Ex Parte 6689629 et al

Patent Trial and Appeal BoardMay 28, 2014

90009697 (P.T.A.B. May. 28, 2014)

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. 90/009,697 03/16/2010 6689629 67507-008Re-exam 5947 65358 7590 05/28/2014 WPAT, PC INTELLECTUAL PROPERTY ATTORNEYS 8230 BOONE BLVD. SUITE 405 VIENNA, VA 22182 EXAMINER NGUYEN, TUAN H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/28/2014 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 AU OPTRONICS CORPORATION Patent Owner, Appellant ____________________ Appeal 2014-005582 Reexamination Control 90/009,697 Patent 6,689,629 B2 Technology Center 3900 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-005582 Reexamination Control 90/009,697 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1, 3, 5-9, 11, and 14-17. Claims 2, 4, 10, 12, and 13 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to: [A]n array substrate for display, a method of manufacturing the array substrate for display and a display device using the array substrate for display. The present invention is an array substrate for display, which includes: a thin film transistor array formed on an insulating substrate 1; a plurality of wirings 23 and 24 arranged on the insulating substrate 1; connection pads 25 and 27 arranged on unilateral ends of the wirings 23 and 24 and respectively connected therewith; and pixel electrodes 22, wherein dummy conductive patterns 29 are arranged between the ends of the connection pads 25 and 27 and ends of the pixel electrodes 22. (Abstract). Claims 1 and 17, reproduced below, are illustrative of the claimed subject matter: 1. An array substrate for display, comprising: a layer of an insulating substrate, having an area; a thin film transistor array formed on the insulating substrate; a plurality of wirings arranged on the insulating substrate, each wiring having a first end, the wiring in communication with at least one of the transistors in the thin film array, and at Appeal 2014-005582 Reexamination Control 90/009,697 3 least one of the wirings comprises at least an upper layer and a lower layer of conductive materials, wherein the upper layer wiring material is selected from the group consisting of molybdenum, chromium, tantalum, titanium and alloys thereof; connections pads, each connection pad contacting the first end of at most one of the plurality of wirings; pixel electrodes, and dummy conductive patterns, the dummy patterns comprising at least about 30% of the area of the insulating substrate, the dummy conductive patterns situated between the connection pads and the pixel electrodes such that the dummy patterns are not in contact with any of the wirings. 17. An array substrate for display, comprising: a layer of an insulating substrate, having an area; a thin film transistor array formed on the insulating substrate; a plurality of wirings arranged on the insulating substrate, each wiring having a first end, the wiring directly connects with at least one of the transistors in the thin film array; connections pads, each connection pad contacting the first end of at most one of the plurality of wirings; pixel electrodes, and dummy conductive patterns, the dummy patterns comprising at least about 30% of the area of the insulating substrate, the dummy conductive patterns situated between the connection pads and the pixel electrodes such that the dummy patterns are not in contact with any of the wirings. Appeal 2014-005582 Reexamination Control 90/009,697 4 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Zhang US 5,995,189 Nov. 30, 1999 Tsujimura ’629 US 6,689,629 B2 Feb. 10, 2004 REJECTIONS The Examiner made the following rejections: Claims 1, 3, 5-9, 11, and 14-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhang in view of the Tsujimura ’629 Admitted Prior Art (“APA”). (Ans. 4). Claim 17 is rejected under 35 U.S.C. § 102(b) as being anticipated by Zhang. (Ans. 8). Appellant seeks our review of the above rejections. ANALYSIS In an ex parte appeal, the Board “is basically a board of review — we review . . . rejections made by patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Appellant begins its analysis with the obviousness rejection of independent claim 1 and addresses the independent claims together. (App. Br. 12). Since independent claim 17 is rejected based upon anticipation and is slightly broader, we address Appellant’s arguments thereto. See 37 C.F.R. Appeal 2014-005582 Reexamination Control 90/009,697 5 § 41.37(c)(1)(iv) (2012) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone .”).1 See also MPEP Rev. 8, July 2010. Anticipation “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins with a determination of the scope of the claim. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim must then be compared with the prior art. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily 1 In the instant appeal, Appellant filed a Notice of Appeal on September 6, 2012. The date of filing of the Notice of Appeal determines which set of rules applies to an Ex parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. Appeal 2014-005582 Reexamination Control 90/009,697 6 functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). “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.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). “[A] prima facie case of anticipation [may be] based on inherency . . . .” In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case of anticipation has been established, the burden shifts to the Appellant to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellant presents two arguments: A. The cited references do not disclose or teach that both dummy conductive patterns and wirings are on the same layer. B. The cited references do not disclose or teach the recited 30% area occupied by the dummy conductive patterns. (App. Br. 12; Reply Br. 12). Appeal 2014-005582 Reexamination Control 90/009,697 7 With respect to Appellant’s argument concerning the conductive patterns and wirings are on the “same layer,” the Examiner maintains that the express claim language “does not require that the wirings and dummy patterns are both directly formed on and in contact to the insulating substrate as argued by the Appellant” and “is not commensurate in scope with the instant claims.” (Ans. 10-11). We agree with the Examiner’s claim interpretation and find Appellant’s argument unpersuasive of error. Furthermore, the Examiner maintains that Figures 4, 6, and column 9 and 10 of the Zhang reference teach the dummy wirings 301 and wirings 302 and 303 are on the same layer. We agree with the Examiner. With respect to Appellant’s second argument regarding the claimed “at least about 30% of the area of the insulating substrate,” Appellant contends that the Examiner’s position is in error. (Reply Br. 17). The Examiner maintains: The area of dummy 304 of 30 microns x L / 50 microns x L (distance between wirings 301, 302, 303) + 10 microns x L (area of wiring 301 or 302 or 303) = 30/60 which clearly shows the dummy 304 occupies at least 30% or more of the specified area (i.e. 50% in this case). The ratio of this portion is repeatedly the same over the other regions R1-R4 as shown in Figs. 4, 6. (Ans. 12). Appellant contends that the Examiner’s finding is in error since the proper base as the denominator arbitrarily calculates the ratio with a constant “L.” (Reply Br. 17). Appellant contends “the proper denominator for calculating Zhang’s ratio for Zhang’s dummy patterns’ occupying area should not be limited within the sealed area 107 since the claim in the instant patent provides that dummy patterns is [sic, are] situated between the Appeal 2014-005582 Reexamination Control 90/009,697 8 connection pads and pixel electrodes.” (Reply Br. 17). We agree with Appellant and find that the Examiner’s calculation of the “at least 30%” does not necessarily contain a constant length “L” for the plurality of wirings and dummy conductive patterns. We find the Examiner paints with a broad brush in making the anticipation rejection and we are left to speculate as to the precise details of how the claim limitation is expressly or inherently described by figures and recited dimensions relied on by the Examiner, where the drawings are not necessarily to scale. We note that the Board is a reviewing body and not a place of initial examination. Moreover, it is our view that the more rigorous requirements of § 102 essentially require a one-for-one mapping of each argued limitation to the corresponding portion of the reference, which the Examiner must identify with particularity. Here, the Examiner has not made the requisite showing of the claimed “the dummy patterns comprising at least about 30% of the area of the insulating substrate, the dummy conductive patterns situated between the connection pads and the pixel electrodes such that the dummy patterns are not in contact with any of the wirings.” Therefore, we cannot sustain the anticipation rejection of independent claim 17. Obviousness With respect to the obviousness rejection of claims 1 and 9, the Examiner relies upon the same deficient calculation for the “at least about 30% of the area” and does not provide any separate line of reasoning for the obviousness rejection of claims 1 and 9. Therefore, we cannot sustain the Appeal 2014-005582 Reexamination Control 90/009,697 9 obviousness rejection of independent claims 1 and 9 and their respective dependent claims 3, 5-8, 11, and 14-16. CONCLUSIONS The Examiner erred in in rejecting claim 17 based upon anticipation. The Examiner erred in rejecting claims 1, 3, 5-9, 11, and 14-16 based upon obviousness. DECISION For the above reasons, the Examiner’s rejections of claims 1, 3, 5-9, 11, and 14-17 are reversed. REVERSED msc For Patent Owner: WPAT, PC INTELLECTUAL PROPERTY ATTORNEYS 8230 BOONE BLVD. SUITE 405 VIENNA, VA 22182 For Third Party Requester: MCKENNA LONG & ALDRIDGE, LLP 1900 K STREET, NW WASHINGTON, DC 20006