Ex Parte Carter et al

Patent Trial and Appeal Board

Oct 25, 2017

11279393 (P.T.A.B. Oct. 25, 2017)

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.
11/279,393 04/11/2006 Susan A. Carter C1401.70022US00 8057
23628 7590 10/27/2017
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
Patents_eOfficeAction@WolfGreenfield.com
W GS_eOffice Action @ W olfGreenfield .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSAN A. CARTER and JOHN G. VICTOR
Appeal 2017-001434
Application 11/279,3931
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 9—14, 16, 18—31, 34, and 38. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Sumitomo Chemical
Company Limited. Appeal Br. 2.
Appeal 2017-001434
Application 11/279,393
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a method of making
an electroluminescent device, such as a light-emitting polymer (LEP) device.
Appeal Br. 3. Claim 1, reproduced below, is the only independent claim on
appeal and is illustrative of the claimed subject matter:
1. A method of making an electroluminescent device
comprising:
forming a substantially transparent anode layer;
forming over the anode layer an organic light-emitting
material layer that contains a conjugated polymer; and
screen-printing over the organic light-emitting material
layer a substantially non-transparent cathode, the cathode
comprising:
a plurality of conductive particles; and
an electron transporting polymer material having a lowest
unoccupied molecular orbital (LUMO) energy that is between a
LUMO energy of the light-emitting material layer and a work
function of the cathode.
Appeal Br. 10 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Tang et al. US 4,769,292 Sept. 6, 1988
(hereinafter “Tang”)
Cowman et al. US 5,235,310 Aug. 10, 1993
(hereinafter “Cowman”)
2 In this opinion, we refer to the Final Office Action dated September 18,
2015 (“Final Act.”), the Appeal Brief filed March 15, 2016 (“Appeal Br.”),
the Examiner’s Answer dated August 26, 2016 (“Ans.”), and the Reply Brief
filed October 25, 2016 (“Reply Br.”).
2
Appeal 2017-001434
Application 11/279,393
Odashima et al.
(hereinafter “Odashima”)
US 5,470,607 Nov. 28, 1995
Kuwajima et al.
(hereinafter “Kuwajima”)
US 5,951,918 Sept. 14, 1999
Janusauskas US 5,976,613 Nov. 2, 1999
Bailey US 6,430,810 B1 Aug. 13, 2002
Stupp et al.
(hereinafter “Stupp”)
US 2003/0087533 Al May 8, 2003
Shiang et al.
(hereinafter “Shiang”)
US 2004/0027062 Al Feb. 12, 2004
Liu et al.
(hereinafter “Liu”)
US 2009/0208776 Al Aug. 20, 2009
Bhupendra K. Sharma and Neeraj Khare, Effect of UV exposure on
rectifying behavior of polyaniline/ZnO heterojunction, 28 Semicond.
Sci. and Tech. 125022 (2013) (hereinafter “Sharma”).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 9-12, 16, 18, 21—24, 30, 31, 34, and 38 under
35 U.S.C. § 103 as unpatentable over Shiang, Tang, Bailey, and Janusauskas
with evidence provided by Sharma and Liu. Final Act. 3^4.
Rejection 2. Claims 13, 14, 28, 29, and 34 under 35 U.S.C. § 103 as
unpatentable over Shiang, Tang, Bailey, and Janusauskas further in view of
Stupp. Id. at 7.
Rejection 3. Claim 19 under 35 U.S.C. § 103 as unpatentable over
Shiang, Tang, Bailey, and Janusauskas further in view of Cowman. Id.
Rejection 4. Claim 20 under 35 U.S.C. § 103 as unpatentable over
Shiang, Tang, Bailey, and Janusauskas further in view of Cowman and
Kuwajima. Id. at 8.
3
Appeal 2017-001434
Application 11/279,393
Rejection 5. Claims 26 and 27 under 35 U.S.C. § 103 as unpatentable
over Shiang, Tang, Bailey, and Janusauskas further in view of Odashima.
Id. at 9.
As a sixth rejection, we note that the September 18, 2015, Final Office
Action does not explicitly address claim 25, but the associated Office Action
Summary indicates that claim 25 stands rejected. Final Act. 1. Based on the
record before us, including the Examiner’s discussion of priority relative to
claim 25 (Final Act. 2—3), we understand the Examiner’s rejection of claim
25, as set forth in the August 28, 2015, Office Action at pages 7—8, to be
pending and before us, and the Examiner’s omission of that rejection from
the Final Office Action to be harmless error.
Appellants do not address the Examiner’s separate rejection of claim
25 in briefing. Accordingly, that rejection is sustained.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“It has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellants argue all rejections together, and argue all claims as a
group. See Appeal Br. 3^4. Therefore, consistent with the provisions of 37
4
Appeal 2017-001434
Application 11/279,393
C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all
other claims on appeal stand or fall together with claim 1.
The Examiner finds that Shiang teaches a method of forming an
organic light emitting diode (OLED) having the general structure of claim 1.
Final Act. 4. The Examiner finds that Tang teaches including high work
function material such as silver in an OLED cathode and that it would have
been obvious to combine such material with Shiang to reduce sheet
resistance. Id.
The Examiner finds that Bailey teaches having an electrode layer
comprising “one or more materials selected from a list of materials”
including, for example, silver and doped polyaniline. Id. at 4—5. The
Examiner concludes that it would have been obvious to use the materials of
Bailey as the cathode material of Shiang as a simple substitution of known
