Ex parte Watkins

Board of Patent Appeals and Interferences

Sep 27, 2000

08535685 (B.P.A.I. Sep. 27, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES M. WATKINS
____________
Appeal No. 1998-2260
Application No. 08/535,685
____________
ON BRIEF
____________
Before KRASS, BARRETT and LALL, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1 to 5 and 14 to 28.
Claims 6 to 13 have been canceled.
The invention relates to a method of aligning substrates
in a flat panel display. The display is a field emission
display (FED) that has a faceplate anode and a cathode with a
large number of electron emitting microtips. The invention
uses a light beam to align openings in the substrates, rather
Appeal No. 1998-2260
Application No. 08/535,685
In the brief and the answer, the patent number was1
mistakenly listed as 5,337,151. However, from the context of
the discussions of the text of the patent in the briefs and
the answer, and in the letter acknowledging the reply brief
(paper no. 16), it is clear that Harvey patent was the basis
of the final rejection and the Appellant’s arguments. We so
consider it here.
2
than using alignment marks. The invention is further
illustrated by
claim 1 below.
1. A process for aligning a plurality of substrates in a
flat panel display, the process comprising:
providing an optical path through each substrate of the
flat panel display, wherein alignment of the optical paths
corresponds to a desired alignment of the substrates;
detecting the light exiting the optical path of a second
substrate; and

positioning the substrates of the flat panel display
relative to each other such that the amount of detected light
is optimized.
The Examiner relies on the following reference:
Harvey et al. (Harvey) 4,904,087 Feb. 27, 19901
Claims 1 to 5 and 14 to 28 stand rejected under 35
U.S.C.
§ 103 over Harvey.
Appeal No. 1998-2260
Application No. 08/535,685
A reply brief was filed as paper no. 15 which was2
allowed entry by paper no. 16, without any response on merits
from the Examiner.
3
Rather than repeat the positions and the arguments of
Appellant or the Examiner, we make reference to the briefs2
and the answer for their respective positions.
Appeal No. 1998-2260
Application No. 08/535,685
4
OPINION
We have considered the rejections advanced by the
Examiner. We have, likewise, reviewed Appellant’s arguments
against the rejection as set forth in the briefs.
It is our view, after consideration of the record before
us, that the rejection under 35 U.S.C. § 103 is sustained with
respect to claims 1 to 5 and 14 to 17, but not with respect to
claims 18 to 28. Accordingly, we affirm-in-part.
Rejection under 35 U.S.C. § 103
In our analysis, we are guided by the general proposition
that in an appeal involving a rejection under 35 U.S.C. § 103,
an examiner is under a burden to make out a prima facie case
of obviousness. If that burden is met, the burden of going
forward then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In
re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
Appeal No. 1998-2260
Application No. 08/535,685
5
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). We are further guided by the
precedent of our reviewing court that the limitations from the
disclosure are not to be imported into the claims. In re
Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957); In re
Queener, 796 F.2d 461, 230 USPQ 438 (Fed. Cir. 1986). We also
note that the arguments not made separately for any individual
claim or claims are considered waived. See 37 CFR § 1. 192
(a) and (c). In re Baxter Travenol Labs., 952 F.2d 388, 391,
21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It is not the function
of this court to examine the claims in greater detail than
argued by an appellant, looking for nonobvious distinctions
over the prior art.”); In re Wiechert, 370 F.2d 927, 936, 152
USPQ 247, 254 (CCPA 1967) (“This court has uniformly followed
the sound rule that an issue raised below which is not argued
in this court, even if it has been properly brought here by
reason of appeal, is regarded as abandoned and will not be
considered. It is our function as a court to decide disputed
issues, not to create them.”).
Analysis
Appeal No. 1998-2260
Application No. 08/535,685
6
At the outset, we note the grouping at page 2 of the
brief as follows: group one as made of claims 1 to 3, 17 to
19, and 26 to 28 and, group two of claims 4 to 5, 14 to 16,
and 20 to 25. However, wherever applicable in our analysis,
the merits of the claims will override this grouping. We
start in the order of the above grouping.
Claims 1 to 3, 17 to 19, and 26 to 28
Even though Appellant treats these claims as one group
and does not argue them individually except for claim 18 which
is briefly discussed separately in the brief at page 3, and
further in the reply brief at page 2, we discuss the two
independent claims of this group, 1 and 18, separately because
they contain different limitations. We take claim 1 first.
We agree with the Examiner’s position [answer, pages 3 to 5]
that Harvey shows an apparatus and method of aligning two flat
substrates 11 and 12 using an optical beam, and that it would
have been obvious at the time of invention for an artisan to
adopt this technique to the aligning of the flat panels of a
display. Appellant argues that the claimed invention is an
application of the technique to a different physical
Appeal No. 1998-2260
Application No. 08/535,685
7
application, but we find no criticality in transferring the
use of the alignment technique of Harvey to a flat panel
display, and Appellant has not shown any such criticality or
unobviousness. Therefore, we sustain the obviousness
rejection of claim 1 and its dependent grouped claims 2, 3 and
17.
With respect to claim 18, we agree with Appellant [reply
brief, page 2] that Harvey does not show or suggest the method
of forming a flat display panel which comprises the steps of
“forming an optical path through a first substrate . . ., the
first substrate being part of one of an anode and a cathode of
the display,” “forming . . . a second substrate . . ., the
second substrate being part of the other of the anode and the
cathode of the display,” and “sealing together the first and
second substrates . . . .” The Examiner has not provided any
evidence to support obviousness of these steps, and we find
none. Therefore, we do not sustain the obviousness rejection
of claim 18 and its dependent and grouped claims 19 and 26 to
28.
Claims 4 to 5, 14 to 16, and 20 to 25
Appeal No. 1998-2260
Application No. 08/535,685
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we take claim 4 as the representative of this group.
Appellant argues [brief, page 3] that “there is no teaching of
forming a metallic film over substrates . . . and then etching
back an opening for alignment purposes. Harvey only shows the
use of transparent slits and zone plates on the surfaces.”
However, we find that Harvey teaches that “[t]he transparent
slits (openings) . . . can conveniently be made by
photolithographic masking and etching simultaneously . . . on
photomasks . . .” (col. 3, lines 60 to 64.) Therefore, we
sustain the obviousness rejection of claim 4 and its grouped
claims 5, and 14 to 16. As for claims 20 to 25 of this group,
even though they are grouped with claim 4 and are not argued
separately, they depend on independent claim 18, which we have
found above to be unobvious. For that reason, we do not
sustain the obviousness rejection of claims 20 to 25.
In summary, we have affirmed the Examiner’s decision
rejecting claims 1 to 5 and 14 to 17 and reversed the decision
rejecting claims 18 to 28.
Appeal No. 1998-2260
Application No. 08/535,685
9
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
jg
Appeal No. 1998-2260
Application No. 08/535,685
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WAYNE M. KENNARD
HALE AND DORR
60 STATE STREET
BOSTON, MA 02109