Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 28, 2018

13637235 (P.T.A.B. Mar. 28, 2018)

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.
13/637,235 09/25/2012 Hye Moon Lee 12-308 1321
34704 7590 03/28/2018
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
03/28/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYE MOON LEE, DONG-WON LEE, and JUNG-YEUL YUN
Appeal 2017-005938
Application 13/637,235
Technology Center 1700
Before JEFFREY B. ROBERTSON, MONTE T. SQUIRE, and
JENNIFFER R. GUPTA, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 7, 8, 12, and 14, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Decision, we refer to the Specification filed September 25, 2012
(“Spec.”); Final Office Action docketed January 27, 2016 (“Final Act.”);
Advisory Action docketed April 13, 2016 (“Adv. Act.”); Appeal Brief filed
June 30, 2016 (“Br.”); and Examiner’s Answer docketed October 24, 2016
(“Ans.”).
2 Appellants identify Korea Institute of Machinery and Materials as the real
party in interest. Br. 2.
Appeal 2017-005938
Application 13/637,235
The Claimed Invention
Appellants’ disclosure relates to a method for manufacturing an
aluminum electrode using a solution process and an aluminum electrode
using the same. Spec. 11, Abstract. Claim 7 is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief (Br. 10):
7. A method for manufacturing an aluminum
electrode using a solution process, the method
comprising:
manufacturing a solution containing an aluminum
precursor (Step A);
coating a first substrate formed of one of an
inorganic material and an organic material non-reactive
with the solution containing an aluminum precursor, with
the solution containing an aluminum precursor (Step B);
heating a second substrate formed of one of an
organic material and an inorganic material, where an
aluminum thin film electrode is to be formed, at a
temperature of 80 to 150°C (Step C); and
after Step C, heating a coated layer through the
heated second substrate, by contacting the coated layer
on the first substrate with the second substrate heated in
Step C, and removing the first substrate (Step D),
wherein the aluminum electrode is formed on the
surface of the second substrate,
wherein a solvent used in Step A has a boiling
point of at most 150°C, and
wherein the aluminum precursor in Step A
comprises A1H3.
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Application 13/637,235
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Brennan US 2,547,371
Bugnet et al., US 4,882,232
(hereinafter “Bugnet”)
Parker et al, US 2007/0211128 Al
(hereinafter “Parker”)
Rockenberger et al., US 2010/0022078 Al
(hereinafter “Rockenberger”)
Apr. 3, 1951
Nov. 21, 1989
Sept. 13, 2007
Jan. 28, 2010
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 7, 8, and 123 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Rockenberger in view of
Bugnet further in view of Parker (“Rejection 1”). Ans. 2; Final Act. 3.
2. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Rockenberger in view of Bugnet and Parker and further in
view of Brennan (“Rejection 2”). Ans. 4; Final Act. 5
3 The Examiner’s Statement of Rejection has been corrected to reflect that
claims 11 and 13 are canceled. See Br. 10-11 (designating claims 9-11 and
13 as “canceled” in the Claims Appendix).
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Application 13/637,235
OPINION
Rejection 1
The Examiner determines that the combination of Rockenberger,
Bugnet, and Parker suggests a method for manufacturing an aluminum
electrode satisfying all of the steps of claim 7 and thus, concludes that the
combination would have rendered the claim obvious. Ans. 2—3 (citing
Rockenberger, Abstract, || 7, 12, 25, 31, 46, 55, 59; Bugnet, Abstract;
Parker, Abstract, 151).
Appellants argue that the Examiner’s rejection should be reversed
because Parker is non-analogous art. Br. 6—8. In particular, Appellants
contend that Parker is not from the same field of endeavor as the claimed
invention and not reasonably pertinent to the particular problem with which
the inventors are involved. Id. at 8—9.