materials to yield a predictable result. Id. at 5. The Examiner finds that
Sharma teaches that the p-doped polyaniline will have a lowest unoccupied
molecular orbital (LUMO) value between that of light emitting materials
such as polyfluorene and that of silver. Id.
The Examiner further finds that Janusauskas teaches “that when
forming a rear electrode of similar metal and organic (binder), screen
printing is a known technique.” Id. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art to screen print the
metal and polymer material as a simple substitution of known methods. Id.
Appellants argue that the combined references do not teach “a cathode
comprising a plurality of conductive particles and a polymer material.”
Appeal Br. 5—6; Reply Br. 2—3. As the Examiner finds, however, both
5
Appeal 2017-001434
Application 11/279,393
Bailey and Janusauskas teach electrodes having both metal and polymer.
Final Act. 4—5; Bailey 6:32-42; Janusauskas 4:25—29.
The Examiner further finds that “the JANUSAUSKAS reference
teaches how a combination of metal and polymer can be screen printed to
form an electrode by using inks including metal particles.” Ans. 2. The
preponderance of the evidence supports the Examiner’s position regarding
Janusauskas. Janusauskas suggests printing with “blends of carbon silver or
nickel silver in a binder.'” Janusauskas 4:25—29 (emphases added).
Janusauskas’s teaching of blending metal within the binder suggests metals
in particle form. Appellants provide no argument to the contrary. Reply Br.
3 (merely stating that Janusauskas “provides no such disclosure” with
respect to conductive particles). Moreover, Appellants identify no basis for
construing “particle” in claim 1 so narrowly that it would exclude metal
blended in a binder at a size suitable for screen printing, and, based on the
Specification, we discern no basis for such a narrow construction. See Spec.
110 (stating parties “are usually flat flakes or spheres” (emphasis added)),
112 (indicating particles may precipitate “in a porous gel network”).
Appellants also argue that Sharma does not support that the materials
described by Bailey would have the LUMO value recited by claim 1.
Appeal Br. 6—8. Claim 1 ’s LUMO energy recitation defines a characteristic
of the polymer material of the electroluminescent device which is formed by
claim 1 ’s method. Our reviewing court has held that where “the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.” In re Best, 562 F.2d
6
Appeal 2017-001434
Application 11/279,393
1252, 1256 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (“[W]hen the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.”).
Here, the Examiner’s obviousness combination utilizes the doped
polyaniline suggested by Bailey, a cathode utilizing silver, and known light
emitting materials such as polyfluorene. Final Act. 5. Claim 1 does not
specify particular materials for the recited “electron transporting material,”
“conductive polymer,” or “light-emitting material” having “polymer.” The
materials cited by the Examiner are thus within claim 1 ’s scope. Moreover,
the Specification suggests use of silver and polyaniline. Spec. Tflf 10-11, 27.
The Examiner thus presents a sound basis for believing that the products of
the Appellants and the prior art are the same, and the burden shifts to
Appellants to establish that the prior art products do not have the recited
LUMO energy characteristic.
Appellants do not meet this burden. Rather, Appellants present no
evidence or rationale as to why the prior art combination proposed by the
Examiner would not have the recited LUMO energy characteristic.
Meanwhile, the Examiner presents at least some evidence that the prior art
combination would have this characteristic. Final Act. 5; Ans. 2—3.
Appellants present argument disputing the Examiner’s evidence as to
LUMO energy characteristics (Appeal Br. 6—8; Reply Br. 3—5), but this
argument does not substitute for presenting an affirmative rationale as to
why the characteristics of the prior art and embodiments within the scope of
claim 1 would be different. In re Best, 562 F.2d at 1256.
7
Appeal 2017-001434
Application 11/279,393
Appellants also argue that the Examiner does not explain why the
proposed combination of Shiang, Tang, and Bailey could reasonably have
been expected to successfully result in a material suitable for screen­
printing. Appeal Br. 8—9; Reply Br. 5—6. The Examiner, however, finds that
Janusauskas teaches screen printing is a known technique for forming an
electrode of “similar metal and organic (binder)” as that of the
Shiang/Tang/Bailey combination. Final Act. 5. Appellants do not
persuasively dispute this finding of fact. Janusauskas’s teaching that its
screen printing can work with similar materials provides evidence that a
person of ordinary skill in the art would have had a reasonable expectation
of success in employing this technique, and Appellants present no evidence
to the contrary. Ans. 3. Thus, a preponderance of the evidence supports the
Examiner’s position that there would have been a reasonable expectation of
success in screen-printing to form the cathode of the Shiang/Tang/Bailey
combination.
Because Appellants have not identified Examiner error, we sustain
the rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
9-14, 16, 18-31,34, and 38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
8