Corning Incorporated et al.

Patent Trials and Appeals Board

Apr 2, 2020

14750047 - (D) (P.T.A.B. Apr. 2, 2020)

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.
14/750,047 06/25/2015 Albert Carrilero SP14-182 1096
22928 7590 04/02/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
SAWDON, ALICIA JANE
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte ALBERT CARRILERO,
PRANTIK MAZUMDER, and VALERIO PRUNERI
_______________
Appeal 2019–004784
Application 14/750,047
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6 and 21–29 of Application

1 In our Decision, we refer to the Specification filed June 25, 2015 (“Spec.”)
of Application 14/750,047 (“the ’047 Application”); the Final Office Action
dated June 13, 2018 (“Final Act.”); the Appeal Brief filed February 13, 2019
(“Appeal Br.”); the Examiner’s Answer dated April 2, 2019 (“Ans.”); and
the Reply Brief filed June 3, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Corning, Inc. as the real party in
interest. Appeal Br. 1.
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14/750,047. See Appeal Br. 5–26; Final Act. 1. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The subject matter of the ’047 Application relates to silicon and silica
nanostructures. Spec. ¶ 2. In particular, the ’047 Application describes
silicon and silica nanotubes and nanowires. Id. These silicon nanostructures
are prepared by reactive ion etching of a silica-containing glass substrate and
oxidation of the silicon nanostructures to produce silica nanostructures. Id.
Claims 1, 25, and 28 are representative of the claims and are
reproduced below from the Claims Appendix of the Appeal Brief with key
limitations emphasized.
1. A composition comprising:
one or more silicon nanostructures; and
a silica-containing glass substrate, the silica-containing
glass substrate comprising one or more nanopillars;
wherein the silicon nanostructures extend from the
nanopillars of the silica-containing glass substrate; and
wherein the silicon nanostructures comprise one or more
nanotubes.
25. A composition comprising:
one or more silicon nanostructures; and
a silica-containing glass substrate, the silica-containing
glass substrate comprising one or more nanopillars;
wherein the silicon nanostructures extend from the
nanopillars of the silica-containing glass substrate; and
wherein the silicon nanostructures comprise one or more
nanowires.
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28. The composition of claim 25, wherein the one or more
nanowires has a transparency of at least 75% over an entire
visible spectrum.
Appeal Br. A1, A2, A3 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Guo US 2006/0046480 A1 Mar. 2, 2006
Chang et al.
(“Chang”)
US 2007/0114387 A1 May 24, 2007
Park et al.
(“Park”)
US 2009/0325365 A1 Dec. 31, 2009
R. Esterina et al., “Synthesis of silicon oxide nanowires and
nanotubes with cobalt-palladium or palladium catalysts,” J.
Applied Physics, 112, 024312-1–9 (2012) (hereinafter
“Esterina”).3
Y.Q. Fu et al., “Deep reactive ion etching as a tool for
nanostructure fabrication,” J. Vac. Sci. Technol. B, 27(3),
1520–26 (2009) (hereinafter “Fu”).
REJECTIONS
The Examiner maintains the following rejections:4
1. Claim 28 under 35 U.S.C. § 112(a) for failing to comply with the
written description requirement. Final Act. 4.

