Ex Parte Quitoriano et alDownload PDFPatent Trial and Appeal BoardSep 29, 201412262312 (P.T.A.B. Sep. 29, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation