Samsung Display Co., Ltd.

Patent Trials and Appeals Board

Dec 2, 2020

2021000727 (P.T.A.B. Dec. 2, 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.
15/711,277 09/21/2017 Yong-hwan PARK P7076US00 1317
58027 7590 12/02/2020
H.C. PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
EXAMINER
MARINELLI, PATRICK
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YONG-HWAN PARK, MIYOUNG KIM,
and NAYUN KWAK
____________________

Appeal 2021-000727
Application 15/711,2771
Technology Center 2600
____________________

Before ERIC S. FRAHM, SCOTT E. BAIN, and MICHAEL T. CYGAN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–18. Claims 19 and 20 have been canceled (see Appeal
Br. 24, 25 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).

1 In the instant application, Appellant’s Petition Under Rule 41.3 to the
Chief Administrative Patent Judge filed November 13, 2020 (“Fast Track
Appeals Pilot Program”) was granted in the Decision on Petition mailed
November 16, 2020.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). According to
Appellant, Samsung Display Co., Ltd. is the real party in interest (see
Appeal Br. 3).
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We REVERSE.

INVENTION
Appellant’s invention, entitled “DISPLAY MODULE” (Spec., Title),
is directed “to a display panel with a touch sensing unit integrated therein”
(Spec. ¶ 3), for use “in multimedia devices such as televisions, mobile
phones, table computers, navigation devices, and game consoles” that “may
include a keyboard or a mouse as an input unit” and “a touch panel as an
input unit” (Spec. ¶ 5). Sole independent apparatus claim 1 is illustrative of
the invention and is reproduced below.
1. A display module comprising:
a base layer comprising a display area and a non-display
area disposed outside the display area;
a circuit device layer comprising an intermediate
inorganic layer overlapping the display area and the non-
display area, an intermediate organic layer disposed on the
intermediate inorganic layer to expose a portion of the
intermediate inorganic layer within the non-display area in a
plan view, and a circuit device, the circuit device layer being
disposed on the base layer;
a display device layer disposed on the circuit device
layer and comprising display devices disposed on the display
area;
[A] a thin film encapsulation layer disposed on the
display device layer and comprising [A1] a first encapsulation
inorganic layer, [A2] an encapsulation organic layer on the
first encapsulation inorganic layer, and [A3] a second
encapsulation inorganic layer on the encapsulation organic
layer, [B] at least one of the first encapsulation inorganic layer
and the second encapsulation inorganic layer comprising [B1]
a first region overlapping the display area and [B2] a second
region overlapping the non-display area and having a
thickness less than that of the first region and a film density
lower than that of the first region; and
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a touch sensing layer comprising a plurality of touch
electrodes and a inorganic touch layer overlapping the display
area and the non-display area and contacting the portion of the
intermediate inorganic layer exposed by the intermediate
organic layer, the touch sensing layer being disposed on the
thin film encapsulation layer.

(Appeal Br. 21, Claims App. (emphases and bracketed
lettering/numbering added)). Appellant recognizes that claims 2–18
stand or fall with sole independent claim 1 (see Appeal Br. 7).