3 The Examiner refers to this reference by the name of the second listed
author, “Liu.”
4 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statutes.
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2. Claims 1–3, 6, and 21–24 under 35 U.S.C. § 103 as obvious over
Fu, in view of Esterina, and further in view of Chang. Final Act.
4–8.
3. Claims 3–5 under 35 U.S.C. § 103 as obvious over Fu, in view of
Esterina, Chang, and further in view of Guo, as evidenced by Park.
Final Act. 8–10.
4. Claims 25–29 under 35 U.S.C. § 103 as obvious over Fu, in view
of Chang. Final Act. 10–12.
DISCUSSION
Ground 1: Rejection of claim 28 as lacking written description
support
The Examiner finds that the claim term “one or more nanowires has a
transparency of at least 75% over an entire visible spectrum” (claim 28)
lacks written description in the original disclosure. Final Act. 4; Ans. 12–
13.
Appellant argues that paragraphs 73, 74, and 81 of the Specification
support the claim terms. Appeal Br. 5–6; Reply Br. 2–3.
We give claims their broadest reasonable scope consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). The words used in a claim must be read in light of the
specification, as it would have been interpreted by one of ordinary skill in
the art at the time of the invention. Id.
The Specification describes that “a composition comprising the silica
nanotubes and/or nanowires extending from a surface of the silica-
containing glass substrate may have a transparency over the entire visible
spectrum of . . . at least about 75%.” Spec. ¶ 81 (emphasis added). As
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Appellant argues, this sentence does not require that the composition
includes the silica-containing glass substrate. Reply Br. 2–3. Thus, the
described transparency property is limited to the silica nanotubes and/or
nanowires.
One of ordinary skill in the art at the time of the invention would have
understood that the claimed one or more nanowires has a transparency of at
least 75%.
We do not sustain the Examiner’s rejection of claim 28 as lacking
written description in the original application.
Ground 2: Rejection of claims 1–3, 6, and 21–24 as obvious over Fu,
in view of Esterina, and further in view of Chang
Appellant argues patentability of claims in this rejection on the basis
of limitations recited in claim 1. See Appeal Br. 6–15. We select claim 1 as
representative. Claims 2, 3, 6, and 21–24 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds Fu teaches, inter alia, a composition comprising
silicon nanowires or nanotubes growing on silicon nanopillars, which are
grown on a silica substrate. Final Act. 5. The Examiner finds that Fu does
not disclose that the silica substrate is a glass substrate. Id. However, the
Examiner finds that “Chang, in the analogous field of metal catalyzed silicon
nanostructure growth . . . , discloses substrates including fused silica glass.”
Id. at 6 (citing Chang ¶¶ 6, 36). The Examiner concludes that
[o]ne of ordinary skill in the art before the effective filing date
of the claimed invention would have found it obvious for the
substrate of Fu to be a fused silica glass substrate as disclosed
by Chang, as fused silica glass can withstand the rigors of metal
catalyst deposition and silicon nanoparticle growth conditions.
Final Act. 6 (citing Chang ¶ 36).
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Appellant argues that Chang is direct to non-analogous art, thus
cannot be used to preclude patentability under § 103. Appeal Br. 7.
“Whether a reference in the prior art is ‘analogous’ is a fact question.”
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992); see also Scientific Plastic
Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014) (“The
analogous art inquiry is a factual one, requiring inquiry into the similarities
of the problems and the closeness of the subject matter as viewed by a
person of ordinary skill.”). Furthermore, the scope of analogous art is to be
construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of
analogous art broadly, stating that ‘familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.’
Id. at 402 . . . (emphasis added).”).
To label a reference as analogous art “merely connotes that it is
relevant to a consideration of obviousness under § 103 as ‘prior art.’” In re
Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Two separate tests define the
scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Appellant contends that Chang is not from same field of endeavor as
the present invention: Chang relates to substrates for Matrix Assisted Laser
Desorption Ionization (MALDI) to produce ions for mass spectrometry,
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while the present invention relates to “silicon nanostructure(s) that include
nanotube(s) extend[ing] from nanopillar(s) of a silica-containing glass
substrate.” Appeal Br. 9. Appellant also argues that Chang is not
reasonably pertinent because it is directed to using MALDI substrates to
enhance light absorption by a matrix or analyte for desirable mass
spectrometry sensitivity, which is not relevant to the problem of fabricating
nanowires and nanotubes. Id. at 12. Appellant contends that Chang’s
disclosure of the substrate’s suitability “to withstand the rigors of metal
catalyst deposition and silicon nanoparticle growth condition for MALDI
substrate manufacturing,” is irrelevant to fabricating nanowires and
nanotubes because “Chang specifically defines a ‘nanoparticle’ to be ‘a
spheroidal nanostructure.’” Id. at 13 (citing Chang ¶¶ 30, 36); see also
Reply Br. 3–4.
Even were Chang’s MALDI mass spectrometry not within the field of
the instant inventor’s endeavor, Chang is reasonably pertinent to the
particular problem with which the inventor is involved. See Bigio, 381 F.3d
1325. Chang broadly defines the term “nanostructure” as “a structure that
includes at least one dimension in the nm range,” including, but “not limited
to, nanoparticles.” Chang ¶ 29; see also id. ¶ 6 (disclosing an embodiment
comprising “a metal nanostructure catalyst layer disposed on the [MALDI]
substrate, wherein the metal nanostructure catalyst layer includes . . . a
silicon nanostructure layer disposed on the metal nanostructure catalyst
layer.” (Emphasis added)). The Specification similarly describes an
invention directed to the problem of preparing a composition comprising
silicon or silica nanostructures on a glass substrate. Spec. ¶¶ 4, 6, 71, 79.
Therefore, Appellant’s contention that Chang is non-analogous art because
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Chang limits a “nanoparticle” to be “a spheroidal nanostructure” is
unpersuasive of reversible error by the Examiner.
Appellant also argues that Chang’s silicon dioxide layer would have
crushed Fu’s nanowires or nanotubes, thereby rendering Fu unsatisfactory
for its intended purpose. Reply Br. 4–5. To justify combining reference
teachings in support of a rejection it is not necessary that a device shown in
one reference can be physically inserted into the device shown in the other.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). It is well established that the
obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985); see also Keller, 642 F.2d at 425 (stating “[t]he
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
We find Chang is analogous art to claim 1 and the instant invention
because the reference is, at a minimum, reasonably pertinent to silicon
nanostructures. We agree with the Examiner’s analysis that the combined
references teach all elements of claim 1. Therefore, we sustain the rejection
of claim 1. We also sustain the rejection of claims 2, 3, 6, and 21–24.
Ground 3: Rejection of claims 3–5 as obvious over Fu, in view of
Esterina and Chang, and further in view of Guo, as evidenced by Park
The Examiner rejects claims 3–5, which depend from claim 1, as
obvious over Fu, in view of Esterina and Chang, and further in view of Guo,
as evidenced by Park. Final Act. 8–10. Appellant argues against the
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rejection of claims 3–5 “for at least the reasons set forth above with respect
to independent claim 1, and further in view of its own features.” Appeal Br.
16–17. Because we find no reversible error in the rejection of claim 1—and
Appellant fails to identify or explain the patentability of the dependent
claims based on their specific features—we sustain the rejection of claims 3–
5.
Ground 4: Rejection of claims 25–29 as obvious over Fu, in view of
Chang
Claims 26–29, which depend from claim 25, were rejected as obvious
over Fu, in view of Chang. Final Act. 10–12. Appellant argues patentability
of claims in this rejection on the basis of limitations recited in both claims 1
and 25. See Appeal Br. 17–25. We select claim 25 as representative.
Claims 26–29 stand or fall with claim 25. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments for patentability of claim 25 in this rejection
are substantially similar to arguments for patentability of claim 1. Compare
Appeal Br. 17–24, with id. 7–14; see also Reply Br. 5–6. We sustained the
rejection of claim 1, and, therefore, for the same reasons, sustain the
rejection of claims 25–29.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
28 112(a) Written Description 28
1–3, 6,
21–24
103 Fu, Esterina, Chang 1–3, 6, 21–24
3–5 103 Fu, Esterina, Chang,
Guo, Park
3–5
25–29 103 Fu, Chang 25–29
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Overall
Outcome
1–6, 21–29
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED