Ex Parte Iyer et al

Patent Trial and Appeal BoardAug 24, 2018

13881571 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/881,571 04/25/2013 32692 7590 08/28/2018 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Suresh S. Iyer 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. 66904US004 9436 EXAMINER NELSON, MICHAEL B ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 08/28/2018 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte SURESH S. IYER, YU YANG, MARKI. PELLERITE, and PRADNY AV. NAGARKA Appeal2017-010976 Application 13/881,571 Technology Center 1700 Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and AVEL YN M. ROSS, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 5-8. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The Appellants identify the real parties in interest as "3M Company ... and its affiliate 3M Innovative Properties Company" (Appeal Brief filed February 24, 2017 (hereinafter "Br.") 3). 2 Br. 3-5; Final Office Action entered November 3, 2016 (hereinafter "Final Act.") 3-7; Examiner's Answer entered May 11, 2017 (hereinafter "Ans.") 3-9. Appeal2017-010976 Application 13/881,571 I. BACKGROUND The subject matter on appeal relates to an article comprising a conductive member (silver) disposed on a portion of a surface of a chemically-strengthened glass and a layer comprising a cured product of components comprising a curable polysilazane on at least a portion of the conductive member and at least a portion of the chemically-strengthened glass adjacent to the conductive member (Specification filed April 25, 2013 (hereinafter "Spec.") 2, 11. 2-7). According to the Appellants, "[ a ]dvantageously, and unexpectedly polysilazane-based barrier coatings according to the present disclosure are effective at mitigating the effects of humidity, and may surpass commercially available current alternatives" (id. at 2, 11. 8-10). Representative claim 5 is reproduced from the Claims Appendix to the Appeal Brief (Br.), with key limitations emphasized, as follows: 5. An electronic article comprising: a conductive member disposed on a portion of a surface of chemically-strengthened glass, wherein the conductive member comprises silver; a layer comprising a cured reaction product of components comprising a curable polysilazane on at least a portion of the conductive member and at least a portion of the surface of the chemically-strengthened glass adjacent to the conductive member[,] wherein the electronic article is a capacitive touch sensor. 2 Appeal2017-010976 Application 13/881,571 II. REJECTIONS ON APPEAL On appeal, the Examiner maintains two rejections under pre-AIA 35 U.S.C. Â§ I03(a) as follows: A. Claims 5, 7, and 8 as unpatentable over Hayashi, 3 Suginoya et al. 4 (hereinafter "Suginoya"), Shindo, 5 and Schulz et al. 6 (hereinafter Schulz"); and B. Claim 6 as unpatentable over Hayashi, Suginoya, Shindo, Schulz, and Kanitz et al. 7 (hereinafter "Kanitz"). (Ans. 3-9; Final Act. 3-7.) III. DISCUSSION The Appellants focus their arguments primarily on claim 5, providing only skeletal remarks about other claims (Br. 4--5). Therefore, we confine our discussion to claim 5, which we select as representative pursuant to 37 C.F.R. Â§ 4I.37(c)(l)(iv). Consistent with this rule, claims 6-8 stand or fall with claim 5. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). The Examiner finds that Hayashi describes a touch sensor electronic device including most of the limitations recited in claim 5 but acknowledges three differences between Hayashi's device and the claimed subject matter (Ans. 3-5). First, the Examiner finds that although Hayashi discloses a glass substrate (Hayashi Fig. 3, sealing substrate 31) on which a silver conductive 3 US 2009/0051274 Al, published February 26, 2009. 4 US 6,050,870, issued April 18, 2000. 5 US 2002/0034885 Al, published March 21, 2002. 6 US 6,819,316 B2, issued November 16, 2004. 7 US 6,734,622 Bl, issued May 11, 2004. 3 Appeal2017-010976 Application 13/881,571 member (cathode) 11 is disposed, it does not describe the glass substrate 31 as being a chemically-strengthened glass (Ans. 3). To resolve this difference, the Examiner relies on Suginoya's teaching that chemically- strengthened glass provides improved impact strength and concludes that a person having ordinary skill in the art would have combined Hayashi and Suginoya for that reason (id.). Second, the Examiner finds that although Hayashi teaches a silicon-based gas barrier layer 19 (Hayashi Fig. 3), it does not teach "a layer comprising a cured reaction product of components comprising a curable polysilazane," as specified in claim 5 (Ans. 4). To resolve this difference, the Examiner relies on Shindo's teaching that silicon- based coatings formed from polysilazanes provide improved resistance to cracking, oxidation, and gas permeation and concludes that a person having ordinary skill in the art would have used Shindo' s polysilazane-based coatings as the barrier layer in Hayashi's device (id.). Third, the Examiner finds that although Hayashi discloses touch sensor display devices, it does not disclose a capacitive touch sensor as required by claim 5 (id. at 5). To bridge this gap, the Examiner relies on Schulz's teachings to conclude that it would have been obvious to one having ordinary skill in the art to have used the capacitive touch sensor of Schulz as the touch sensor generally called for in modified Hayashi because such a touch sensor is made by an efficient low cost manufacturing method and has protective functionality (id. at 5). The Appellants do not dispute: (i) the Examiner's finding that Hayashi teaches a silver conductive material (i.e., cathode 11) "disposed on portion of' a glass substrate 31, as required by claim 5; and (ii) the Examiner's determination that Suginoya's teachings would have prompted a person having ordinary skill in the art to use a chemically-strengthened glass as 4 Appeal2017-010976 Application 13/881,571 Hayashi's glass substrate 31 (Br. 4--5). Nor do the Appellants argue that Hayashi's gas barrier layer 19 is not "on at least a portion of the conductive member and at least a portion of the surface of' glass substrate 31, as required by claim 5 (id.). Rather, the Appellants contend that Hayashi, Suginoya, and Shindo do not disclose a capacitive touch sensor (id. at 4). In addition, the Appellants argue that "the polysilazane of Shindo is converted to silica (i.e., Si02) after heat treatment" and "[h Jenee, even if one were to include the teaching of Shindo, the polysilazane layer would be converted to silica (Si02) before it was laminated to any touch panel ... " (id.). Furthermore, the Appellants argue that their disclosures in the Specification (Spec. 2, 11. 8-12; 9, 1. 1-10, 1. 20 (Examples 1 and 2 and Comparative Examples A and B)) provide evidence of unexpected results (Br. 4--5). We have fully considered the Appellants' arguments but find them insufficient to identify any reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Hayashi's Figure 3 is reproduced as follows: FIG. 3 Hayashi's Figure 3 above depicts a schematic sectional view of an organic electroluminescent (EL) device 1 comprising, inter alia, a cathode layer 11, a sealing substrate 31 (e.g., glass), and a hard gas barrier layer 19 (e.g., a 5 Appeal2017-010976 Application 13/881,571 silicon compound such as silicon nitride) (Hayashi ,r,r 4, 34, 62, 69, 78, 83, and 116). Hayashi teaches that the organic EL device may be used in apparatuses, such as a cellular telephone or personal computer, inclusive of touch panel-including apparatuses (id. ,r,r 162-163, 166; Figs. 8A and 8B). Although Hayashi does not teach a capacitive touch sensor, the Appellants do not provide any argument on the Examiner's reliance on Schulz for this limitation (Ans. 5). Therefore, consistent with the Examiner's position (id. at 6), the Appellants' skeletal argument that Hayashi, Suginoya, and Shindo do not teach a capacitive touch sensor, (Br. 4), is ineffective. Regarding the polysilazane limitation recited in claim 5, we discern no error in the Examiner's analysis based on the combination of Hayashi and Shindo (4--5, 6-7), which we adopt as our own. Contrary to the Appellants' belief (Br. 4) ("Appellant submits unjustifiable, motivation to use polysilazane for the gas barrier layer 19 in Hayashi modified by Suginoya"; bolding added), claim 5 does not require a polysilazane as the "layer comprising a cured reaction product of components comprising a curable polysilazane." To the contrary, the broadest reasonable interpretation of "a cured reaction product of components comprising a curable polysilazane" ( emphasis added) recited in claim 5, taking into account the written description in the Specification, includes Shindo's glassy Si02 layer made from polysilazanes (Shindo ,r 67). Finally, we find no merit in the Appellants' position that their Specification provides evidence of unexpected results. The disclosure in the Specification (Spec. 2, 11. 8-12) merely touts the invention with conclusory statements that are not supported by objective evidence ( e.g., comparative 6 Appeal2017-010976 Application 13/881,571 data). Although Examples 1 and 2 and Comparative Examples A and B provide some data, they are insufficient for the reasons well-stated by the Examiner (Ans. 8-9), which we adopt as our own. For these reasons and those given by the Examiner, we uphold the Examiner's rejection as maintained against claim 5. IV. SUMMARY Rejections A and Bare sustained. Therefore, the Examiner's final decision to reject claims 5-8 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7