EXAMINER’S REJECTIONS
(1) The Examiner rejected claims 1, 4, and 5 under 35 U.S.C. § 103 as
being unpatentable over the combination of Oh (US 2018/0006265 A1;
published Jan. 4, 2018) (hereinafter, “Oh ’265”), Shin et al. (US
2018/0090547 A1; published March 29, 2018) (hereinafter, “Shin”), Byun et
al. (US 2018/0061722 A1; published March 1, 2018) (hereinafter, “Byun”),
Oh (US 2018/0061899 A1; published March 1, 2018) (hereinafter, “Oh
’899”), and Oh et al. (US 2018/0061898 A1; published March 1, 2018)
(hereinafter, “Oh ’898”). Final Act. 2–11.
(2) The Examiner rejected claim 2 under 35 U.S.C. § 103 as being
unpatentable over the combination of Oh ’265, Shin, Byun, Oh ’899, Oh
’898, and Kwon et al. (US 2014/0232956 A1; published Aug. 21, 2014)
(hereinafter, “Kwon”). Final Act. 11–12.
(3) The Examiner rejected claim 3 under 35 U.S.C. § 103 as being
unpatentable over the combination of Oh ’265, Shin, Byun, Oh ’899, Oh
’898, and Vronsky et al. (US 8,995,022 B1; issued March 31, 2015)
(hereinafter, “Vronsky”). Final Act. 12–13.
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(4) The Examiner rejected claims 6, 7, and 9–12 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Oh ’265, Shin, Byun,
Oh ’899, Oh ’898, and Kwak (US 2005/0184927 A1; published Aug. 25,
2005). Final Act. 13–17.
(5) The Examiner rejected claim 8 under 35 U.S.C. § 103 as being
unpatentable over the combination of Oh ’265, Shin, Byun, Oh ’899, Oh
’898, Kwak, and Lee et al. (US 2015/0380685 A1; published Dec. 31, 2015)
(hereinafter, “Lee ’685”). Final Act. 18–19.
(6) The Examiner rejected claim 13 under 35 U.S.C. § 103 as being
unpatentable over the combination of Oh ’265, Shin, Byun, Oh ’899, Oh
’898, and Kim et al. (US 2014/0097408 A1; published April 10, 2014)
(hereinafter, “Kim ’408”). Final Act. 11–12.
(7) The Examiner rejected claim 14 under 35 U.S.C. § 103 as being
unpatentable over the combination of Oh ’265, Shin, Byun, Oh ’899, Oh
’898, Ahn (US 2016/0179229 A1; published June 23, 2016), Kim et al. (US
2014/0306941 A1; published Oct. 16, 2014) (hereinafter, “Kim ’941”), and
Lee et al. (US 2009/0109172 A1; published April 30, 2009) (hereinafter,
“Lee ’172”). Final Act. 20–22.
(8) The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103 as
being unpatentable over the combination of Oh ’265, Shin, Byun, Oh ’899,
Oh ’898, and Zhang et al. (US 2016/0293884 A1; published Oct. 6, 2016)
(hereinafter, “Zhang”). Final Act. 23–24.
(9) The Examiner rejected claims 17 and 18 under 35 U.S.C. § 103 as
being unpatentable over the combination of Oh ’265, Shin, Byun, Oh ’899,
Zhang, and Robbie et al. (US 2004/0207315 A1; published Oct. 21, 2004)
(hereinafter, “Robbie”). Final Act. 24–25.
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ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 8–
20; Reply Br. 6–14), the Examiner’s rejection (Final Act. 2–25), and the
Examiner’s response to Appellant’s arguments (Ans. 5–13). Appellant
presents several arguments asserting the Examiner’s rejections of claims 1–
18, each relying upon the combination of Oh ’265, Shin, Byun, Oh ’899, and
Oh ’898 is in error (see Appeal Br. 8–13; Reply Br. 5–7). The dispositive
issue presented by these arguments is whether the Examiner erred in finding
the base combination of Oh ’265, Shin, Byun, Oh ’899, and Oh ’898 teaches
or suggests limitation B2, recited in claim 1. Appellant’s arguments have
persuaded us of error in the Examiner’s rejection of all of the disputed
claims under 35 U.S.C. § 103.
The Examiner finds, and we agree, that “the combination of Oh
[’265], Shin, and Byun doesn’t explicitly teach the second region
overlapping the non-display area and having a thickness less than that of the
first region and a film density lower than that of the first region [as set forth
in limitation B2 of claim 1]” (Final Act. 7). The Examiner then determines
that, because there are only a finite number of predictable solutions (e.g.,
three possible solutions) as to the thickness between the first and second
regions of the inorganic encapsulation layer 142 (i.e., a thickness being
greater, equal, or lesser), the solution set forth in Appellant’s limitation B2
of claim 1 “would have been obvious to one of ordinary skill in the art”
(Final Act. 8; see also Ans. 6 (naming three possible solutions)). The
Examiner then concludes that some relationship must be inherent between
the first and second regions (see Ans. 6), and thus “it is reasonable to
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conclude that the second region is of a lower film density due to it being of a
lower thickness” (Ans. 9). We find the Examiner’s logic here to be
conclusory and unsupported by the evidence of record.
The Federal Circuit has held that “[a] party must . . . meet a high
standard in order to rely on inherency to establish the existence of a claim
limitation in the prior art in an obviousness analysis—the limitation at issue
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.” PAR Pharm., Inc. v. TWi
Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Id. at 1195 (emphasis added, quotation omitted).
Here, while the Examiner correctly finds that there would only be
three possible relationships between layers (i.e., a thickness being greater,
equal, or lesser), the solution set forth in Appellant’s claim 1 (e.g., “a first
region overlapping the display area” and “a second region overlapping
