Ex Parte Ha et al

Patent Trial and Appeal Board

Jul 29, 2014

11411915 (P.T.A.B. Jul. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte YONG MIN HA and HONG SOO KIM
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Appeal 2011-013447
Application 11/411,915
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 According to Appellants, the real party in interest in LG Display LCD,
Ltd. (App Br. 2).
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Application 11/411,915

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 5-
7, 9-11, 13, 15, 17, 19, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to integrated chips and flat panel display
device using the same. Claim 5, reproduced below, is illustrative of the
claimed subject matter:
5. A flat panel display device, comprising:

a first chip including a digital IC for processing a digital
signal;

a second chip including an analog IC electrically
connected to the digital IC for processing an analog signal
having a voltage higher than a voltage of the digital signal;

a flat panel display panel displaying an image based on a
signal from the analog IC;

a system for a signal to the digital IC; and

a signal transmission wiring film connected to the system
and the flat panel display panel,

wherein the first and second chips are distinct from each
other, and

wherein the signal transmission wiring film includes a
flexible printed circuit,

wherein the signal transmission wiring film is electrically
connected to the analog IC, the digital IC is mounted on the
signal transmission wiring film, and the analog IC is mounted
on the substrate of the flat panel display panel,
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wherein a pitch of signal lines formed in the digital IC is
independent of a pitch of signal lines formed in the analog IC
by being fabricated in a separate process capable of minimizing
the pitch of signal lines in the digital IC irrespective of the
analog IC.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nakamura JP 05-082717 Apr. 02, 1993
Appellants’ Admitted Prior Art (Figs 1-6 and its related text from
Appellants’ Specification)

REJECTION
The Examiner made the following rejection:
Claims 5-7, 9-11, 13, 15, 17, 19, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Appellants’ Admitted Prior
Art (Figs. 1-6 and its related text from Appellants’ Specification)
(hereinafter, “AAPA”), in view of Nakamura.

ANALYSIS
Appellants present arguments to the claims as a group. (App. Br. 7.)
We select independent claim 5 as the representative claim for independent
claims 5, 17, 19, and 21. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner maintains:
Nakamura further teaches wherein the digital IC is
independent from the analog IC by being fabricated in a
different process (sections 0010-0015; wherein the digital IC is
separate and independent from the analog IC and thus its
associated signal lines would inherently be independent; and a
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digital circuit is inherently fabricated different from an analog
circuit as they are two different, separate and distinct
components).

(Ans. 6.) We agree with the Examiner. The Examiner further maintains:
However, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify the
teachings of AAPA in view of Nakamura by having the digital
IC made in a completely separate process than an analog IC, in
which the specifications of the digital IC, in this case the pitch
between signal lines, is completely unrelated to the
specifications of the analog IC as an alternative design choice in
the timing of the process.

(Ans. 7.) We agree with the Examiner. The Examiner additionally
maintains:
[T]he AAPA teaches the pitches of the signal lines of the
analog and digital ICs are different from each other. The
Nakamura reference teaches the chips to be independent of each
other. Therefore, if they are independent, that means that not
only is there an inherent difference in the way the two chips are
manufactured and fabricated, which would demonstrate a
different process (but not necessarily inherently separate), but it
would also be obvious to have a separate process as well.

To further elaborate on the matter, there is inherently a
difference in the manufacturing of digital and analog chips. The
digital chip, which has a different pitch between signal lines
than the analog, will contain components that are distinct to a
digital chip, and the analog chip will contain components that
are distinct to just the analog chip. So therefore, the process of
manufacturing is inherently different. However, to have a
separate process between digital chips, is not inherent. In other
words, although the type of components may be different in
their manufacturing process, they could have used the same
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process - for example, the same number of steps to make the
chips or they were made concurrently.

