Ex Parte Gaynor et al

Patent Trial and Appeal Board

Jul 24, 2018

14205001 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/205,001 03/11/2014
43850 7590 07/26/2018
MORGAN, LEWIS & BOCKIUS LLP (SF)
One Market, Spear Street Tower, Suite 2800
San Francisco, CA 94105
FIRST NAMED INVENTOR
Whitney Gaynor
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.
103721-5001-US 3316
EXAMINER
SIMPSON, LIXI CHOW
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
sfipdocketing@morganlewis.com
donald.mixon@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WHITNEY GAYNOR and GEORGE BURKHARD
Appeal 2018-002156
Application 14/205,001
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-12, which constitute all the claims
pending in this application. Claims 13-19 were cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Sinovia Technologies.
App. Br. 3. Sinovia Technologies is the Applicant for the instant patent
application. See Bib. Data Sheet.
Appeal 2018-002156
Application 14/205,001
STATEMENT OF THE CASE
Appellants invented a composite transparent conductive film
including a layer of photoresist material and an inorganic mesh. Abstract;
Spec. ,r,r 2, 5-6. 2 In one embodiment, the composite conductive film is
patterned using a lithographic process. Spec. ,r,r 63---66; Figs. 3A-3C.
Claim 1, reproduced below, is illustrative:
1. A patternable composite conductive film,
compnsmg:
a photoactive layer of photoresist material, wherein the
photoactive layer of photoresist material has not been patterned
and the photoresist material is a material other than poly(methyl
methacrylate ); and
an inorganic mesh comprising a plurality of particles of
an inorganic material;
wherein the plurality of particles of the inorganic mesh is
embedded within and confined to a top surface region of the
photoactive layer of photoresist material having a thickness that
is less than a full thickness of the photoactive layer of
photoresist material; and
the photoactive layer of photoresist material and the
inorganic mesh are arranged to form the patternable composite
conductive film, wherein the patternable composite conductive
film is substantially transparent to optical light.
THE REJECTIONS
The Examiner rejected claims 1 and 3-12 under 35 U.S.C. § 103 as
being unpatentable over by Young et al. (US 2012/0132930 Al, published
2 Throughout this opinion, we refer to (1) the Specification filed Apr. 20,
2016; (2) the Final Rejection mailed Apr. 14, 2017 ("Final Act."); (3) the
Appeal Brief filed Aug. 28, 2017 ("App. Br."); (4) the Examiner's Answer
mailed Nov. 28, 2017 ("Ans."); and (6) the Reply Brief filed Dec. 19, 2017
("Reply Br.").
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Appeal 2018-002156
Application 14/205,001
May 31, 2012) and Kunwar et al. (US 2004/0023253 Al, published Feb. 5,
2004). Final Act. 2---6.
The Examiner rejected claim 2 under 35 U.S.C. § 103 as being
unpatentable over by Young, Kunwar, and Allemand et al. (US
2008/0143906 Al, published June 19, 2008). Final Act. 7.
THE OBVIOUSNESS REJECTION OVER YOUNG AND KUNW AR
The Examiner finds that Young discloses many recited elements of
independent claim 1 including, among other things, a patternable composite
conductive film comprising two elements arranged to form the patternable
composite conductive film, namely ( 1 )a photoactive layer of photoresist
material that has not been patterned, and (2) an inorganic mesh. Final Act.
2-3. According to the Examiner, Young's composite conductive film prior
to an application of a photomask with light is a patternable composite
conductive film. Ans. 4--5. Although the Examiner acknowledges that
Young does not explicitly disclose that the photoresist material is not a
material other than poly(methyl methacrylate) (PMMA), the Examiner cites
Kunwar for teaching this feature in concluding that the claim would have
been obvious. Final Act. 3--4.
Appellants argue, among other things, that Young does not arrange a
photoactive layer of photoresist material that has not been patterned, and an
inorganic mesh to form a patternable composite conductive film.
Reply Br. 3-7. According to Appellants, because Young's additives are
embedded within a photoresist after patterning the photoresist, the
photoresist is no longer one that has not been patterned when the additives
are embedded. Id. at. 6-7. Appellants add that the Examiner's obviousness
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Application 14/205,001
conclusion is improper because Young's only specific photoresist is PMMA
photoresist, and Kunwar is cited to merely to demonstrate an undisputed
existence of photoresists other than PMMA. App. Br. 14.
ISSUES
I. Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Young teaches or suggests a patternable composite conductive film
comprising a photoactive layer of photoresist material that has not been
patterned, and an inorganic mesh, wherein the photoactive layer of
photoresist material and the inorganic mesh arranged to form the patternable
composite conductive film?
II. Is the Examiner's proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion?
ANALYSIS
We begin by noting that the Examiner's reliance on the secondary
reference to Kunwar is undisputed, as is the cited references' combinability.
Rather, as noted above, this dispute turns solely on the Examiner's reliance
on Young. Therefore, we confine our discussion to Young.
To resolve the question of patentability under§ 103, we begin by
construing the term "patternable." At the outset, we note Appellants' clear
shift between the Appeal Brief and the Reply Brief concerning the term
"patternable." Appellants' Arguments section of the Appeal Brief begins
with an argument that a patterned conductive film is no longer necessarily
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Application 14/205,001
"pattemable." App. Br. 7. In the Reply Brief, however, Appellants assert it
is unnecessary for us to construe the term "pattemable." Reply Br. 3.
Although this clear shift between the Appeal Brief and the Reply
Brief of the term "pattemable" is puzzling, we are nonetheless unpersuaded
by Appellants' arguments. Appellants' Specification does not recite the
term "pattemable," let alone define the term so as to limit our interpretation. 3
We, therefore, construe the term "pattemable" in accordance with its plain
meamng.
The term "pattern" is defined as "[a] consistent, characteristic form,"
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1329 (n.
def 5) (3rd ed. 1992); and the suffix "-able," in tum, is defined as "capable
... of," id. at 4 (suff. def 1 ). Therefore, under its broadest reasonable
interpretation, something that is "pattemable" is that which can be patterned.
Thus, Appellants' argument that a patterned conductive film is no
longer a "pattemable" film (App. Br. 7) is unavailing and not commensurate
with the scope of the claim, which does not preclude a patterned conductive
film capable of further patterning. That is, despite the fact that a film has
already been patterned, it is nonetheless "pattemable" at least to the extent
that it can be patterned further. Accord Ans. 4 ( construing a "pattemable"
conductive film as one that is not only pattemable during manufacturing, but
also capable of further patterning by other methods).
Nor do we find availing Appellants' contention that "the unpattemed
photoresist (along with the 'inorganic mesh') is the pattemable [composite]
3 Notably, the term "pattemable" does not appear in the claims as originally
filed, but rather was added during prosecution. See Response to Office
Action and Substance of Interview 2 (mailed Oct. 27, 2015).
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Application 14/205,001
conductive film." App. Br. 7 (citing Spec. ,r 36). To the extent Appellants
contend the unpatterned photoresist and the inorganic mesh are the only
elements of the patternable composite conductive film, such contention is
not commensurate with the scope of the claim which does not preclude
elements other than the unpatterned photoresist and the inorganic mesh as
part of the patternable composite conductive film. That claim 1 's
transitional term "comprising" is presumptively open-ended only
underscores this conclusion. See Gillette Co. v. Energizer Holdings Inc.,
405 F.3d 1367, 1371 (Fed. Cir. 2005).
Turning to the rejection, the Examiner finds that Young at least
suggests a patternable composite conductive film before light is applied to a
photomask. Ans. 4--5 (citing Young ,r 188). To be sure, this spatial control
technique in Young's paragraph 188 yields patterns and, therefore, produces
patterned films to which additives are embedded as Appellants indicate. See
App. Br. 5-7. Nevertheless, Appellants do not persuasively rebut the
Examiner's finding that even patterned films are patternable because they
can be further patterned. See Ans. 4. Therefore, we see no error in the
Examiner's finding that, before light is applied to a photomask, Young's
composite conductive film in paragraph 118 is patternable, at least to the
extent that it can be further patterned using the same or different techniques.
See Ans. 4--5. That is, even if this film was patterned previously, it would
still be further patternable under the Examiner's interpretation. To the
extent that Appellants contend otherwise, there is no persuasive evidence on
this record to substantiate such a contention.
In addition, Young embeds additives into host material surfaces.
Young, Abstract. Young's host material may include a photoresist. Id. ,r 93.
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Application 14/205,001
Young's additives provide desired characteristics, such as electrical
conductivity. Id. ,r,r 54, 57, 68; Fig. 2C. Young, then, at least suggests a
photoresist including a first embedded additive that possesses electrical
conductivity-a composite conductive film.
Young's additives may be embedded in multiple layers of the
photoresist. Id. ,r,r 52, 56; Figs. IF, 2A. Young's additives may also be
unpatterned or patterned across the photoresist. Compare id. ,r 54; Figure
IH (illustrating an example of "additives 164 [that] are not located
uniformly across the host material 166 but rather are patterned."), with id.
,r 95; Fig. IA (illustrating an example of distributing additives randomly").
Young's embedding of additives can be spatially controlled to yield patterns
using a photomask. Id. ,r 188. Young, then, at least suggests that before
using the photomask, the composite conductive film including the first
embedded additive is capable of embedding a consistent, characteristic
second additive using the photomask -a "patternable" composite
conductive film. Thus, contrary to Appellants' argument (Reply Br. 7),
Young's patternable composite conductive film is conductive before
applying the photomask.
And Young's patternable composite conductive film, before using the
photomask, includes a photoresist material that has not been patterned, as
recited in claim 1. Thus, Appellants' argument that by the time additives are
embedded, Young's photoresist was already patterned using the photomask
is unpersuasive. App. Br. 14; Reply Br. 6-7. As noted previously,
Appellants do not persuasively rebut the Examiner's finding that Young's
patternable composite conductive film before applying a photomask with
light includes a photoresist material that has not been patterned using the
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Application 14/205,001
photomask. Ans. 5 (finding that the opaque and non-opaque parts in
Young's photomask create a pattern).
Nor do we find availing Appellants' argument that the Examiner's
obviousness conclusion is improper because Young's PMMA photoresist
disclosed in paragraph 93 is Young's only specific photoresist, and Kunwar
is cited only to demonstrate the undisputed existence of photoresists other
than PMMA. App. Br. 14--15. On this record, combining Kunwar's
photoresist other than PMMA with Young's photoresist that interacts with a
photomask as the Examiner proposes would at least contribute to a different
host material that can interact with a photomask-proposed enhancements to
Young that predictably use prior art elements according to their established
functions to yield a predictable result. See KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007). As Young explains, host materials can be a
variety of different materials. See Young ,r 93.
Lastly, we find unavailing Appellants' contention that there is
ostensibly a fundamental difference between Young's spatially-controlled
embedding of additives and claim 1 's embedding an inorganic mesh in an
unpatterned photoresist, for such arguments are not commensurate with the
scope of the claim. App. Br. 9 (citing Spec. ,r,r 55-57; Figs. 2A-2C). That
is, claim 1 recites no such characteristics of the patternable composite
conductive film, including (1) depositing the inorganic mesh over the entire
unpatterned photoresist's surface, and (2) selling the film as a sheet of
patternable conductive film for a customer to pattern the film using an
abbreviated lithographic process.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3-12 not argued separately with particularity.
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Application 14/205,001
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner's obviousness rejection of claim 2.
Final Act. 7. Because this rejection is not argued separately with
particularity, we are not persuaded of error in this rejection for the reasons
previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1-12 under§ 103.
DECISION
The Examiner's decision in rejecting claims 1-12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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