KING ABDULLAH UNIVERSITY OF SCIENCE AND TECHNOLOGYDownload PDFPatent Trials and Appeals BoardMay 28, 20202019004104 (P.T.A.B. May. 28, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/439,655 04/29/2015 Basma El Zein 0338-068-2/2012-054-03 6648 144099 7590 05/28/2020 Patent Portfolio Builders, PLLC P.O. Box 7999 Fredericksburg, VA 22404-7999 EXAMINER GOLDEN, ANDREW J ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 05/28/2020 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): Mailroom@ppblaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BASMA EL ZEIN, YINGBANG YAO, ELHADJE DOGHECHE, SAMIR BOULFRAD, and GHASSAN JABBOUR ____________ Appeal 2019-004104 Application 14/439,655 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MONTÉ T. SQUIRE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 14–34, 43, and 44. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the King Abdullah University of Science and Technology. Appeal Br. 2. Appeal 2019-004104 Application 14/439,655 2 The invention relates to a method for producing nanometer sized materials through the use of a seed layer grown in the presence of oxygen at a pressure of 10 mTorr. Spec. 2. Claim 14 illustrates the subject matter on appeal and is reproduced below: 14. A method for producing nanometer sized materials comprising: exposing a target to a laser source to remove material from the target and deposit the removed material onto a surface of a substrate to grow a thin film, as a seed layer, in the presence of oxygen at a pressure of 10 mTorr; and exposing the target to the laser source to remove further material from the target and deposit the further removed material onto the seed layer to grow nanometer sized materials at a pressure of between 2.5 Torr and 10 Torr in a vacuum chamber. The Examiner maintains the following rejections from the Final Office Action dated June 15, 2018 (Final Act. 7–19; Ans. 3–15): I. Claims 14–17, 21, 22, 24–30, 32, and 33 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Premkumar (T. Premkumar et al., “Optical and Field-Emission Properties of ZnO Nanostructures Deposited Using High-Pressure Pulsed Laser Deposition,” ACS Applied Materials and Interfaces, 2 (10) 2863–69 (2010)), Li (Chun Li et al., “Effect of Seed Layer on Structural Properties of ZnO Nanorod Arrays Grown by Vapor-Phase Transport,” J. Phys. Chem., 112 (4) 990–95 (2008)), and Sun (X. W. Sun and H. S. Kwok, “Optical Properties of Epitaxially Grown Zinc Oxide Films on Sapphire by Pulsed Laser Deposition,” J. of Applied Physics, 86 (1) 408–11 (1999)). II. Claims 18–20 and 23 rejected under pre-AIA 35 U.S.C. §103(a) as unpatentable over Premkumar, Li, Sun, and Yi (US 2008/0107876 A1, published May 8, 2008). Appeal 2019-004104 Application 14/439,655 3 III. Claims 31 and 34 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Premkumar, Li, Sun, and Liu (US 2008/0292808 A1, published November 27, 2008). IV. Claims 43 and 44 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Premkumar, Li, Sun, and Reddy (US 2008/0110494 A1, published May 15, 2008). OPINION After review of the respective positions that Appellant presents in the Appeal and Reply Briefs and the Examiner presents in the Final Office Action and the Answer, we REVERSE the Examiner’s prior art rejection of claims 14–34, 43, and 44 under 35 U.S.C. § 103(a) for the reasons the Appellant presents. We add the following. Independent claim 142 is directed to a method for producing nanometer sized materials by exposing a target to a laser source to remove material from the target and depositing the removed material onto a surface of a substrate to grow a thin film as a seed layer in the presence of oxygen at a pressure of 10 mTorr; and exposing the target to the laser source to remove further material from the target and depositing the further removed material onto the seed layer to grow nanometer sized materials at a pressure of between 2.5 Torr and 10 Torr in a vacuum chamber. The Examiner finds that Premkumar teaches a method of producing nanometer sized materials by exposing a target to a laser source to remove material from the target and depositing the removed material onto a