(Ans. 17-18.) We agree with the Examiner.
Appellants contend that “the Office Action failed to provide any
articulation of reasons for a separate process capable of minimizing the pitch
of signal lines in the digital IC irrespective of the analog IC, and therefore,
why the claimed invention would have been obvious.” (App. Br. 7.) We
disagree with Appellants’ contention and find that the Examiner has
provided an articulation of reasons. (Ans. 7, 11, 13, 16, 17.) Appellants
further contend that the AAPA and Nakamura teach away from the claimed
invention because the Nakamura reference discloses digital IC and analog IC
being formed on the same substrate in which case the single line pitch of
both the digital IC and the analog IC are determined by the single line pitch
of the analog IC. (App. Br. 8.) We disagree with Appellants’ conclusion
and find that Appellants have not identified in either reference an express
teaching away.
“A reference may be said to teach away when a person of ordinary
skill, upon [examining] the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in
original) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of the alternatives when the disclosure does not
criticize, discredit, or otherwise discourage the solution claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). What the prior art teaches
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and whether it teaches toward or away from the claimed invention are
determinations of fact. Para-Ordnance Mfg., 73 F.3d at 1088.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellants additionally argue that when the digital blocks 80 and 100 and
the analog blocks 90 and 110 are concurrently formed, the pitches of signal
lines in the analog blocks 90 and 110 are formed to be the same as the
pitches of the signal lines in the digital blocks 80 and 100. (Reply Br. 2.)
We note that representative independent claim 5 does not require
“concurrently formed” as an express limitation. Therefore, Appellants’
argument is not commensurate in scope with the express language of the
claim 5.
Therefore, Appellants have not shown error in the Examiner’s
conclusion of obviousness of representative independent claim 5. In view of
the foregoing, we sustain the rejection of claim 5 and claims 6, 7, 9-11, 13,
15, 17, 19, and 21 grouped therewith.
Additionally, we note that the “wherein” clause argued by Appellants
does not set forth any positive limitation with regards to the structure of the
flat panel display. We interpret the “wherein” clause to be a process
limitation regarding the product, but the product is taught and suggested by
the prior art relied upon by the Examiner. Therefore, the process limitation
does not distinguish the product. MPEP 2113 states:
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2113 Product-by-Process Claims [R-08.2012]
PRODUCT-BY-PROCESS CLAIMS ARE NOT
LIMITED TO THE MANIPULATIONS OF THE
RECITED STEPS, ONLY THE STRUCTURE IMPLIED
BY THE STEPS
“[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is based
on the product itself. The patentability of a product does not
depend on its method of production. If the product in
the product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though
the prior product was made by a different process.” In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985) (citations omitted) (Claim was directed to a novolac color
developer. The process of making the developer was allowed.
The difference between the inventive process and the prior art
was the addition of metal oxide and carboxylic acid as separate
ingredients instead of adding the more expensive pre-reacted
metal carboxylate. The product-by-process claim was rejected
because the end product, in both the prior art and the allowed
process, ends up containing metal carboxylate. The fact that the
metal carboxylate is not directly added, but is instead produced
in-situ does not change the end product.). Furthermore,
"[b]ecause validity is determined based on the requirements of
patentability, a patent is invalid if a product made by the
process recited in a product-by-process claim is anticipated by
or obvious from prior art products, even if those prior art
products are made by different processes." Amgen Inc. v. F.
Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d
1289, 1312, n 14 (Fed. Cir. 2009). However, in the context of
an infringement analysis, a product-by-process claim is only
infringed by a product made by the process recited in the claim.
Id. at 1370 ("a product in the prior art made by a different
process can anticipate a product-by-process claim, but an
accused product made by a different process cannot infringe a
product-by-process claim." ).
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The structure implied by the process steps should be considered
when assessing the patentability of product-by-process claims
over the prior art, especially where the product can only be
defined by the process steps by which the product is made, or
where the manufacturing process steps would be expected to
impart distinctive structural characteristics to the final product.
See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221,
223 (CCPA 1979) (holding “interbonded by interfusion” to
limit structure of the claimed composite and noting that terms
such as “welded,” “intermixed,” “ground in place,” “press
fitted,” and “etched” are capable of construction as structural
limitations.)
ONCE A PRODUCT APPEARING TO BE
SUBSTANTIALLY IDENTICAL IS FOUND AND A
35 U.S.C. 102/103 REJECTION MADE, THE BURDEN
SHIFTS TO THE APPLICANT TO SHOW AN
UNOBVIOUS DIFFERENCE
“The Patent Office bears a lesser burden of proof in making out
a case of prima facie obviousness for product-by-
process claims because of their peculiar nature” than when a
product is claimed in the conventional fashion. In re
Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA
1974). Once the examiner provides a rationale tending to show
that the claimed product appears to be the same or similar to
that of the prior art, although produced by a different process,
the burden shifts to applicant to come forward with evidence
establishing an unobvious difference between the claimed
product and the prior art product. In re Marosi, 710 F.2d 798,
802, 218 USPQ 289, 292 (Fed. Cir. 1983) (The claims were
directed to a zeolite manufactured by mixing together various
inorganic materials in solution and heating the resultant gel to
form a crystalline metal silicate essentially free of alkali metal.
The prior art described a process of making a zeolite which,
after ion exchange to remove alkali metal, appeared to be
“essentially free of alkali metal.” The court upheld the
rejection because the applicant had not come forward with any
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evidence that the prior art was not “essentially free of alkali
metal” and therefore a different and unobvious product.).
Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989)
(The prior art disclosed human nerve growth factor (b-NGF)
isolated from human placental tissue. The claim was directed
to b-NGF produced through genetic engineering techniques.
The factor produced seemed to be substantially the same
whether isolated from tissue or produced through genetic
engineering. While the applicant questioned the purity of the
prior art factor, no concrete evidence of an unobvious
difference was presented. The Board stated that the dispositive
issue is whether the claimed factor exhibits any unexpected
properties compared with the factor disclosed by the prior art.
The Board further stated that the applicant should have made
some comparison between the two factors to establish
unexpected properties since the materials appeared to be
identical or only slightly different.).
We find that the Examiner has made a showing that the product is
obvious over the combination of the prior art teachings. Since the claimed
product appears to be the same or similar to that of the prior art, although
produced by a different process, the burden shifts to applicant to come
forward with evidence establishing an unobvious difference between the
claimed product and the prior art product. We find Appellants have not
made any showing regarding an unobvious difference in the product.
Therefore, we additionally sustain the rejection based upon the product by
process claim interpretation.

CONCLUSION OF LAW
The Examiner did not err in rejecting representative independent
claim 5 based upon obviousness.
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DECISION
For the above reasons, the Examiner’s rejection of claims 5-7, 9-11,
13, 15, 17, 19, and 21 is affirmed.

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

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