Ex Parte Quitoriano et al

Patent Trial and Appeal Board

Sep 29, 2014

12262312 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte NATHANIEL QUITORIANO, MARCO FIORENTINO, and
DAVID FATTAL
____________

Appeal 2012-008903
Application 12/262,312
Technology Center 2800
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1–5, 7–14, and 16–21. We have jurisdiction under
35 U.S.C. § 6.
STATEMENT OF THE CASE
Claims 1 and 16 are representative of the subject matter on appeal and
are set forth below (with text in bold for emphasis):
1. An optical modulator comprising:

Appeal 2012-008903
Application 12/262,312

2
a first layer, said first layer being transparent or semitransparent over
a range of optical wavelengths;

a modulation layer comprising nanoparticles embedded in a matrix,
said modulation layer being contiguous to said first layer;

first and second electrodes, said first and said second electrodes being
configured such that a voltage potential across said first and said second
electrodes creates an electrical field through said modulation layer;

wherein said nanoparticles in said matrix are under a
compressive or tensile strain such that a band gap of said nanoparticles
is shifted in response to said compressive or tensile strain.

16. A method for forming a nanoparticle Quantum Confined Stark Effect
(QCSE) modulator comprising:
obtaining and preparing a substrate;
forming sub-layers on said substrate;
determining a wavelength of light that said modulator is to
modulate;
forming a nanoparticle modulator layer, said nanoparticle
modulator layer being an electrical insulator and having a thickness of
less than said wavelength of light said nanoparticle QCSE modulator is
designed to modulate; and
depositing upper layers over said nanoparticle modulator layer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Steimle et al. US 2005/0059213 A1 Mar. 17, 2005
(hereafter “Steimle”)
Djordjev et al. US 2006/0078254 A1 Apr. 13, 2006
Appeal 2012-008903
Application 12/262,312

3
(hereafter “Djordjev”)
Dohrman et al. US 7,180,648 B2 Feb. 20, 2007
(hereafter “Dohrman”)
Chen US 2008/0017863 A1 Jan. 24, 2008

THE REJECTIONS
1. Claims 1, 2, 5, 7, 8, and 11–14 are rejected under 35 U.S.C. § 102(b)
as anticipated by Dohrman.
2. Claims 3, 4, 16, 17, and 21 are rejected under 35 U.S.C. § 103(a) over
the teachings of Dohrman.
3. Claims 9 and 18 are rejected under 35 U.S.C. § 103(a) over the
combined teachings of Dohrman and Chen.
4. Claim 10 is rejected under 35 U.S.C. § 103(a) over the combined
teachings of Dohrman and Djordjev.
5. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) over the
combined teachings of Dohrman and Steimle.
ANALYSIS
We REVERSE the rejections for the reasons provided by Appellants
in their Brief and Reply Brief. We add the following for emphasis.

Rejection 1
Appellants argue that Dohrman does not anticipate the claimed
invention, in particular, the aspect of the claims pertaining to “wherein
Appeal 2012-008903
Application 12/262,312

4
said nanoparticles in said matrix are under a compressive or tensile
strain such that a band gap of said nanoparticles is shifted in response
to said compressive or tensile strain.” Appeal Br. 10–14. Reply Br.
4–8. We agree for the reasons of record and below.
While we appreciate the Examiner’s position that the quantum dots of
Dohrman experience some amount of compressive or tensile strain, the
Examiner has not sufficiently pointed to evidence in the record to support
that the amount achieves the claimed function of “such that a band gap of
said nanoparticles is shifted in response to said compressive or tensile strain”
for the reasons provided by Appellants in the record. Appeal Br. 10–14.
Reply Br. 4–7. For example, the Examiner has not explained how the
structure and materials of Dohrman, and the manner in making according to
Dohrman, are the same as Appellants’ invention such that the claimed
function is necessarily achieved. “[When] relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Inherency “may not
be established by probabilities or possibilities,” but must instead be
established by disclosure “sufficient to show that the natural result flowing
from the operation as taught would result in the performance of the
questioned function.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
In view of the above, we reverse Rejection 1. We also reverse
Rejections 3, 4, and 5 for similar reasons because the other applied
references in these rejections are not relied upon by the Examiner to cure the
aforementioned deficiencies of Dohrman.
Appeal 2012-008903
Application 12/262,312

5

Rejection 2
With regard to independent method claim 16, Appellants argue that
the Examiner incorrectly interprets this claim, in particular, with regard to
the order of steps performed. Appellants argue that the step of “determining
a wavelength of light that said modulator is to modulate” is followed by the
step of “forming a nanoparticle modulator layer, said nanoparticle modulator
layer being an electrical insulator and having a thickness of less than said
wavelength of light said nanoparticle QCSE modulator is designed to
modulate” for the reasons expressed on pages 15–16 of the Appeal Brief and
on pages 9–11 of the Reply Brief. Therein, Appellants convincingly explain
that these steps must be conducted in this order because the wavelength of
the light that the modulator is to modulate must necessarily be determined
before the step of forming the nanoparticle modulator layer “having a
thickness of less than said wavelength of light” (claim 16, emphasis added).
Thus, in the instant case, claim 16 provides a description of a step that
inherently implies an order. We note that a description of a particular step
inherently implies the order when a claimed step refers to the result of
performing another claimed step. E-Pass Techs., Inc. v. 3Com Corp., 473
F.3d 1213, 1222 (Fed. Cir. 2007).
In view of the above, we thus disagree with the Examiner’s
interpretation as discussed by the Examiner on pages 20-21 of the Answer,
for the reasons provided by Appellants in the record. Because of the flawed
interpretation of the claim, the Examiner’s rejection does not address every
element of the claim, and we therefore reverse Rejection 2. “[T]he prior art
Appeal 2012-008903
Application 12/262,312

6
reference (or references when combined) must teach or suggest all the claim
limitations.” In re Royka, 490 F.2d 981, 985 (CCPA 1970).
CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.
REVERSED

cdc