Ex Parte Eshleman

Patent Trial and Appeal BoardOct 4, 2012

11319808 (P.T.A.B. Oct. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte DEAN ESHLEMAN _____________ Appeal 2010-005424 Application 11/319,808 Technology Center 2800 ______________ Before: JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and HUNG H. BUI, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1, 3 through 6, 8, 10 through 16, and 18. We affirm-in-part. Appeal 2010-005424 Application 11/319,808 2 INVENTION The invention is directed to a laminate structure for a liquid crystal cell which uses spacers of different dimensions to maintain a uniform cell gap. See page 3 and Figure 2 of Appellant’s Specification. Claim 1 is representative of the invention and reproduced below: 1. A laminate structure comprising: a first layer having a planar region and a peripheral contoured region; a planar second layer parallel to and spaced from the first layer and overlying the generally planar region and the peripheral contoured region of the first layer; and a plurality of uniform spacers positioned between the first and second layers and spacing the second layer a uniform distance from the planar region of the first layer, and one or more peripheral spacers positioned between the first and second layers in the peripheral contoured region, the peripheral spacers extending between the peripheral contoured region of the first layer and the planar second layer, the peripheral spacers having a vertical dimension greater than a vertical dimension of the uniform spacers; adhesive between the first and second layers in the peripheral contoured region; the planar second layer lying entirely in a single plane spaced from the planar region and the peripheral contoured region of the first layer. REFERENCES Takanashi US 5,231,527 Jul. 27, 1993 Ishihara US 5,537,235 Jul. 16, 1996 Shiroto US 5,812,232 Sep. 22, 1998 Mathew US 6,122,033 Sep. 19, 2000 Appeal 2010-005424 Application 11/319,808 3 REJECTIONS AT ISSUE The Examiner has rejected claims 1, 4, 5, 8, and 10 through 13 under 35 U.S.C. § 103(a) as unpatentable over Ishihara in view of Shiroto. Answer 3-61. The Examiner has rejected claims 14, 15, 16, and 18 under 35 U.S.C. § 102(b) as anticipated over Ishihara. Answer 7-8. The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as unpatentable over Ishihara in view of Shiroto and Takanashi. Answer 8-9. The Examiner has rejected claim 3 under 35 U.S.C. § 103(a) as unpatentable over Ishihara in view of Shiroto and Mathew. Answer 9-10. ISSUES Appellant argues on pages 4 and 5 of the Brief2 that the Examiner’s rejection of claims 1, 4, 5, 8, and 10 through 13 is in error as neither of the references teaches a laminate with a first layer that has a contoured region and a planar region; and a second layer that lies in a single plane. These arguments present us with the issue: did the Examiner err in finding the combination of the references teaches a laminate with spacers where the first layer has both planar and contoured regions and the second layer lies in a single plane, as recited in representative claim 1. We note that Appellant’s arguments present additional issues with respect to the other rejections which we address in the analysis section infra. 1 Throughout this opinion we refer to the Examiner’s Answer mailed on December 15, 2009. Appeal 2010-005424 Application 11/319,808 4 ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellant’s arguments. We disagree with Appellant’s conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. Claims 1, 4, 5, 8, and 10 through 13 Appellant argues Ishihara teaches that both layers of the laminate have contoured regions and that the layers are purposefully made to compensate for resistances of wires, unevenness of temperatures and to prevent bubbles. Brief 4. While we concur that Ishihara depicts in the drawings that both layers are contoured, we are not convinced by Appellant’s argument that Ishihara is so limited. The portions of Ishihara cited in Appellant’s argument are addressing the gaps in the different sections of the laminate, and do not specifically teach that both layers must be contoured to achieve the gaps. Further, we note that Ishihara’s teaching is not limited to just using multiple size spacers to maintain gaps that accommodate for the wiring since Ishihara also teaches that the method is applicable to eliminate a problem in thickness or space of other structural members. Col. 5, ll. 23- 25 of Ishihara. Appellant’s further argument that Shiroto does not teach a laminate which has a first layer with both planar and contoured regions and a second 2 Throughout this opinion we refer to Appellant’s Appeal Brief dated January 8, 2008. Appeal 2010-005424 Application 11/319,808 5 layer that lies in a single plane does not address the figure cited by the Examiner. The Examiner relies upon Shiroto’s FIG. 3B to teach this feature. Answer 4, 13. This figure appears to show the claimed two layers. Thus, Appellant’s arguments have not persuaded us that the Examiner has erred in finding the combination of the references teaches a laminate with spacers where the first layer has both planar and contoured regions and the second layer lies in a single plane. Appellant’s arguments group claim 8 with claim 1. Brief 5. Further, Appellant’s statement concerning the references not teaching peripheral spacers having a greater vertical dimension than the uniform spacers is not commensurate in scope with claim 8. Brief 5. Appellant’s arguments directed to claims 4, 10, 12, and 13 merely recite claim limitations and assert that the feature is not taught. This does not amount to a separate argument under 37 C.F.R. 41.52. Further, the Examiner has specifically addressed these limitations and identified where they are taught in the prior art. Answer 14-15. Appellant’s statements do not identify error in these fact findings. For the aforementioned reasons we sustain the Examiner’s rejection of claims 1, 4, 5, 8, and 10 through 13 under 35 U.S.C. § 103(a). Claims 14, 15, 16, and 18 Appellant’s sole argument directed to this group of claims is “[i]n FIG. 7B of Ishihara, the peripheral spacers do not have a greater vertical dimension than the uniform spacers.” Brief 5. As discussed infra, we concur; however, representative claim 14 does not include a limitation directed to the peripheral spacers having a greater vertical dimension than the uniform spacers. Accordingly, Appellant has not persuaded us of error Appeal 2010-005424 Application 11/319,808 6 in the rejection of representative claim 14 and we sustain the Examiner’s rejection of claims 14, 15, 16, and 18 under 35 U.S.C. § 102(b). Claim 6 Appellant argues that Ishihara does not teach deformable peripheral spacers which have a greater vertical dimension than the uniform spacers as recited in claim 6. The Examiner relies upon Ishihara’s FIG. 7B as teaching this feature. Answer 16. We disagree with the Examiner. While FIG. 7B of Ishihara depicts deformable spacers in the periphery, there is no disclosure anywhere in Ishihara that these deformable spacers must have a greater vertical dimension, as recited in claim 6. Accordingly, we will not sustain the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a). Claim 3 Appellant argues that claim 3 recites the first layer as a wafer and that the disclosed invention is directed to “falloff” from polishing wafers which is not addressed by Mathew. Brief 6. We are not persuaded of error by this argument. Claim 3 merely recites that the first layer is a wafer. Mathew teaches a wafer, as discussed supra, and Ishihara teaches that the method is applicable to accommodate a difference in thickness or space of other structural members. Thus, we find ample evidence to support the Examiner’s finding that the skilled artisan would have combined the prior art teachings as it merely involves using known devices for their known function. Accordingly, we sustain the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a). Claim 4 Appeal 2010-005424 Application 11/319,808 7 Appellant’s arguments on page 6 assert that the combination of the references do not teach the layers are circular for the reasons discussed with respect to claim 3. As discussed above, we are not persuaded by Appellant’s arguments directed to claim 3. Accordingly, we sustain the Examiner’s rejection of claim 4. ORDER We affirm the rejection of claims 14, 15, 16 and 18 under 35 U.S.C. § 102(b). We affirm the rejection of claims 1, 3 through 5, 8, and 10 through 13 under 35 U.S.C. § 103(a). However, we reverse the rejection of claim 6 under 35 U.S.C. § 103(a). CONCLUSION The decision of the Examiner to reject claims 1, 3 through 6, 8, 10 through 16 and 18 is affirmed in part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART tj