the non-display area” and “having a thickness less than that of the first
region and a film density lower than that of the first region”), only
Appellant has recognized that this relationship is a critical parameter.
Absent further evidence, the fact that two regions, one not overlapping a
display area and one overlapping a display area, each inherently have a
thickness and density does not necessarily mean that those two regions are
related to each with the proportions set forth in claim 1 and found to be
critical by Appellant.
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And, although we agree with the Examiner’s finding that Oh ’898
provides encapsulation of a region “to prevent the introduction of humidity
or oxygen” (Oh ’898 ¶ 29; see also Final Act. 8; Ans. 6–7), such a finding
still does not support a conclusion that it would have been obvious, or
obvious to try, providing a thin film encapsulation layer with a region
overlapping a non-display area with a thickness and film density lower than
a region overlapping the display area as set forth in limitations A and B of
claim 1.
Appellant argues, and we agree, that film thickness is not related to
film density, and thus the Examiner’s finding that lower film density is
inherent in view of a lower film thickness is in error (see Appeal Br. 10–12;
Reply Br. 6–8).
In KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
the Federal Court explained that “obvious to try” may apply when “there are
a finite number of identified, predictable solutions” to a known
problem. The Court explained that when the path has been identified and
“leads to the anticipated success, it is likely the product not of innovation but
of ordinary skill and common sense.” Id. Our reviewing court, the Court of
Appeals for the Federal Circuit, has elaborated that the identified path must
“present a finite (and small in the context of the art) number of options
easily traversed to show obviousness.” Ortho-McNeil Pharm., Inc. v. Mylan
Labs., Inc., 520 F. 3d 1358, 1364 (Fed. Cir. 2008). As illustrated in In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988), it would not be “obvious to
try” when “the prior art gave either no indication of which parameters were
critical or no direction as to which of many possible choices is likely to be
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successful.” And, our reviewing court has previously identified two
categories of impermissible “obvious to try” analyses that run afoul of KSR
and § 103: when what was “obvious to try” was (a) to vary all parameters or
try every available option until one succeeds, where the prior art gave no
indication of critical parameters and no direction as to which of many
possibilities is likely to be successful; or (b) to explore a new technology or
general approach in a seemingly promising field of experimentation, where
the prior art gave only general guidance as to the particular form or method
of achieving the claimed invention. See In re Kubin, 561 F.3d 1351, 1359
(Fed. Cir. 2009) (quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988)).
In the instant case on appeal, the Examiner makes no findings that the
prior art indicates thickness or density of a region overlapping a non-display
area as critical parameters (i.e., a parameter to be adjusted or experimented
with), or that such parameters should be investigated with respect to regions
overlapping a display or non-display area as set forth in limitation B2 of
claim 1. And, the Examiner’s conclusion that “it is reasonable to conclude
that the second region is of a lower film density due to it being of a lower
thickness” (Ans. 9) is conclusory and unsupported by evidence in the record,
especially Oh ’265, Oh ’898, and/or Oh ’899, whether taken individually or
in any combination thereof. We will not resort to speculation or
assumptions to cure the deficiencies in the Examiner’s fact finding. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Based on the foregoing, we find that the Examiner has not properly
established factual determinations and articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness for claim 1,
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resulting in a failure to establish a prima facie of obviousness. Thus,
Appellant has overcome the Examiner’s prima facie case of obviousness
with respect to independent claim 1, and we are persuaded the Examiner
erred in rejecting claim 1. Accordingly, we do not sustain the Examiner’s
rejection of independent claim 1, as well as claims 2–18 depending
therefrom.

CONCLUSION
We reverse the Examiner’s rejection of claims 1–18 under 35 U.S.C.
§ 103.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898
1, 4, 5
2 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898,
Kwon
2
3 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898,
Vronsky
3
6, 7, 9–12 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898,
Kwak
6, 7, 9–12
8 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898,
Kwak, Lee ’865
8
13 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898,
Kim ’408
13

Appeal 2021-000727
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898,
Ahn, Kim ’941, Lee
’172
14
15, 16 103 Oh ’265, Shin, Byun,
Oh ’899, Oh ’898,
Zhang
15, 16
17, 18 103 Oh ’265, Shin, Byun,
Oh ’899, Zhang,
Robbie
17, 18
Overall
Outcome
1–18

REVERSED