7 and 41. 5 2, any arguments or authorities
not included in the appeal brief will be refused consideration by the Board
for purposes of the present appeal.")
3
Appeal2016-006751
Application 13/679,979
Appellant's arguments do not fully address the rejection and the
inferences of these references presented on this record for our review.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Appellant does not dispute the Examiner's determination that
[i]n the art of circuit making, there are essentially only two
~ of damages an electrical circuit can incur, an "open
circuit" i.e. a damage that opens a circuit, thereby electricity
does not flow, or a "short circuit" i.e. a damage that shortens
the circuit by bridging electricity in a new path that was not
originally designed.
(Ans. 4).
Tannas states as follows:
If any of the electronics, e.g., internal or external to
the customized display 10', are cut, damaged, and/or
removed, electrical continuity may need to be reestablished.
Optionally, new circuits may be needed to replace those cut,
damaged, and/ or removed, or to enhance the functionality of
the customized display 10'. Methods for repairing or replacing
such circuits are described in U.S. Pat. No. 6,204,906,
incorporated by reference above. Optionally, other cuts may
be performed and/or sections of a COTS display may be
removed, e.g., using the exemplary methods described in U.S.
Pat. No. 6,204,906.
4
Appeal2016-006751
Application 13/679,979
(Tannas if 73)
A person of ordinary skill in the art would have reasonably inferred
that repairing damaged circuits as Tannas teaches would have also
encompassed removing a short circuit as recited in claim 1. Tannas clearly
suggests if a circuit is damaged, new circuits may be needed to replace those
damaged, so it would have also been an obvious inference to remove any
electrical shorts caused by the resizing process, otherwise the shorted circuit
would not perform as designed, as desired by Tannas. Furthermore, as the
Examiner aptly points out, Tannas explicitly teaches that any cut edges may
be mechanically treated "e.g., using a mill, router, sandpaper, and the like"
(Tannas if 76; Ans. 5). Since Appellant's Specification describes that the
electrical shorts may be removed by such a mechanical step (e.g. Spec.
6:10-15), it is also reasonable to assume that Tannas's mechanical step
inherently removed any electrical shorts at the trimmed edges.
Thus, removing any electrical shorts would have been obvious, if not
at least implicit, from the teachings of Tannas as detailed by the Examiner
(Ans. 4, 5, 9, 10). See also KSR Int 'l 550 U.S. at 421 ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton.");
Dependent claim 8 states:
The method of claim 1, wherein removing electrical shorts
comprises:
applying a mechanical force to a short circuit on the exposed edge in a
manner sufficient to open the short circuit; and
applying an additional force to the opened short circuit, the additional
force being selected from the group consisting of an electrical force, a
chemical force, and a thermal force.
We agree with Appellant that the Examiner has not provided
sufficient evidence or technical reasoning to support the rejection of claim 8
5
Appeal2016-006751
Application 13/679,979
(App. Br. 13; Reply Br. 6, 7). The Examiner relies upon "a mentally sub-
divided step of the mill or router steps" of Tannas to encompass both a
mechanical and an electrical force because the mill or router would be
electrically driven (Ans. 5, 6). Appellant's Specification describes at least
one mutually exclusive example of each distinct type of force, including an
electrical force (Spec. 6, 1. 13 to Spec. 8, 1. 8; see also Spec. 22-24). One of
ordinary skill in the art would have understood the language of claim 8 to
require two different types of forces on the short circuit on the exposed edge,
not one force mentally subdivided into two steps. The Examiner has taken
an unreasonably broad interpretation of the claim language and of the
additional force to be applied.
Accordingly, we reverse the§ 103 rejection of claim 8 and those
dependent thereon (claims 9 and 10) based on Tannas.
The 103 Rejection based on Tannas in view of Oke
Turing to the remainder of the claims, claims 32 and 42 require "a
resizing seal" on the cut edge of the display and the use of a chemical
etchant to remove the electrical short(s) (claim 32) or "to remove exposed
electrodes" (claim 42). The Examiner relies on Oke to teach that in LCD
manufacturing, "the step of applying a chemical etchant to a photoresist
masked metal circuit film pattern is conventionally used" to prevent short
circuits, and thus concludes that
[ o ]ne of ordinary skill in the art would have been motivated to
modify the method of Tannas, JR. (US 2009/0004944) by using
chemical etching for removing potential short circuit after
sealing because the use of chemical etching combined with
masking is much more precise than mechanical means and is
more appropriate for removing very small amounts of
6
Appeal2016-006751
Application 13/679,979
conductive materials to prevent short circuits as suggested by
[Oke] Japanese Patent Publication (JP 2007322610 A).
(Ans. 7)
Appellant argues that the Examiner's proposed combination of Oke
with Tannas is de facto based on impermissible hindsight reconstruction:
A person of ordinary skill would clearly recognize that
such a procedure used [in Oke] to create circuits on a surface of
a glass plate would be wholly incompatible to resizing methods,
such as those disclosed and claimed in the present application.
Further, there is no teaching or suggestion in the Oke reference
how such a procedure of applying films, resists, and etching
them would be compatible with a resized display having a
resizing seal applied to a cut edge of the display, as recited in
claim 32. The cut edge and seal on a resized display are only a
few millimeters wide in contrast to the large surface of the
plates involved in the Oke procedure.
More particularly, there is no basis for concluding that
the Oke procedure for making electrodes and signal lines could
be used on adhesives or other seals applied on the cut edge of a
resized display. In contrast, the procedure disclose in the Oke
reference \'l/ould be used to make circuits on a glass substrate
during original manufacturing of a display, i.e., before the
substrate has any seals applied or before the substrate is ever
attached to another substrate to create a display.
(App. Br. 15, 16; see also Reply Br. 7-10).
While claim 46 does not expressly require the use of a chemical
etchant, the Examiner relies upon Oke for the rejection of claims 46, 52, and
53 (e.g. Ans. 9; App. Br. 13, 14). The Examiner relies upon Oke for the
obviousness of removing the adhesive before removing a short circuit after
an adhesive has been applied to the edges as required in claim 46 ("it would
have been obvious ... to perform the removal of the electrical shorts after
7
Appeal2016-006751
Application 13/679,979
removing substantially all of the exterior adhesive otherwise the sealant acts
as a mask and the metallic shorts will not be etched is [sic; as] covered with
the adhesive") (Ans. 9).
A preponderance of the evidence supports Appellant's position that
the Examiner has not adequately explained why one of ordinary skill in the
art would have combined Oke with Tannas, and applied an adhesive or a
seal and then removed such, to remove an electrical short. It appears that the
proposed modification of Tannas to remove its seal/adhesive, is based on
improper hindsight reconstruction. The fact finder must be aware "of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning." KSR Int'! Co. v. Teleflex Inc., 550 U.S. at 421
(citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
"temptation to read into the prior art the teachings of the invention in
issue")).
Accordingly, we reverse the Examiner's rejection of claims 32-37,
42--46, 52, and 53 based on the combined teachings of Tannas and Oke.
DECISION
The Examiner's§ 103 rejection of claims 1-7 based on Tannas is
affirmed.
The Examiner's§ 103 rejection of claims 8-10 based on Tannas is
reversed.
The Examiner's § 103 rejection of claims 32-37, 42--46, 52, and 53
based on Tannas in view of Oke is reversed.
8
Appeal2016-006751
Application 13/679,979
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)(l).
AFFIRMED-IN-PART
9