Masami Hayashi et al.

Patent Trials and Appeals Board

Feb 5, 2020

13791655 - (D) (P.T.A.B. Feb. 5, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/791,655 03/08/2013 Masami HAYASHI 005700-ME0029 5671
78198 7590 02/05/2020
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
EXAMINER
FROST, ANTHONY J
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
02/05/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAMI HAYASHI, KENICHI MIYAMOTO,
NOBUAKI ISHIGA, KENSUKE NAGAYAMA, and NAOKI TSUMURA
____________

Appeal 2019-000031
Application 13/791,655
Technology Center 1700
____________
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–8 and 19 of Application 13/791,655.
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
13/791,655 (“the ’655 App.”) filed Mar. 8, 2013; the Final Office Action
dated Jan. 5, 2018 (“Final Act.”); the Appeal Brief filed May 9, 2018
(“Appeal Br.”); the Examiner’s Answer dated Aug. 9, 2018 (“Ans.”); and
the Reply Brief filed Sept. 25, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Mitsubishi Electric Corporation as the
real party in interest. Appeal Br. 3.
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Application 13/791,655
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STATEMENT OF THE CASE
The ’655 Application describes a display device, particularly a display
device suitable for use outdoors, and its manufacture. Spec. 1, ll. 5–7. For
use outdoors, preferable display characteristics are required when an amount
of incident light from outside of the display device is large—such as where
the device is used under sunlight. Spec. 1, ll. 9–11. According to the
Specification, aluminum alloy is used increasingly in wiring of such display
devices because it is low in resistance and easily processed. Spec. 1, ll. 11–
14. The Specification indicates, however, that aluminum is high in
reflectivity, causing reflection of incident light on aluminum alloy wiring
which is a problem in an environment with a large amount of incident light.
Spec. 1, ll. 15–17. An aluminum nitride film may serve as a reflection-
preventing film on the aluminum alloy wiring. Spec. 1, ll. 19–20. Applicant
describes the problem of the aluminum nitride film being etched in an alkali
treatment during processing, thereby decreasing the film thickness and
increasing the reflectivity. Spec. 2, ll. 2–6. Applicant describes a display
device and a method for its production wherein the reflection preventing
film is not damaged, providing superior visibility of the displayed image.
Claim 1, representative of the ’655 Application’s claims, is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A display device comprising
a display region including:
a laminated wiring comprising a conductive film, a metal
nitride film mainly containing Al and functioning as a reflection
preventing film, and a transparent film functioning as a protection
film which are sequentially laminated in this order on a base layer;
and
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an insulating film formed so as to cover said laminated wiring,
wherein
said insulating film side is a display surface side.
Appeal Br. 14.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Ishihara et al.
(“Ishihara”)
US 2003/0146693 A1 Aug. 7, 2003
Hiramatsu et al.
(“Hiramatsu”)
US 2008/0121903 A1 May 29, 2008
Inoue et al.
(“Inoue”)
US 2010/0053759 A1 Mar. 4, 2010
Reinfried et al.
(“Reinfried”)
US 2011/0199341 A1 Aug. 18, 2011
Lee et al. (“Lee”) US 2011/0279403 A1 Nov. 17, 2011
REJECTIONS
On appeal, the Examiner maintains the following rejections of the
claims under 35 U.S.C. § 103(a)3:
1. Claims 1, 2, and 5–8 are unpatentable over the combination of
Reinfried, Lee, and Inoue. Final Act. 3–6.
2. Claims 3, 4, and 19 are unpatentable over the combination of
Reinfried, Lee, Inoue, Ishihara, and Hiramatsu. Final Act. 6–7.

3 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
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DISCUSSION
Rejection 1: Obviousness of claims 1, 2, and 5–8 over Reinfried, Lee,
and Inoue
Appellant argues independent claims 1 and 2 separately. See Appeal
Br. 5, 10. We address independent claim 1 first.
Claim 1
Appellant argues claims 1 and 5–8 as a group. Appeal Br. 5. We
identify claim 1 as representative of the group. Claims 5–8 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
With respect to claim 1, the Examiner finds that Reinfried teaches a
display device comprising a display region, a laminated wiring comprising a
conductive film, and a transparent film laminated on a base layer. Final Act.
3. The Examiner finds that Reinfried also teaches inclusion of insulating
films formed to cover laminated wiring. Id. The Examiner acknowledges
that Reinfried fails to teach inclusion of a low reflection layer. Id. The
Examiner finds that Lee teaches inclusion of at least one low reflection layer
in order to reduce the visibility of underlying conductors in touchscreens.
Id. According to the Examiner, it would have been obvious to one of
ordinary skill in the art at the time of the invention to have included a low
reflection layer (as taught by Lee) over the conductors of Reinfried in order
to reduce visibility of the conductors on the display side of the display
device, but under the protection layer in order to maintain protection of
underlying layers from moisture, corrosion, contaminants, etc. Id. at 3–4.
The Examiner finds that Reinfried as modified by Lee fails to teach a
low reflection layer that is a metal nitride layer. Id. at 4. The Examiner
finds that Inoue teaches use of an aluminum nitride film for a low or
antireflection layer. Id. The Examiner concludes that it would have been
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obvious to substitute Inoue’s aluminum nitride antireflection film for the
antireflection film in Reinfried as modified by Lee because Inoue’s film
provides low reflection characteristics, low electrical resistance
characteristics, and enables reduction of costs and environmental loads. Id.
The Examiner finds that claim 1’s requirement that a conductive film,
a metal nitride film, and a transparent film “are sequentially laminated in this
order on a base layer” is a product-by-process limitation, and notes that the
patentability of a product—such as the claimed display device—is based on
the product, not the process. Id.
Appellant argues, inter alia, that the Examiner fails to establish a
prima facie case of obviousness. Appeal Br. 8–10. According to Appellant,
the Examiner does not explain why one of ordinary skill in the art at the time
of the invention would have inserted Lee’s low-reflective layer between
Reinfried’s contacting structure (MoxTay)/metallic layer (Al/Al alloy) and
protective layer, or why such skilled artisan would then further modify Lee’s
low-reflective layer that does not contain aluminum with Inoue’s disclosure
of an anti-reflection coating composed predominantly of aluminum (as
required by claim 1). Id. at 7–8.
Appellant persuades us of reversible error in the rejection.
“[R]ejections on obviousness cannot be sustained with mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The reasoning for modifying Reinfried’s configuration to insert Lee’s
low reflection layer, and then replacing Lee’s layer with Inoue’s anti-
reflection layer appears to be proposed out of hindsight. See Metalcraft of
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Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e
cannot allow hindsight bias to be the thread that stitches together prior art
patches into something that is the claimed invention.”). “Although the
suggestion to combine references may flow from the nature of the problem,
‘[d]efining the problem in terms of its solution reveals improper hindsight in
the selection of the prior art relevant to obviousness.’” Ecolochem, Inc. v.
Southern Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000).
Here, the Examiner determines that it would have been obvious to
include an anti-reflection layer in Reinfried because (1) Lee teaches
inclusion of a low reflection layer to reduce visibility of the underlying
conductors, and (2) Inoue teaches use of an aluminum nitride film for a low
or anti-reflection layer in order to provide low reflection characteristics and
low electrical resistance characteristics. Ans. 11. The Examiner’s selection
of prior art references is exactly what Ecolochem counsels against—defining
the problem in terms of the solution disclosed by claim 1. See Ecolochem,
227 F.3d at 1372. The Examiner’s finding that one of ordinary skill in the
art would have been motivated to insert Lee’s low reflection layer having no
aluminum into Reinfried’s configuration and then substitute Lee’s low
reflection layer with Inoue’s aluminum nitride anti-reflection film does not
meet the requirement for “articulated reasoning with some rational
underpinning” to combine the prior art in the manner the Examiner
proposes. See Kahn, 441 F.3d at 988. In such a case, we infer
impermissible hindsight. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir.
1998) (hindsight inferred when the specific understanding or principal
within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellant’s claimed
invention has not been explained); In re Warner, 379 F.2d 1011, 1017
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(CCPA 1967) (“A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art.”).
The only apparent reason to combine Inoue with Reinfried and Lee is
to produce the claimed invention. But it is improper to base a conclusion of
obviousness upon facts gleaned only through hindsight. “The invention
must be viewed not after the blueprint has been drawn by the inventor, but as
it would have been perceived in the state of the art that existed at the time
the invention was made.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566,
1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1138 (Fed. Cir. 1985)). “To draw on hindsight knowledge of the
patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.
W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983).
The Examiner provides no articulated reasoning for why the skilled artisan,
having inserted Lee’s low reflection layer into Reinfried’s configuration,
would then go further and replace Lee’s low reflection layer with Inoue’s
anti-reflection film. The Examiner thus strays into impermissible hindsight
reconstruction of the invention.
For the above reasons, we do not sustain the rejection of claim 1—or
dependent claims 3–8 and 19—as obvious over Reinfried in view of Lee and
Inoue.
Claim 2
Independent claim 2 recites all of claim 1’s limitations except “a
display device including.” Appeal Br. 14–15. Like claim 1, claim 2 is
rejected over Reinfried, Lee, and Inoue. Final Act. 4–5. We do not sustain
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the rejection of claim 2 over Reinfried in view of Lee and Inoue for the same
reasons given above with respect to claim 1.
Rejection 2: Obviousness of claims 3, 4, and 19 over Reinfried, Lee,
Inoue, and Ishihara, as evidenced by Hiramatsu
Appellant contends that claims 3, 4, and 19, dependent on claim 1, are
patentable for the same reasons as claim 1. Appeal Br. 12.
The additional references relied on by the Examiner in rejecting
claims 3, 4, and 19 do not cure the deficiencies in the combination of
Reinfried, Lee, and Inoue discussed above. Therefore, we do not sustain the
rejection of claims 3, 4, and 19 under 35 U.S.C. § 103 over the cited
references.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 19 103(a) Reinfried, Lee, Inoue 1–8, 19
REVERSED