Ex Parte ROCKENBERGER et al

Patent Trial and Appeal Board

Jul 25, 2018

14311044 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/311,044 06/20/2014
36872 7590 07/27/2018
CENTRAL CALIFORNIA IP GROUP, P.C.
377 W. FALLBROOK A VENUE
#205
FRESNO, CA 93711
FIRST NAMED INVENTOR
Joerg ROCKENBERGER
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.
IDR0813-D1 6712
EXAMINER
TORNOW, MARK W
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
drewfortney@cencalip.com
records@cencalip.com
terrimahan@cencalip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOERG ROCKENBERGER,
JAMES MONTAGUE CLEEVES, and ARVIND KAMATH
Appeal2018-000435
Application 14/311,044
Technology Center 2800
Before GEORGE C. BEST, JEFFREY R. SNAY, and LiLAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000435
Application 14/311,044
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to "a printed, self-aligned, top-gate thin film
transistor (TFT), in which metal-containing inks can be used for printing the
gate metal" and a process of making such a TFT. Spec. ,r 2. The process is
said to "leverage[] a printed doped glass" in multiple ways. Id. ,r 28. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A thin film transistor (TFT), comprising:
a) a semiconductor thin film layer on a substrate, the
semiconductor thin film layer including a channel region of the
TFT·
' b) a printed doped glass pattern on the semiconductor thin
film layer, wherein the printed doped glass pattern includes a gap
over the channel region of the TFT;
c) a gate electrode in the gap and on or over the channel
region, the gate electrode comprising a gate dielectric film and a
gate conductor thereon, and the gap defining at least one
dimension of at least part of the gate electrode;
d) dopant-containing regions in the semiconductor thin
film layer on opposed sides of the channel region, wherein the
1 The real party in interest is identified as Thin Film Electronics ASA.
Appeal Brief of May 23, 2017 ("App. Br."), 3.
2 Non-Final Office Action of December 23, 2016 ("Non-Final Act."). In this
opinion, we also refer to the Examiner's Answer of August 7, 2017 ("Ans.")
and the Reply Brief of October 5, 2017 ("Reply Br.). The record shows a
Non-Final Rejection of August 27, 2015, a Non-Final Rejection of March
16, 2016 and a Final Rejection of July 25, 2016.
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Application 14/311,044
dopant of the dopant-containing regions is identical to a dopant
of the printed doped glass pattern; and
e) an undoped dielectric layer or a dopant-depleted
passivation layer on or over the dopant-containing regions and/or
the channel region, and adjacent to the printed doped glass
pattern.
App. Br. 31 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Cho
Aoki
US 6,723,587 B2 Apr. 20, 2004
US 2004/0029364 Al Feb. 12, 2004
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. I03(a) (pre-AIA) as being
unpatentable over Aoki in view of Cho. Non-Final Act. 6.
Claims 12-14 are rejected under 35 U.S.C. 112, first paragraph (pre-
AIA), as failing to comply with the written description requirement. Non-
Final Act. 4.
OPINION
Obviousness3
In rejecting claim 1, the Examiner acknowledges that the prior art
doped glass pattern is not one that is a "printed doped glass pattern" as
3 Appellants argue for the patentability of claims 1-11 and 15-20 as a group
without separately arguing for claims 2-11 and 15-20. App. Br. 11-27.
Appellants also do not present separate arguments for the obviousness
rejection of claims 12-14. Id. at 27. Claims 2-20 therefore stand or fall
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Application 14/311,044
recited in claim 1. Non-Final Act. 8. Determining that the claim term
"printed doped glass pattern" is a product-by-process claim term, the
Examiner finds that there is a substantial lack of structural differences
between the materials at issue. Id.
In addition to disputing that "a printed doped glass pattern" is a
product-by-process claim term (App. Br. 25; Reply Br. 2), Appellants
submits a Declaration from Dr. Arvind Karnath ("the Declaration" or
"Deel.") showing, among others, that "the structure and properties of a
printed doped glass pattern is different from the structure and properties of a
photolithographically-patterned doped glass layer, even when the two doped
glasses have a composition and dimensions that are as similar as possible to
each other." Deel. ,r 18. To show that a "printed doped glass pattern" is one
"having electrical, chemical, structural and/or physical characteristics and/or
properties different from and more variable than a doped glass pattern
defined by conventional photolithographic processing," Dr. Karnath
