Ex Parte Van Gorkom

Board of Patent Appeals and Interferences

Jul 27, 2007

10628942 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GERARDUS G.P. VAN GORKOM
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Appeal 2007-1351
Application 10/628,942
Technology Center 2600
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Decided: July 27, 2007
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-5 and 8-22, the only claims pending in
this application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
Appeal 2007-1351
Application 10/628,942

INTRODUCTION
The claims are directed to a display device that comprises a light
guide and a movable element. A force is exerted for optical contact between
the movable element and the light guide, with light emanating from the
display at the locations where optical contact takes place. Appellant’s
invention relates to different measures that may be taken to reduce the force
necessary for moving the movable element. (See Abstract.) Claims 1 and
19 are illustrative:
1. A display device comprising:
a light guide;
a movable element; and
selection means to locally bring the movable element into contact with
the light guide;
wherein the movable element is situated in an evacuated space below
0.1 atmosphere.

19. A display device comprising:
a light guide;
a movable element; and
selection means to locally bring the movable element into contact with
the light guide,
wherein at least one of the movable element and the light guide is
provided with an anti-adhesion layer on the side at which the contact is made
between the movable element and the light guide.

The Examiner relies on the following prior art references to show
unpatentability:
Adachi US 5,631,664 May 20, 1997
Stern US 5,771,321 Jun. 23, 1998

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Application 10/628,942

The rejections as presented by the Examiner are as follows:
1. Claims 19 and 21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Stern.1
2. Claims 1, 3, 5, 10, 11, 13-15, and 22 are rejected under 35 U.S.C
§ 103(a) as unpatentable over Stern.
3. Claims 2, 4, 8, 9, 12, 16-18, and 20 are rejected under 35 U.S.C
§ 103(a) as unpatentable over Stern and Adachi.

OPINION
In response to the § 102 rejection of claim 19, Appellant contests the
Examiner’s finding that Stern discloses an “anti-adhesion layer” within the
meaning of the claim. First, the Examiner finds that Stern describes an anti-
adhesion layer as claimed at column 13, lines 32 through 52 of the reference.
Stern describes a layer of excess charge 66 (Fig. 5) embedded in the upper
surface of the light storage plate. The charge layer can be produced by, inter
alia, ion-implantation of a light storage plate material such as a transparent
form of “Teflon.” Second, the Examiner finds that, in the alternative, stand-
off elements 46, 54 (col. 10, ll. 46-60; Fig. 4B) meet the requirements of the
claimed anti-adhesion layer. (Answer 3.)

1 The instant application was filed in the USPTO on July 29, 2003.
According to Appellant, this application is a divisional of application
09/355,592, filed November 15, 1999, now U.S. Patent 6,628,246.
Appellant also claims priority (under 35 U.S.C. § 119) to European Patent
Office (EPO) application 97203741.0, filed November 29, 1997, and to EPO
application 98202065.3, filed June 22, 1998. The Stern patent issued from
an application filed in the USPTO on January 4, 1996. Appellant does not
contest the Examiner’s applying Stern as a reference under 35 U.S.C.
§ 102(b).
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Application 10/628,942

Appellant submits in response that Stern teaches that the purpose of
the layer of excess charge 66 is to produce a constant electrostatic downward
force on tap beam 28, via tap beam electrode 47. In Appellant’s view, a
layer designed to hold the flexible member (tap beam 28) in contact with the
light guide (12) cannot be said to correspond to an “anti-adhesion layer” as
claimed. (Reply Br. 4.)
We observe that Appellant’s anti-adhesion layer may be embodied as
a “Teflon layer . . . .” (Specification 3: 11-12.)2 We find, consistent with
the Examiner’s position, that the plate material described by Stern may be
considered an “anti-adhesion” layer, notwithstanding the fact that the layer
contains charges tending to hold down tap beam 28 in a “normally on”
geometry (see Stern Fig. 5, depicting the “off” state). The simplest, thus
best, explanation for Stern’s teaching of a material for the layer is for
avoiding physical adhesion between any contacting surfaces when the tap
beam is flexed upward to the “off” state, such that in essence only the
constant static force determined by the implanted charges need be overcome.
Moreover, even if there were no physical contact between surfaces, we do
not see how a material formed from the same material as that taught by
Appellant cannot be considered an “anti-adhesion” layer, in view of the
breadth of claim 19. The claim does not require any more of the layer than
that it be provided on at least one of the movable element and the light

2 Both Stern and the instant application reflect improper use of a
trademarked term. “Teflon” is a word mark owned by E.I. du Pont de
Nemours and Company, used in commerce with a number of different
goods. The term when used in a generic sense most often refers to a
fluoropolymer having non-stick properties (e.g., polytetrafluoroethylene).
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Application 10/628,942

guide, and on the side at which the contact is made between the movable
element and the light guide.
Appellant suggests (Reply Br. 5) that the term must be interpreted in
view of the Specification, which we infer to mean that the Specification sets
forth a definition for “anti-adhesion” that distinguishes over the reference.
Appellant does not, however, point out where the definition may lie.
Appellant also suggests (id.) that one skilled in the art would not consider
the structure described by Stern as an anti-adhesion layer, but does not
provide or refer to any evidence in support of the allegation.
With respect to the Examiner’s alternative finding that stand-off
elements 46 or 54 meet the requirements of the claimed anti-adhesion layer,
Appellant in the Reply Brief does not explain, or even allege, that stand-off
elements 46 cannot be considered an anti-adhesion layer. The rejection
could be sustained on that basis alone. With respect to stand-off elements
54, Appellant submits that “discrete” elements 54 do not constitute a “layer”
as conventionally interpreted, and as the term is used in the Specification.
(Br. 5.) Appellant does not, however, submit what the “conventional”
meaning of layer may be, nor point to any support in the Specification for
the position. Stern does not refer to stand-off elements 54 as a “layer,”
while describing other structures as “layers,” consistent with Appellant’s
position. The Examiner notes, however, that Stern discloses (col. 10, ll. 46-
53) that stand-offs may be formed from a substrate, the stand-offs thus being
consistent with a “layer” of substrate as conventionally interpreted. (Answer
8.)
We find that the evidence provides ample support for the Examiner’s
findings, and are not persuaded of error in the rejection of independent claim
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19. We sustain the rejection of claim 19. We do not sustain the rejection of
claim 21 because, as Appellant notes (Br. 6), claim 21 depends from claim
20, which is rejected under 35 U.S.C. § 103(a) over Stern and Adachi.
We turn next to the rejection of claims 1, 3, 5, 10, 11, 13-15, and 22
under 35 U.S.C § 103(a) as unpatentable over Stern. With regard to claim 1,
Appellant argues that Stern fails to teach or suggest a movable element that
is situated in an evacuated space below 0.1 atmosphere.
The Examiner notes, however, that Stern teaches that the movable
member is in an evacuated space. In particular, Stern describes a
manufacture in which the ambient gas in the space between the light storage
plate and the viewing substrate is partially evacuated and a selected gas is
“optionally” introduced. The substrate and plate may be held together by an
O-ring sealed with caulk, and by the differential air pressure with respect to
the partially evacuated chamber. (Stern col. 43, ll. 17-39).
Stern thus teaches that the movable element (28) may be situated in an
evacuated space. The reference does not express a lower bound with respect
to the degree of evacuation. We consider Stern’s teaching sufficient to shift
the burden to Appellant to provide evidence of nonobviousness of the
claimed range of “below 0.1 atmosphere.” That Stern might teach
evacuation for a different purpose is not controlling. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co.
v. Teleflex, Inc., 127 S. Ct. 1727, 1741-42, 82 USPQ2d 1385, 1397 (2007).
Because Appellant has not shown that the evidence fails to establish a
prima facie case of obviousness of the subject matter as a whole of claim 1,
we sustain the rejection of claim 1. Claims 3, 5, 10, 11, and 13-15, which
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Application 10/628,942

are not separately argued, fall with claim 1. See 37 C.F.R. § 41.37(c)(1)
(vii). We do not sustain the rejection of claim 22 because, as Appellant
notes, the claim depends from claim 20, rejected over the combination of
Stern and Adachi.
In the rejection of claims 2, 4, 8, 9, 12, 16-18, and 20 under 35 U.S.C
§ 103(a) as unpatentable over Stern and Adachi, the Examiner finds that
Stern does not disclose a transparent electrode or that light is transmitted
through a transparent electrode. The rejection turns to Adachi, which
discloses at column 3 a transparent electrode and guiding visible light to the
outside of an image display apparatus through the transparent electrode.
(Answer 5-6.)
We are in substantial agreement with Appellant’s arguments in the
briefs in response to the rejection over Stern and Adachi. The embodiments
described by Stern appear limited to using electrodes that are laterally offset
with respect to light transmitting from the display apparatus; e.g., Figure 4A,
electrodes 44, 47. The Examiner has not identified any plausible reason
from the prior art as to why the artisan would have used transparent
electrodes in any of the structures described by Stern. We thus do not
sustain the rejection of claims 2, 4, 8, 9, 12, 16-18, and 20.

CONCLUSION
In summary, the rejection of claims 19 and 21 under 35 U.S.C.
§ 102(b) as being anticipated by Stern is affirmed with respect to claim 19
but reversed with respect to claim 21. The rejection of claims 1, 3, 5, 10, 11,
13-15, and 22 under 35 U.S.C § 103(a) as unpatentable over Stern is
affirmed with respect to claims 1, 3, 5, 10, 11, and 13-15 but reversed with
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respect to claim 22. The rejection of claims 2, 4, 8, 9, 12, 16-18, and 20
under 35 U.S.C § 103(a) as unpatentable over Stern and Adachi is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

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Application 10/628,942

AFFIRMED-IN-PART

eld

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