Ex Parte Hubbard et al

Patent Trial and Appeal BoardApr 1, 2016

13152523 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/152,523 06/03/2011 Graham J. Hubbard 34238 7590 04/05/2016 ARTHUR G. SCHAIER CARMODY TORRANCE SANDAK & HENNESSEY LLP 195 CHURCH STREET P.O. BOX 1950 NEW HAVEN, CT 06509-1950 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2156-801A 7057 EXAMINER DUCLAIR, STEPHANIE P. ART UNIT PAPER NUMBER 1713 NOTIFICATION DATE DELIVERY MODE 04/05/2016 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): patents@carmodylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GRAHAM J. HUBBARD, KEITH P. PARSONS, and TIMOTHY N. WRIGHT Appeal2014-002343 Application 13/152,523 1 Technology Center 1700 Before MICHAEL P. COLAIANNI, CHRISTOPHERM. KAISER, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the decision2 of the Primary Examiner rejecting claims 1-15. Final Act. 2-9. We have jurisdiction under 35 U.S.C. Â§ 6(b ). An oral hearing was held on March 29, 2016. We affirm in part. OPINION Appellants' invention "relates generally to methods of forming anti- reflective transparent conductive films." Spec. 1, 11. 5---6. 1 Appellants identify the real party-in-interest as MacDermid Autotype Ltd. Appeal Br. 2. 2 Final Office Action, mailed June 10, 2013 ("Final Act."). Appeal2014-002343 Application 13/152,523 Claim 1, reproduced below, is representative of the appealed subject matter: 1. A method of applying a transparent conductive film to a polymeric substrate having a texture therein, the method comprising the steps of: a) providing a polymeric material having a texture disposed therein; and b) conformally applying a transparent conductive material to the polymeric material to produce a conformal transparent conductive film thereon; wherein the conformal transparent conductive film has a texture corresponding to the texture of the polymeric material and wherein the texture has a period that is not larger than the wavelength of visible light, whereby the conformal transparent conductive film is antireflective. Appeal Br. 9. The Examiner rejected claims 1 and 4--13 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki3 and Noguchi; 4 claims 2 and 3 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki, Noguchi, and Yanagishita; 5 claim 3 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki, Noguchi, and Masuda; 6 and claims 14 and 15 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki, Noguchi, and Murota. 7 Final Act. 2-9. 3 Suzuki et al., U.S. Patent No. 7,014,912 B2, issued Mar. 21, 2006. 4 Noguchi et al., US 2007/0216997 Al, published Sept. 20, 2007. 5 Takashi Yanagishita, Kazuyuki Nishio, & Hideki Masuda, Antireflection Polymer Hole Array Structures by Imprinting Using Metal Molds from Anodic Porous Alumina, 1 APPLIED PHYSICS EXPRESS 067004, 067004-1- 067004-3 (2008). 6 Masuda et al., US 2007/0289874 Al, published Dec. 20, 2007. 7 Murota et al., US 2010/0025638 Al, published Feb. 4, 2010. 2 Appeal2014-002343 Application 13/152,523 Appellants present three arguments that apply to all claims on appeal. First, Appellants argue that Noguchi's base material is not textured, so it would not have been obvious to a person of ordinary skill in the art to texture a base layer. Appeal Br. 5 (citing Noguchi, Figs. IA, IB). This argument does not persuade us that the Examiner committed harmful error in rejecting Appellants' claims. Although Noguchi's layer 2 has flat surfaces, Noguchi discloses constructing texture on those flat surfaces, which creates a textured surface. Second, Appellants argue that Suzuki teaches making a layer above the transparent conductive layer textured, as opposed to texturing a layer on which the transparent conductive layer is constructed, as claimed. Appeal Br. 5 (citing Suzuki, Figs. 2, 6). Accordingly, argue Appellants, it would not have been obvious to a person of ordinary skill in the art to texture a base layer. Id. As discussed above, though, the Examiner relied on Noguchi rather than Suzuki to teach texturing a base layer, so the fact that Suzuki does not teach texturing a base layer is immaterial. We are not persuaded by this argument that the Examiner committed harmful error. Third, Appellants argue that neither Suzuki nor Noguchi teaches or suggests creating a textured transparent conductive layer in the way claimed, by sputtering the transparent conductive material on top of a textured lower surface, making it hindsight to find that the combination teaches this method. Appeal Br. 5. We do not find it persuasive of harmful error on the Examiner's part that neither reference individually teaches or suggests the entire claimed method. The Examiner relied on the finding that a person of ordinary skill in the art would have found the claimed method obvious in light of the combined teachings of Suzuki and Noguchi. Final Act. 2-3. 3 Appeal2014-002343 Application 13/152,523 One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As to the combination of Suzuki and Noguchi being hindsight, Appellants do not offer more than a bare statement, without further argument or evidence, that this is the case. This statement is unpersuasive for two reasons: it is attorney argument and it is conclusory. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of disagreement ... as to the existence of factual disputes do not amount to a developed argument."); In re Pearson, 494 F .2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). At the oral hearing, Appellants argued that Suzuki and Noguchi do not teach making the top surface of a transparent conductive layer textured or antireflective. This argument is an expansion of the statement in the Appeal Brief that "[ o ]ne cannot just make an ITO or transparent conductive surface textured" because "[a Jn ITO or transparent conductive surface is made by sputtering or other similar methods, where texture cannot be directly achieved." Appeal Br. 5. This argument is not persuasive of harmful error on the part of the Examiner. First, this is mere attorney argument without any citation to supporting evidence. Second, Appellants' claims do not require the top surface of the transparent conductive layer to have any texture or to be antireflective. Instead, the claims require the "transparent conductive film [to have] a 4 Appeal2014-002343 Application 13/152,523 texture corresponding to the texture of the polymeric material" and the "transparent conductive film [to be] antireflective." Id. at 9. This texturing is to be achieved by "conformally applying a transparent conductive material to the [textured] polymeric material to produce a conformal transparent conductive film" that "has a texture corresponding to the texture of the polymeric material." Id. Although not explicitly identified as such in Appellants' briefing, this presents an issue of claim construction: what are the proper meanings of "conformally applying," "texture," and "antireflective" with respect to a transparent conductive film? Appellants argue that these terms should be limited to referring to the upper surface of the film rather than to either the upper surface or the lower surface. We are not persuaded that this claim construction is appropriate in this proceeding. The PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution. In re Hyatt, 211 F .3d 1367, 1372 (Fed. Cir. 2000). The "broadest reasonable interpretation" rule recognizes that "before a patent is granted the claims are readily amended as part of the examination process." Burlington Indus. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). Thus, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Additionally, the broadest reasonable interpretation rule "serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)) (internal quotation marks omitted). Appellants have not identified any clear definition of these terms in the Specification, 5 Appeal2014-002343 Application 13/152,523 nor have they directed us to any evidence or provided any developed argument that suggests that the Examiner's interpretation of these terms is so broad as to be unreasonable. In addition to the arguments discussed above that apply to all the claims on appeal, Appellants also make two arguments with respect to particular sets of claims. First, with respect to claims 6 and 7, Appellants argue that "a person of ordinary skill in the art would not think that [physical vapor deposition or sputtering] could produce a textured surface." Appeal Br. 6. This argument is unpersuasive because it is merely attorney argument without further development or any citation to supporting evidence. SmithKline Beecham Corp., 439 F.3d at 1320; Pearson, 494 F.2d at 1405. As discussed above, Appellants have not shown any harmful error in the Examiner's finding that the combination of Suzuki and Noguchi would have taught or suggested to the person of ordinary skill in the art the claimed production of a textured transparent conductive layer by depositing the transparent conductive material on a lower textured layer. Second, with respect to claims 12 and 13, Appellants argue that the Examiner erred by relying on Suzuki's disclosure of "surface resistivity of not more than 1012 Q/o" to teach or suggest the claimed 100-600 Q/sq or 300-500 Q/sq. Appeal Br. 6-7. We are persuaded by this argument. As Appellants note, "if [a] reference's disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus." Id. at 7 (quoting Manual of Patent Examining Procedure (MPEP), 9th ed.,Â§ 2144.05 (July 2015)). The Examiner did not explain adequately why the extremely broad range of zero 6 Appeal2014-002343 Application 13/152,523 to one trillion rl/sq taught by Suzuki would have rendered obvious the much narrower ranges claimed by Appellants. This is particularly true given that the particular examples disclosed by Suzuki have surface resistivity values that in no case are less than 2 x 107 rl/sq. Suzuki, col. 11, 11. 26-46. There is still a significant difference between Suzuki's lowest disclosed value of 20 million rl/sq and Appellants' claimed ranges of 100-600 rl/sq and 300-500 n/sq. Because Appellants persuade us that the Examiner committed harmful error in rejecting claims 6 and 7 as obvious over the combination of Suzuki and Noguchi, we reverse that rejection. Because none of Appellants' other arguments persuade us that the Examiner committed harmful error, we affirm all the other rejections. ORDER The Examiner's rejection of claims 6 and 7 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki and Noguchi is reversed. The Examiner's rejections of claims 1, 4, 5, and 8-13 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki and Noguchi; of claims 2 and 3 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki, Noguchi, and Yanagishita; of claim 3 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki, Noguchi, and Masuda; and of claims 14 and 15 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Suzuki, Noguchi, and Murota are affirmed. 7 Appeal2014-002343 Application 13/152,523 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. AFFIRMED-IN-PART 8