We concur with Appellants’ argument in this regard. 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 Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011)
(citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
We find that Parker is not from “the same field of endeavor” as the
claimed invention and thus, does not meet the first Bigio factor. The
claimed invention is directed to a method for manufacturing an aluminum
electrode using a solution process. Spec. Tflf 1, 11; see also claim 7 (Br. 10).
The Specification discloses that the aluminum electrodes are used as a
cathode material for environmental energy devices requiring ohmic contact,
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Application 13/637,235
such as solar cells and organic LEDs (OLEDs). Spec. H 2—3. The
Specification further discloses that aluminum electrodes manufactured using
the claimed process demonstrate electrical properties competitive with those
of aluminum electrodes manufactured by a vacuum evaporation process (1
10) and the claimed manufacturing method reduces thermal defects of the
electrodes, prevents excessive loss of raw materials, and allows for the
manufacture of electrodes of various sizes (Abstract).
Parker, on the other hand, is directed to an imaging process using
phase change ink for inkjet printing systems. Parker H 1, 10—12. In
particular, Parker discloses an imaging process that includes, among other
steps, selecting an ink having a viscosity that varies over a range of process
temperatures and controlling the viscosity of the ink during printing to match
a selected characteristic of a substrate, such as the gloss or matte
characteristic of a paper sheet. Parker, Abstract, || 48-49, claim 1. Parker
further discloses that:
The present disclosure relates generally to an imaging process
and more particularly relates in embodiments to an imaging
process using a phase change ink.
Parker 11.
As Appellants correctly point out (Br. 7—8), there is no disclosure or
suggestion in Parker regarding the manufacture of an aluminum electrode or
the applicability of its inkjet imaging process to a method for manufacturing
an aluminum electrode using a solution process, as recited in the claims.
The second Bigio factor asks whether the art is “reasonably pertinent
to the particular problem with which the inventor is involved.” Bigio, 381
F.3d at 1325. “A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor’s endeavor, it is one which,
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Application 13/637,235
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992).
For principally the same reasons provided by Appellants at pages 8—9
of the Appeal Brief, we do not find that Parker is reasonably pertinent to the
particular problem with which the inventors are involved. In particular,
based on Parker’s teachings regarding an imaging process using phase
change ink for inkjet printing systems, we are not persuaded that the Parker
reference logically would have commended itself to an inventor’s attention
in considering the problem addressed by the claimed invention. The
Examiner does not meaningfully address Appellants’ arguments regarding
the differences between Parker’s ink transfer process and the claimed
aluminum electrode manufacturing process or provide an adequate technical
explanation for why one of ordinary skill in the art would have been led to
Parker.
The Examiner’s assertions that “Parker . . . teaches an alternative to
forming the pattern coating and both would be expected to produce similar
products with success” (Ans. 5) and “[o]ne skilled in the art would look to
Parker ... to optimize the ink-jet transfer process to provide for precise
pattern coatings” (id at 5) are conclusory and, without more, insufficient to
sustain the Examiner’s findings in this regard. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (holding “rejections on obviousness grounds cannot be
sustained by mere conclusory statements”).
We do not find the Examiner’s discussion at page 5 of the Answer
regarding the Rockenberger reference being analogous art persuasive
because it appears to misapply the two part test in Bigio. Under Bigio, the
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Application 13/637,235
proper tests for determining whether Parker is analogous art should be based
on the comparison between Parker and the claimed invention (see Bigio, 381
F.3d at 1325), and not a comparison between Parker and the Rockenberger
reference.
Thus, we find that the Parker reference fails each of the Bigio factors.
Accordingly, we reverse the Examiner’s rejection of claims 7, 8, and
12 under 35 U.S.C. § 103 as obvious over the combination of Rockenberger,
Bugnet, and Parker.
Rejection 2
Because we find that Parker is non-analogous art and the Examiner’s
Rejection 2 is based on a combination of references that includes Parker, we
reverse the Examiner’s Rejection 2 for the same reasons discussed above for
reversing Rejection 1.
DECISION/ORDER
The Examiner’s rejections of claims 7, 8, 12, and 14 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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