C3Nano Inc.

Patent Trials and Appeals Board

Sep 28, 2021

2021003051 (P.T.A.B. Sep. 28, 2021)

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.
14/087,669 11/22/2013 Xiqiang Yang 5074.07US01 7514
62274 7590 09/28/2021
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
11322 86th Ave. N.
Maple Grove, MN 55369
EXAMINER
GILLETT, JENNIFER ANN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
09/28/2021 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):
docket@cfd-ip.com
patents@cfd-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIQIANG YANG, YING-SYI LI,
YUNGYU HUANG, CHRIS SCULLY,
CLIFFORD M. MORRIS, and AJAY VIRKAR
Appeal 2021-003051
Application 14/087,669
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s January 17, 2020 decision to reject claims 1–8, 10–17,
and 37–40 (“Non-Final Action”). A video hearing was held on
September 21, 2021, a transcript of which will be part of the record.
We have jurisdiction under 35 U.S.C. § 6(b).

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
C3nano Inc. (Appeal Br. 3).
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We reverse and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
CLAIMED SUBJECT MATTER
Appellant has two independent claims on appeal. Independent
claim 1 is directed to a coated substrate with a conductive coating–
comprising a fused nanostructured metal network and crosslinked
polymer binder–over at least part of the substrate (Appeal Br. 4).
Independent claim 10 is directed to a conductive film processing
system comprising a metal nanowire ink and a fusing solution (id.).
Claims 1 and 10 are reproduced below from the Claims Appendix:
1. A coated substrate comprising a substrate with a
conductive coating over at least a portion of the substrate
comprising a fused nanostructured metal network and a
crosslinked polymer binder and having a sheet resistance
of no more than about 270 ohms/square, an optical
transmittance through the conductive coating of greater
than about 90% and a haze of no more than about 1%,
wherein the fused nanostructured metal network
comprises nanowire segments fused into the network
with an average diameter of no more than about 40 nm.
10. A conductive film processing system comprising a
metal nanowire ink and a fusing solution, wherein
the metal nanowire ink comprises a first solvent,
from about 0.01 weight percent (wt%) to about 2 wt%
metal nanowires, from about 0.02 wt% to about 5 wt%
crosslinkable organic polymer and from about 0.05 wt%
to about 2 wt% processing additive wherein the metal
nanowires have an average diameter of no more than
about 40 nm, and
the fusing solution comprises a second solvent and
a fusing agent selected from the group consisting of a
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halide anion, or a reducing agent combined with a metal
ion source, or a combination thereof.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Alden et al. US 2007/0074316 A1 March 29, 2007
Allemand US 2011/0192633 A1 August 11, 2011
Magdassi et al.
(Magdassi”)
US 2012/0168684 A1 July 5, 2012
Magdassi et al.
(“Yissum”)
WO 2012/168941 A1 December 13, 2012
REJECTIONS
Claims 1, 2, 4–8, 10–17, and 37–40 are rejected under
35 U.S.C. § 103 over Allemand in view of Alden, Magdassi, and
Yissum.
The rejection of claims 1–8 and 37–38 under 35 U.S.C. § 112(b)
as indefinite has been withdrawn by the Examiner (Ans. 12–13).
OPINION
Claim 1. The Examiner’s findings in connection with claim 1
are set forth in the Non-Final Action at pages 4–7. The Examiner
finds that Allemand teaches a substrate with a conductive coating over
at least a portion of the substrate comprising a nanostructured metal
network and a crosslinked polymer binder and having a sheet
resistance of no more than 270 ohm/square, an optical transmittance
of at least about 90%, and a haze of no more than about 1% (Non-
Final Act. 4, citing Allemand Abstract, ¶¶ 8–12, 21–30, 37, 87–98,
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120–129, Table 1). The Examiner further finds that the
nanostructures have an average diameter of no more than about 40 nm
(Non-Final Act. 5).
The Examiner finds that Allemand does not teach that the
nanostructured metal network is fused, but that Magdassi discloses a
low temperature fusing process for nanowires, and that Yissum
teaches the use of a chemical sintering process to fuse nanoparticles to
improve conductivity (Non-Final Act. 6). The Examiner also explains
how and why a person of skill in the art would have combined the
teachings of Allemand and Magdassi as follows:
Alden, disclosed by Allemand as a suitable process to
prepare the thin film of his invention, teaches treatment
of nanowire coatings comprising 0.05 to 1.4% nanowires,
dispersants, viscosity modifiers, and solvent with heat,
pressure, or chemicals to increase the conductivity of the
coating. Magdassi teaches the use of a sintering agent,
specifically chloride salts and hydrochloric acid in
aqueous solvent (chemical treatment), to increase the
conductivity of a conductive coating comprising
nanoparticles through low temperature sintering.
Magdassi teaches that the sintering temperature limits the
potential substrates in plastic electronics, such as
transparent conductors. Yissum teaches the use of
chemical sintering using chloride salts and hydrochloric
acid in transparent coatings, including patterned
conductors, with transparencies as high as 95%.

Therefore, it would have been obvious . . . to form the
coated substrate of Allemand disclosed as produced
according to Alden which teach[es] the use of heat or
chemical post treatment to increase conductivity, wherein
the silver nanostructure is . . . [fused] using the sintering
agent of Magdassi, motivated by the desire of forming a
conventionally known conductive substrates predictably
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suitable for use with silver nanoparticles and to
predictably improve the conductivity at a low sintering
temperature in order to allow a wider variety of
substrates to be used by formalizing the bonds between
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the metal nanowire without destroying the transparency
as disclosed by Yissum.

(Non-Final Act. 7).
Appellant argues, inter alia, that the combination of Allemand
and Magdassi would not yield the claimed “fused metal
nanostructured network” (Appeal Br. 24). In particular, Appellant
contends that as used in the claims, a “fused metal nanostructured
network” has a specific meaning, namely a unitary structure with
original metal nanowire functions fused and the individual metal
nanowires no longer present (Appeal Br. 22).
It is well established that “the PTO must give claims their
broadest reasonable construction consistent with the specification . . . .
Therefore, we look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted). In this instance, Appellant outlines a number of
instances in the Specification which describe the fused metal
nanostructured network with reference to the formation of joints
between nearby nanowires to form junctions, such that the individual
nanowires are no longer present (Appeal Br. 21–22, citing Spec. 6:13–
21, 17:16–27, 18:1–3, 25:5–14).
We agree with Appellant that the broadest reasonable
construction of the phrase “fused metal nanostructured network” in
light of the Specification is a unitary structure with original metal
nanowire functions fused and the individual metal nanowires no
longer present.
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While Appellant argues that “[n]one of the four cited references
teach a fused metal nanostructured network” (Appeal Br. 23), the
rejection relies on a combination of teachings from the references.
Whether or not this is true, nonobviousness cannot be established by
attacking the references individually when the rejection is predicated
upon a combination of prior art disclosures. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
However, Appellant further argues that while Allemand and
Alden are directed towards the production of transparent conductive
films, Magdassi and Yissum do not pertain to transparent films, at
least in the areas of conductivity, so that (a) person of skill in the art
would not have combined their teachings as required by the rejection,
and (b) applying Magdassi’s processing to Allemand’s system would
result in a non-transparent structure, rendering Allemand’s film
unsuitable for its intended purposed (Appeal Br. 25–27). Appellant’s
arguments are persuasive of reversible error.
Magdassi specifically states that use of its technology results in
“aggregation and coalescence” of nanoparticles on a substrate
(Magdassi ¶ 39). This feature of the process is illustrated, inter alia,
by Magdassi’s Fig. 2, which is reproduced below:
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Magdassi’s Fig. 2 shows a scanning electron microscope
(SEM) image showing the effect of Magdassi’s process
on nanoparticles on a substrate.

Thus, as shown in Magdassi’s Fig. 2, the Magdassi process
results in the nanoparticles agglomerating into larger, more dense
structures. Such structures will absorb and/or scatter light (i.e. not be
transparent and increase haze). This is consistent with the fact that
Magdassi does not express an interest in a transparent conductive film
(notwithstanding that some portions of Magdassi’s film are
transparent).
Thus, notwithstanding the Examiner’s reasoning (Non-Final
Act. 7) a person of ordinary skill in the art would have had a good
reason not to apply Magdassi’s process to Allemand’s system,
because doing so would risk impinging on the transparency of
Allemand’s system, which is a key feature of that system (see, e.g.,
Allemand ¶¶ 6, 20). On balance, the preponderance of the evidence
does not support the Examiner’s determination that a person of skill in
the art would have been motivated to combine Magdassi’s teachings
with Allemand’s teachings. Moreover, a person of skill in the art
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would have had no reasonable expectation that applying Magdassi’s
sintering process to Allemand’s system would result in a transparent
conductor as set forth in claim 1.
Accordingly, we determine that Appellant has demonstrated
reversible error in the rejection of claim 1, and reverse that rejection,
as well as the claims which depend from claim 1.
Claim 10. Claim 10 recites a conductive film processing
system comprising a metal nanowire ink and a fusing solution. The
Examiner finds that Allemand teaches a conductive film processing
system comprising a metal nanowire ink and a solution of a
photosensitive compound (Non-Final Act. 9), and that Magdassi
teaches a sintering agent – which corresponds to the claimed fusing
solution. The Examiner further finds that it would have been obvious
to replace Allemand’s photosensitive compound with Magdassi’s
sintering agent.
We disagree with the Examiner. As discussed above in
connection with claim 1, a person of skill in the art would not have
combined the teachings of Magdassi with those of Allemand because
Allemand is directed to a transparent conductive film and Magdassi’s
process risks the transparency of the final product and does not offer a
reasonable expectation of success.
Thus, we reverse the rejection of claim 10 and the claims which
depend therefrom.

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New Ground of Rejection of dependent claim 2. We impose a
new ground of rejection on claim 2 under 35 U.S.C. § 112(d) for
being in improper dependent form. Claim 1 recites that the claimed
coated substrate has “a sheet resistance of no more than about 270
ohms/square” and an optical transmittance “of greater than about
90%.” Claim 2 depends from claim 1, and recites that the coated
substrate has “a sheet resistance of greater than about 20,000
ohm[s]/sq[uare]” and an optical transmittance “of at least about 90%.”
Therefore, the sheet resistance of the coated substrate of claim 2 must
be greater than 20,000 ohms/square, while the claim from which it
depends limits sheet resistance to no more than 270 ohms/square.
Thus, the sheet resistance recited in claim 2 does not further limit
claim 1, making claim 2 improperly dependent on claim 1.
Similarly, the optical transmittance in claim 2 is “at least about
90%” which is at least a slightly broader range for the optical
transmittance than in claim 1, which requires an optical transmittance
of “greater than about 90%.” Thus, for this additional reason, claim 2
does not further limit claim 1 and is improperly dependent therefrom.
CONCLUSION
The Examiner’s rejections are reversed.
A new ground of rejection is imposed on claim 2.

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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 2, 4–8,
10–17,
37–40
103 Allemand,
Alden,
Magdassi,
Yissum
1, 2, 4–8,
10–17,
37–40

2 112(d) Improper
dependent
form
2
Overall
Outcome
1, 4–8,
10–17,
37–40
2
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same Record. . . .

Further guidance on responding to a new ground of rejection
can be found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; NEW GROUND OF REJECTION; 37 C.F.R. 41.50(B)