compares parameters such as the resistivity and capacitance of a printed
doped glass pattern and a photolithographically patterned material. Id.
,r,r 12-17.
The Examiner finds the Declaration insufficient to structurally
distinguish the recited "printed doped glass pattern" because it "raises the
possibility that the structure formed by printing could be different, but not
that it must be[.]" Ans. 3. More specifically, the Examiner points to
paragraphs 13-15, 17, 20-23 of the Declaration where Dr. Karnath uses the
term "generally" or "in general" to show that Appellants failed to carry the
with claim 1 with respect to the obviousness rejection. See id. at 11-27; see
also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 14/311,044
burden that the printing method "necessarily produces an unobvious
structural difference." Id. at 3--4 (citing MPEP § 2113).
MPEP § 2113 provides:
The structure implied by the process steps should be considered
when assessing the patentability of product-by-process claims
over the prior art, especially where the product can only be
defined by the process steps by which the product is made, or
where the manufacturing process steps would be expected to
impart distinctive structural characteristics to the final product.
"[The] patentability of a claim to a product does not rest merely on a
difference in the method by which that product is made. Rather, it is the
product itself which must be new and unobvious." In re Pilkington, 411
F.2d 1345, 1348 (CCPA 1969).
The record before us supports, by a preponderance of the evidence, a
structural distinction of the recited printed doped glass pattern. See Deel.
,r,r 12-17. We, therefore, cannot sustain the Examiner's obviousness
rejection. 4
Written Description
The claim limitation common to the written description rejection of
claims 12-14 is "an interlayer dielectric film over the printed doped glass
pattern" which the Examiner finds unsupported in the specification. Non-
Final 11.
The specification provides, for example, a TFT having "a passivation
or barrier layer 25 (which can be a dopant-depleted layer or an undoped
4 The Examiner states that Appellants' argument in support of the structural
distinction may raise enablement issues. Ans. 4. Because the Examiner
explicitly states that an enablement rejection has not been made (id.), we do
not reach this issue.
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passivation layer)" that "effectively prevents diffusion of the dopant from
the doped glass 24 at elevated temperatures into adjoining structures ( e.g.,
... the subsequently formed gate dielectric 23 and/ or interlayer dielectric)."
Spec. ,r 59.
The Examiner determines that the additional "interlayer dielectric
film" is the same element as the "undoped dielectric layer or a dopant-
depleted passivation layer" recited in claim 1. Non-Final Act. 4.
Specifically addressing paragraph 59 of the specification reproduced above,
the Examiner states that the phrase "gate dielectric ... and/or interlayer
dielectric" is not clear as to whether it "is a single layer, with different
sections of the single layer referred to as 'gate dielectric' and 'interlayer
dielectric' or whether in fact two separate layers are intended by that
language." Ans. 6. The Examiner also points to Figures 3A-3C finding that
these figures do not illustrate an "interlayer dielectric." Id.
To comply with the written description requirement, the specification
"must describe the invention sufficiently to convey to a person of skill in the
art that the patentee had possession of the claimed invention at the time of
the application, i.e., that the patentee invented what is claimed."
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345
(Fed. Cir. 2005). The Federal Circuit has explained that:
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. . . . The
content of the drawings may also be considered in determining
compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
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In this case, the text of the specification describes that both gate
dielectric 23 and "interlayer dielectric" may be formed or that either gate
dielectric 23 or an "interlayer dielectric" may be formed. Spec. ,r 59. The
figures in the specification are not required to illustrate every embodiment of
the claim. The Examiner's written description rejection is reversed.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a)
(pre-AIA) is reversed.
The Examiner's rejection of claims 12-14 under 35 U.S.C. § 112, first
paragraph (pre-AIA) for failure to comply with the written description
requirement is reversed.
REVERSED
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