Ex Parte Pruneri et al

Patent Trial and Appeal Board

Oct 3, 2018

13578902 (P.T.A.B. Oct. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/578,902 10/18/2012 Valerio Pruneri
2352 7590 10/05/2018
OSTROLENK FABER LLP
845 THIRD A VENUE
NEW YORK, NY 10022
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.
P/4043-842 (V 24118) 2632
EXAMINER
GONZALEZ RAMOS, MA YLA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
10/05/2018 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALERIO PRUNER!, DHRITI SUNDAR GHOSH,
and TONG LAI CHEN
Appeal 2017-011277
Application 13/578,902 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5 and 8-17. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellants, the real parties in interest are (1) Fundaci6
Institut De Ciencies Fotoniques and (2) Instituci6 Catalana De Recerca
Estudis Avarn;ats. Appeal Br. 1.
Appeal 2017-011277
Application 13/578,902
STATEMENT OF THE CASE2
Appellants describe the invention as relating to optically transparent
and electrically conductive electrodes for, for example, optoelectronic
applications. Spec. 1: 6-7. Claim 1, reproduced below with emphasis added
to certain key recitations, is illustrative of the claimed subject matter:
1. A transparent electrode, in particular for optoelectronic
applications, comprising
a substrate;
a transparent conductive oxide serving as a conductive body;
and
an ultra thin metal layer on the transparent conductive oxide,
wherein the electrode further comprises an oxide layer on the
ultra thin metal layer, and
wherein the oxide layer is an oxide of the ultra thin metal
layer, wherein a combined thickness of the ultra thin metal
layer and the oxide layer is 5 nm or less, and
wherein the ultra thin metal layer is not oxidized through its
entire thickness.
Appeal Br. 11 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Okada et al.
("Okada")
Nakamura et al.
("Nakamura")
US 2005/0034755 Al
US 2007/0029554 Al
Feb. 17,2005
Feb. 8,2007
2 In this Decision, we refer to the Final Office Action dated May 5, 2016
("Final Act."), the Appeal Brief filed January 3, 2017 ("Appeal Br."), and
the Examiner's Answer dated May 4, 2017 ("Ans.").
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Application 13/578,902
Noda JP2000351170 (A) Dec. 19, 2000
Bemede WO 2009/016092 A2 February 5, 2009
Ghosh et al., Widely Transparent Electrodes Based on Ultrathin Metals,
34 OPTICS LETTERS 325-327 (Feb. 1, 2009) ("Ghosh").
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-5, 10, 11, 13, and 14 under 35 U.S.C. § 103(a)
as unpatentable over Noda in view of Ghosh. Ans. 3.
Rejection 2. Claims 8, 9, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Noda in view of Ghosh and further in view of Okada. Id.
at 10.
Rejection 3. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Noda in view of Ghosh and further in view of Nakamura. Id. at 12.
Rejection 4. Claims 16 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Noda in view of Ghosh and further in view of Bemede.
Id. at 13-14.
The Appeal Brief also addresses a double patenting rejection. Appeal
Br. 9. The Examiner has now withdrawn this rejection (Ans. 15), and we,
therefore, do not further address that rejection.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
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presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellants argue claims 1 and 10 together, and Appellants do not
separately argue any individual claim or rejection. Appeal Br. 3-9. We
therefore limit our discussion to claim 1. All other claims on appeal stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
The Examiner finds that Noda teaches the most of the layers recited
by claim 1. Ans. 3--4 ( citing Noda). The Examiner finds that Noda lacks an
oxide of the ultra thin metal layer and states:
Noda teaches that the oxide layer is a silicon oxide layer (5)
instead of said oxide layer being an oxide of the ultra thin metal
layer, wherein a combined thickness of the ultra thin metal
layer and the oxide layer is 5nm or less, and wherein the ultra
thin [metal] layer is not oxidized through its entire thickness.
Ans. 4.
The Examiner finds that Ghosh is similar to Noda and teaches that its
ultra thin metal film is partially oxidized in order to form a top oxide layer
that prevents further oxidation and results in a passivated ultra thin metal
film. Id. The Examiner determines that it would have been obvious to
substitute the oxide layer of Noda for a thermally grown oxide layer as
taught by Ghosh because
both are taught by the prior art to be used for the same purpose
i.e., preventing further oxidation of a [sic] ultra thin metal film,
and because said thermally grown oxide provides the additional
advantage of a passivated ultra thin metal film having a larger
electrical resistivity and optical transmittance (see Ghosh et al.,
Pages 326-327).
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Id. at 5.
Appellants argue that Noda includes a silicon oxide layer "to improve
conductivity, environmental resistance, and the antireflection effect."
Appeal Br. 4. Appellants argue that Ghosh partially oxides its ultra thin
metal film to prevent further oxidation, "thereby passivating the UTMF to
obtain a larger electrical resistivity and optical transmittance." Id.
Appellants argue that Noda and Ghosh have different objectives that are not
interchangeable and that a person of skill would therefore not conclude that
the grown oxide of Ghosh would perform the same desirable function as the
silicon layer in Noda. Id. Appellants also argue that there would not be "a
proper expectation of a successful outcome" ifNoda's 30 nm diffusion
barrier were replaced with grown oxide thinner than 5 nm. Id. at 8.
The Examiner, however, finds that both Noda and Ghosh recognize
disadvantages of oxidation of an ultra thin metal film. Ans. 18. The
Examiner's finding is supported by a preponderance of the evidence. For
example, Noda states "metal oxidizes easily, and it is easy to cause
migration . . . . And if metal oxidizes, conductivity will be deteriorated, and
