Ex Parte Peumans et al

Board of Patent Appeals and Interferences

Jul 16, 2012

10949375 (B.P.A.I. Jul. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/949,375 09/27/2004 Peter Peumans Y3422-90902 4801
8933 7590 07/17/2012
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
MOWLA, GOLAM
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
07/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER PEUMANS
and
STEPHEN R. FORREST

____________

Appeal 2010-010466
Application 10/949,375
Technology Center 1700
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010466
Application 10/949,375

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Peter Peumans and Stephen R. Forrest, the Appellants,1 seek our
review under 35 U.S.C. § 134(a) of certain rejections (including new
grounds of rejection) of claims 1, 5, 6, and 10-15.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE. Because we are in complete agreement with the
Appellants’ position as expressed in the briefs, we adopt them as our own
and add the following for emphasis.
Regarding the limitation “wherein the mobility of holes in the organic
donor layer is greater than the mobility of electrons in the organic acceptor
layer by a factor of at least 100, and the mobility of holes in the organic
donor layer is greater than 0.001 cm2 / V·sec” in claim 1, the sole
independent claim on appeal, the Examiner relies on two theories.
Specifically, the Examiner asserts:
Since the donor (CuPc[3]) and acceptor (PTCBI[4]) materials of
Forrest as disclosed in column 7, lines 1-12 are the same as

1 The Appellants state that the real party in interest is “The Trustees of
Princeton University.” Appeal Brief filed March 22, 2010 (“App. Br.”) at 2.
The Specification, as amended, also states that the United States has certain
rights in the invention because the invention was made with Government
support under a contract awarded by the Air Force Office of Scientific
Research. Specification (“Spec.”) ¶ [0002]. The Specification further
informs that the invention was made by, on behalf of, and/or in connection
with one or more of Princeton University, The University of Southern
California, and Global Photonic Energy Corporation under a joint
university-corporation research agreement. Id.
2 App. Br. 2; Reply Brief filed July 15, 2010 (“Reply Br.”) at 1; Examiner’s
Answer mailed July 1, 2010 (“Ans.”) at 3-10.
3 Copper phthalocyanine. U.S. Patent 6,198,091 B1 issued March 6, 2001 to
Forrest, et al. (“Forrest”) at column 7, line 3.
4 3,4,9,10-perylenetetracarboxylic-bis-benzimidazole. Forrest at column 7,
lines 7-8.
Appeal 2010-010466
Application 10/949,375

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materials disclosed in paragraph [0047] of instant application,
the donor and acceptor materials of Forrest must inherently
have the same hole and electron mobilities. If different results
are achieved, it must be due to the limitations that are not
currently claimed.
Ans. 7 (emphasis added). The Examiner also argues:
Although Forrest does not explicitly state whether the mobility
of the holes in the organic donor layer being greater than the
mobility of electrons in the organic acceptor layer by a factor of
at least 1000 and the mobility of holes in the organic donor
layer being greater than 1 cm2/Vsec, Forrest explicitly states
that hole mobility of the donor layer depends on the intrinsic
properties such as the crystal symmetry and periodicity of the
organic material (4:20-27) and appropriate crystal symmetry
and periodicity determine appropriate hole mobility. Hence one
skilled in the art recognizes that crystal symmetry and
periodicity are the result effective variables, and therefore, can
determine the optimum hole mobility by determining
appropriate crystal symmetry and periodicity, since it has been
held that discovering an optimum value for a result of effect
variable involves only routine skill in the art (MPEP §
2144.05(ii)).
Id. at 5 (emphasis added).
Neither of the Examiner’s theories is sustainable on this record. Even
if the specific acceptor and donor layers described in Forrest are identified in
the current Specification as suitable materials, that fact in and of itself is
insufficient to establish that the mobility of holes in the organic donor layer
would necessarily be greater than the mobility of electrons in the organic
acceptor layer by a factor of at least 100, as required by claim 1. As pointed
out by the Appellants, App. Br. 6, factors other than the identity of the
materials, such as deposition conditions or dopants, affect carrier mobility.
See, e.g., Spec. ¶ [0076]. While the Examiner argues that “the
[S]pecification does not explicitly mention and claim any specific deposition
Appeal 2010-010466
Application 10/949,375

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rate or substrate temperature at which the claimed hole mobility is attained,”
Ans. 12, this overlooks the fact that the claim limits the scope to only those
conditions resulting in materials that satisfy a specific relationship between
the mobility of holes in the organic donor layer and the mobility of electrons
in the organic acceptor. To the extent that the Examiner’s concerns are
directed to a lack of an enabling disclosure, they have no place in an
obviousness analysis and, in any event, the Examiner has failed to prove
lack of enablement. Therefore, the Examiner’s inherency theory fails.
As for the Examiner’s optimization theory, we again find ourselves in
agreement with the Appellants. Reply Br. 5-6. Even if we accept the
Examiner’s finding that “Forrest explicitly states that hole mobility of the
donor layer depends on the intrinsic properties such as the crystal symmetry
and periodicity of the organic material . . . and appropriate crystal symmetry
and periodicity determine appropriate hole mobility,” Ans. 5, the Examiner
has not demonstrated that optimizing crystal symmetry and periodicity for
the purposes described in the reference, Forrest at column 4, lines 20-27,
would have resulted in the mobility of holes in the organic donor layer to be
greater than the mobility of electrons in the organic acceptor layer by a
factor of at least 100, as required by claim 1. Therefore, the Examiner’s
optimization theory fails as well.

ORDER
The Examiner’s rejections of claims1, 5, 6, and 10-15, as set forth in
the Examiner’s Answer mailed July 1, 2010, are reversed.

REVERSED
Appeal 2010-010466
Application 10/949,375

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