surface of a substrate at an oxygen pressure of 7 Torr in a vacuum chamber. Final Act. 8–9; Premkumar 2863–64. The Examiner finds that Premkumar 2 We limit our discussion to independent claim 14. Appeal 2019-004104 Application 14/439,655 4 discloses that, during the laser ablation process at an oxygen pressure of 7 Torr, nanoparticles are formed in the gas phase that act as nucleation sites on the substrate during the growth of nanorods. Final Act. 8–9; Premkumar 2865. The Examiner finds that Premkumar’s formation of nanoparticles as nucleation sites is tantamount to forming a seed layer. Final Act. 8–9. Appellant does not dispute this finding. Appeal Br. 5. The Examiner finds that Premkumar does not teach forming a distinct seed layer at a pressure of 10 mTorr, which is different from the growth pressure of the nanometer sized materials. Final Act. 9. The Examiner finds that Li teaches a method of producing nanomaterials by first forming a seed layer substrate using a low pressure pulsed laser deposition (PLD) method at an oxygen pressure of 0.02 Pa (~0.15 mTorr) followed by a step of forming the nanomaterials. Final Act. 9; Li 991. The Examiner determines that it would have been obvious to one having ordinary skill in the art to modify Premkumar’s method to include a distinct step of forming a seed layer at a low oxygen pressure in view of Li’s teachings that the properties of the formed seed layer lead to well-aligned nanorod arrays with uniform diameters and narrow density distributions. Final Act. 10; Li 664. The Examiner relies on Sun to teach that it is known to grow a ZnO film layer using low pressure PLD at an oxygen pressure of 10 mTorr. Final Act. 10; Sun 408. Appellant argues that Premkumar does not disclose or suggest growing a distinct thin film as a seed layer using a laser source in the presence of oxygen at a pressure of 10 mTorr. Appeal Br. 3. Appellant contends that Premkumar instead teaches forming the seed layer film and the nanorods in a continuous deposition process under the same oxygen pressure of approximately 7 Torr. Id. at 4–5. That is, Appellant contends that Appeal 2019-004104 Application 14/439,655 5 Premkumar does not teach or suggests forming a distinct seed layer as claimed. Appellant further asserts that absent the formation of a distinct seed layer in Premkumar, there would be no reason for one skilled in the art to modify Premkumar’s process in light of Li’s teachings to form a distinct seed layer at a pressure different from the pressure at which the nanomaterials are formed. Appeal Br. 8. We agree with Appellant that there is reversible error in the Examiner’s determination of obviousness. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). While both the Examiner and the Appellant recognize that Premkumar’s continuous process of producing nanomaterials forms a seed layer during that process (Final Act. 8–9; Appeal Br. 5), the Examiner does not provide an adequate technical explanation of why one skilled in the art would have modified Premkumar’s continuous process of producing nanomaterials under a single pressure into a two-step process that forms a seed layer at one pressure and forms the nanomaterials at a different pressure, as taught by Li. The Examiner does not explain adequately why Li’s process would be suitable for making Premkumar’s nanomaterials. Thus, the Examiner has not provided adequate reasoning with the requisite rational underpinning explaining how one skilled in the art, absent Appeal 2019-004104 Application 14/439,655 6 impermissible hindsight, would arrive at the claimed invention from the disclosures of the prior art. Accordingly, we REVERSE the Examiner’s prior art rejections of claims 14–34, 43, and 44 under 35 U.S.C. § 103(a) for the reasons the Appellant presents and we give above. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 14–17, 21, 22, 24–30, 32, 33 103(a) Premkumar, Li, Sun 14–17, 21, 22, 24–30, 32, 33 18–20, 23 103(a) Premkumar, Li, Sun, Yi 18–20, 23 31, 34 103(a) Premkumar, Li, Sun, Liu 31, 34 43, 44 103(a) Premkumar, Li, Sun, Reddy 43, 44 Overall Outcome 14–34, 43, 44 REVERSED Copy with citationCopy as parenthetical citation