if migration arises, ... electrical resistance increases notably." Noda ,r 15.
Similarly, Ghosh indicates that partial oxidation of the ultra thin metal film
"forms a top oxide layer that prevents further oxidation" and also indicates
that the resulting UTMF is "passivated" so that it has "larger electrical
resistivity and optical transmittance." Ghosh 327. This evidence supports
the Examiner's determination that, for example, "one of ordinary skill in the
art would have found it obvious to take advantage of the oxidation process
of these metals (i.e. Ni) as taught in Ghosh in order to provide a top oxide
that prevents further oxidation of the layer." Ans. 19. We agree with the
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Examiner that Ghosh's teaching of a successful and stable transparent
electrode suggests that a person of ordinary skill in the art would have had a
reasonable expectation of success in combining Ghosh's teachings with
Noda. Ans. 21.
Appellants further argue that Exhibit 1 and Exhibit 2 demonstrate that
not every oxide layer would provide the same barrier function as a 30 nm
silicon oxide layer (as in Noda). Appeal Br. 6. Exhibit 1 is Williams et al.,
Low Temperature Diffusion of Alkali Earth Cations in Thin, Vitreous Si02
Films, 142 J. Electrochem. Soc. 303-311 (1995) ("Williams"). Table 1 of
Williams identifies two wafers with silica film thickness between 94 nm and
110 nm. Appellants have not explained, however, how Exhibit 1 indicates
that the oxide layer taught by Ghosh would not work in combination with
the teachings of Noda, and we do not discern such a teaching in Williams.
Appellants also argue that "Exhibit 1 indicates that an informed skill
person [sic] would conclude that thickness of the migration barrier depends
on the migrating metal, and thus it would not be scientifically reasonable to
assume that all oxide barrier layers will offer the same performance."
Appeal Br. 6. The Examiner, however, finds that both Ghosh and Noda
teach that the migrating metal may be nickel. Ans. 21-22 ( citing Ghosh and
Noda). Thus, Appellants' argument does not identify error in the
Examiner's determination that Ghosh's teachings regarding passivation with
regard to nickel would also apply to Noda's nickel embodiment.
Exhibit 2 is Nicolet, Diffusion Barriers in Thin Films, 52 Thin Solid
Films 415--443 (1978) ("Nicolet"). Appellants argue that Nicolet indicates
that determination of whether an ultra thin oxide functions properly requires
experimentation and also argue that silicon dioxide must be at least 20 nm
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thick to prevent migration of gold. Appeal Br. 6. Appellants do not
persuasively explain, however, how Nicolet undermines Ghosh's teaching
that partial oxidation of the thin metal film usefully prevents further
oxidation and provides passivation. Ans. 22-23. Nicolet's teachings
regarding migration of gold through silicon dioxide are not particularly
germane to the rejection because the applied prior art combination involves
nickel and partially oxidized thin metal film. We also note that Nicolet was
published in 1978 whereas Ghosh was published in 2009. As such, Ghosh is
a better indicator of what a person of ordinary skill in the art at the time of
the invention would have understood as being the state of the art.
Appellants also argue that Ghosh does not teach a metal/oxide layer
combination that is less than 5 nm thick would work as a passivation layer
and that Noda requires a 30 nm thick silicon oxide layer. Appeal Br. 8.
Appellants argue that there is therefore "no suggestion or motivation to
substitute for the 30 nm silicon oxide layer 5 in Noda with a less than 5 nm
grown oxide layer." Id. This argument is unpersuasive because, as
explained above, Ghosh teaches that oxidation of the metal layer can, like
the silicon oxide layer of Noda, serve to prevent further oxidation and
thereby passivate the layer. See also, e.g., Ans. 25-26. The Examiner finds
that the ultra thin metal film of Noda is 2 to 7 nm thick. Id. at 26 (citing
Noda ,r,r 34--37). The Examiner finds that the oxidized layer will likewise be
2 to 7 nm thick. Id. As the Examiner notes (id.), this finding is consistent
with the Appellants' explanation as to why the thickness of 5 nm or less
recitation of claim 1 has written description support. Appellants stated:
Claim 1 is amended to recite that the oxide layer is less than
5nm thick. . . . Support for the amendments can be found in the
specification, page 4, lines 27-28 and page 8, line 4, which
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disclose UTMF of 2mn and 5nm, respectively. Since the oxide
is formed by oxidizing the UTMF, and the maximum
UTMF thickness that is disclosed is 5nm, the specification
inherently discloses an oxide layer that is less than 5nm
thick.
July 8, 2015 Applicants' Remarks at 6 (emphasis added). Appellants
therefore do not identify error in the Examiner's determination that
substitution of Ghosh's oxidation process into Noda would necessarily result
in a "combined thickness of the ultra thin metal layer and the oxide layer"
that is 2 to 7 nm thick ( overlapping claim 1 's less than 5 nm or less thickness
recitation).
The Examiner also finds that the thickness of oxide layers is a result
effective variable. Ans. 23. The Examiner finds that the prior art establishes
"[t]he layer must be thin enough to ensure electrical conduction and also
have a thickness that prevents the migration of metals." Id. Appellants do
not dispute these findings. Based on these findings, claim 1 's recitation of
"thickness of the ultra thin metal layer and the oxide layer is 5 nm or less"
does not patentably distinguish the combined teachings of Noda and Ghosh.
See In re Aller, 220 F.2d 454,456 (CCPA 1955) ("[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.").
Because Appellants' arguments do not identify reversible error, we
sustain the Examiner's rejections.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-5 and 8-1 7.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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