Ex Parte Pope et al

Patent Trial and Appeal Board

May 18, 2016

13124781 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/124,781 07/05/2011
124676 7590 05/20/2016
Russell Ng PLLC
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
Dave S. Pope
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.
NCC.001004PCT-US 9331
EXAMINER
MEEKS, TIMOTHY HOWARD
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DA VE S. POPE, KURT A. SCHRODER, and IAN M. RA WSON 1
Appeal2014-008573
Application 13/124,781
Technology Center 1700
Before CATHERINE Q. TIMM, MARK NAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-8 and 10-20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the Real Party in Interest is Novacentrix
Corporation. App. Br. 3.
2 The Office Action Summary attached to the Final Action lists claims 1-20
as rejected. However, no ground of rejection includes claim 9. See
generally Final Act. The Appellants identify that discrepancy in the Appeal
Brief, see App. Br. 5, but the Examiner's Answer is silent with respect to
claim 9, see generally Ans. Therefore, claim 9 is not before us in this
appeal.
Appeal2014-008573
Application 13/124,781
BACKGROUND
The subject matter on appeal relates to a method for reducing thin
films (such as conductive traces) on low-temperature substrates (such as
paper, plastic, or polymer). Spec. 1:15-16, 2:1-2, 5:5-6; Claim 1. Claim 1
is reproduced below from page 11 (Claims Appendix) of the Appeal Brief:
1. A method for producing an electrically conductive thin film on a
substrate, said method comprising:
dispersing a reducible metal compound and a reducing agent in
a liquid;
depositing said dispersion on a substrate to form a non-
conductive thin film on said substrate; and
exposing said thin film along with said substrate to a pulsed
electromagnetic emission to allow said reducible metal
compound to react with said reducing agent chemically to render
said thin film electrically conductive, wherein said pulsed
electromagnetic emission has a pulse length of less than 20 ms
and is greater than 500 W/cm2.
REJECTIONS ON APPEAL
1. Claims 1, 2, 3, 10, 11, 12, 15, and 16 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Kowalski et al. (US 2006/0159838 Al,
published July 20, 2006).
2. Claims 1, 6-8, 13, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schroder et al. (WO 2006/071419 A2,
published July 6, 2006).
3. Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kowalski in view of Piglarz et al. (US 4,539,041, issued
Sept. 3, 1985).
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Application 13/124,781
4. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kowalski in view of Schwartzkopf et al. (US 6,749,998
B2, issued June 15, 2004).
5. Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kowalski in view of Wada et al. (US 3,477,881, issued
Nov. 11, 1969).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. We sustain the rejections for reasons set forth by the Examiner in
the Final Action, in the Advisory Action dated February 6, 2014, and in the
Answer. See generally Final Act. 2-11; Advisory Act. 2; Ans. 2-6. We add
the following for emphasis and completeness.
Rejection 1
Claims 1, 2, 3, 10, 11, 12, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kowalski. The Appellants do not argue the
claims separately, so the claims stand or fall together. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013). We select claim 1, reproduced above, as
representative of the rejected claims.
As the Examiner finds, see Final Act. 3--4, Kowalski discloses
processes for making printable electronic features wherein electronic inks
may comprise "one or more metal precursors," Kowalski ,-i 35, such as metal
oxides, id. ,-i,-i 60-63, that are dispersed in a liquid with a reducing agent for
the metal oxide, id. ,-i,-i 3 5, 51, 66-67. The dispersion is deposited on a
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Application 13/124,781
substrate and "may be heated to yield the desired electrical performance,
adhesion, and abrasion resistance." Id. iii! 125, 131. Heating may be
accomplished by, e.g., pulsed laser radiation. Id. iii! 115, 131. Similar to the
Appellants' Specification, see Spec. 2:23-24, 10:2-5, 11 :8-10, Kowalski
teaches that "[ s ]hort heating times can advantageously prevent damage to
the underlying substrate," Kowalski iJ 115, and it teaches substrates
including coated paper and PET, id. iJ 133. Kowalski provides as an
example "for deposits having a thickness on the order of about 10 µm"
heating times of "not greater than about 100 milliseconds, e.g., not greater
than about 10 milliseconds, or not greater than about l millisecond." Id. iJ
115; see also id. iJ 122. Kowalski discloses that the metal precursor reacts
with the reducing agent "to form the corresponding elemental metal,"
resulting in an "electronic feature." Id. iii! 63, 103, 119. Thus, Kowalski
teaches methods and goals similar to those disclosed by the Appellants'
Specification and recited by claim 1.
While Kowalski does not expressly disclose pulse intensities such as
the 500 W/cm2 recited by claim 1, it does teach that the heat (e.g., laser
pulses) should be applied "to yield desired electrical performance, adhesion,
and abrasion resistance." iJ 131. The Examiner finds, and the Appellants do
not dispute, that "[b ]y the very operation of a pulsed laser, specific output
intensity is necessarily being used," and that, "[ w ]hile Kowalski does not
detail what this output intensity value should be, the output intensity is a
result effective variable, as it will necessarily affect the amount of heat and
curing provided by the laser." Ans. 3. The Examiner concludes that
"optimization of said variable (i.e. setting output at 500 W/cm2) is not an
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Application 13/124,781
inventive concept and can be arrived at by one of ordinary skill in the art
through routine experimentation." Id.
The Appellants argue that Kowalski discloses "the relationship
between deposit thickness and thermal processing time, which is not the
same as the relationship between the claimed pulse length ... and the
claimed intensity." App. Br. 5. According to the Appellants, "it is
inappropriate for the Examiner to simply extract the thermal processing time
of Kowalski's disclosed time/thickness relationship between thermal
processing time and deposit thickness. It is also inappropriate for the
Examiner to characterize thermal processing time alone as the claimed pulse
length of the claimed pulse length/intensity relationship." Id. at 5-6.
The fact that Kowalski discloses both a heating time and the thickness
of a substrate does not show error in the Examiner's rationale. Kowalski
generally teaches optimization of heat application, including heat application
in the form of laser pulses, to transform electronic ink into a desired
electronic feature. It is not necessary for Kowalski to expressly disclose
recited pulse intensities if, as the Examiner finds, optimization of pulse
intensity falls within the ordinary level of skill in the art. See KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) ("[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.").
Kowalski teaches that the purpose of the laser pulse is the same as, or
essentially the same as, the purpose of the pulsed electromagnetic emission
of claim 1 (i.e., heat to trigger reduction of metal precursor without
damaging substrate, and sintering, see Kowalski iii! 60, 115, 119, 122), and
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the Appellants' arguments fail to provide any persuasive basis to reject the
Examiner's finding that optimization of laser pulse intensity, including to a
value greater than 500 W/cm2, would have been within the ordinary level of
skill in the art. In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.");
cf In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) ("The law is replete
with cases in which the difference between the claimed invention and the
prior art is some range or other variable within the claims .... [and] in such
a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range." (citations omitted)).
To the extent that the Appellants argue that "[b ]esides, 'processing
time' is actually different from 'pulse length,"' and "[b ]esides, 'heating
temperature profile' ... is different from the claimed pulse intensity," those
unembellished statements do not purport to identify reversible error in the
Examiner's obviousness rejection. In any event, in the context of Kowalski
,-i 115, a person of ordinary skill in the art would have considered the term
"thermal processing times," which appears to be used synonymously with
"heating times," to encompass or otherwise render obvious "pulse length[s]"
as recited by claim 1. Kowalski ,-i 115 expressly refers to "short heating
times" in the context of laser pulses. Similarly, and for reasons that the
Examiner explains, which are not disputed by the Appellants, see Ans. 3
("By the very operation of a pulsed laser, specific output intensity is
necessarily being used during this operation."), a person of ordinary skill in
the art would have understood the laser pulses of Kowalski necessarily to
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Application 13/124,781
involve a pulse intensity, and would further have understood that pulse
intensity of the laser affects the curing of the electronic ink. E.g., Kowalski
iii! 115, 131. Whether Kowalski explicitly discusses "pulse intensity" has no
impact on the Examiner's findings and conclusions, which, on this record,
we conclude are supported by a preponderance of the evidence. See KSR,
550 U.S. at 418-19.
We therefore sustain the rejection.
Rejection 2
Claims 1, 6-8, 13, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Schroder. The Appellants present arguments
concerning only independent claims 1 and 19. See App. Br. 7-8. We limit
our discussion to those claims, and the remaining claims subject to Rejection
2 stand or fall with the independent claim from which they depend. See 37
C.F.R. § 41.37(c)(l)(iv) (2013).
Claim 19 is similar to claim 1, but claim 19 requires "dispersing a
metal powder and a reducing agent in a liquid," rather than "dispersing a
reducible metal compound and a reducing agent in a liquid," as recited by
claim 1.
As the Examiner finds, Schroder-like Kowalski-teaches methods
and goals similar to those disclosed by the Appellants' Specification and
recited by claims 1 and 19. See Final Act. 6-8. The Examiner finds that
Schroder teaches each element of claims 1 and 19 except for specifically
disclosing the claimed pulse intensity of 500 W/cm2. Id. However, the
Examiner finds that Schroder "disclose[ s] that the intensity of the delivered
pulse can vary with the pulse length (i.e. single intense pulse or multiple
lower intensity pulses) . . . . As such the pulse length and intensity delivered
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are result effective variables, the optimization of which can be arrived at
through routine experimentation .... " Id. at 7-8. The Examiner concludes
that "optimization of emission intensity (500 W/cm2) of the pulse of
electromagnetic radiation would have been obvious to one of ordinary skill
in the art at the time of the invention." Id.
The Appellants first argue that Schroder does not disclose dispersing a
metal powder, as recited by claim 19. See App. Br. 7. Specifically, they
argue that the Examiner's reliance on Schroder ,-i 16 is misplaced because
that paragraph describes a carbon/metal composite rather than an elemental
metal. Id.
We do not find that argument to be persuasive. To the extent that the
foregoing argument suggests that Schroder does not disclose or otherwise
render obvious the dispersal of powders, ,-i 16 of Schroder does not suggest
that metal powders cannot be dispersed in water, and ,-i 17 of Schroder,
expressly describes "nanometal powders," including, e.g., silver and copper.
Paragraph 30 expressly discloses dispersal of carbon and "silver particles" in
water. Schroder' s claim 65 is similar. In light of those teachings, a
preponderance of the evidence supports the Examiner's finding that
Schroder teaches or suggests the dispersal of metal powder in a liquid.
Schroder's dependent claims 3 and 4, for example, appear to suggest that the
methods of Schroder can be used both with nanomaterials that are not
described as powders, as well as with nanomaterials that are described as
powders. The Appellants have not shown reversible error in the Examiner's
findings.
To the extent that the Appellants argue that the inclusion of carbon is
inconsistent with claim 19, see App. Br. 7 ("Since carbon/metal composite is
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Application 13/124,781
not an element, Schroder does not disclose the claimed step of dispersing a
metal powder." (emphasis added)), we disagree. As set forth above,
Schroder describes or otherwise renders obvious dispersing a metal powder
in water, and claim 19 does not exclude the presence of carbon (as a
reducing agent or otherwise).
The Appellants also argue that "Schroder does not disclose the
claimed exposing step" of claims 1 and 19. App. Br. 7. Specifically, they
argue that Schroder' s pulsed electromagnetic emission "is related to
sintering a material," which "means that Schroder is not related to
chemically reacting a reducible metal compound and a reducing agent, as
claimed." Id. at 8.
Sintering and reduction of the metal compound, however, are not
mutually exclusive. Paragraph 69 of Schroder makes that clear. It discloses
an example in which "copper with an oxide layer and a small amount of
nano-aluminum" are heated, resulting in "sintering of the copper." Schroder
iJ 69. It further discloses that "[a] side benefit is that the products of the
reaction are copper and alumina. Hence, the copper oxide on the surface of
the particles is converted to copper .... " Id. Thus, it is clear that Schroder
does disclose chemically reacting a reducible metal compound and a
reducing agent. The Appellants' arguments do not persuade us that
Schroder does not teach the "exposing" step of claim 19.
Finally, the Appellants appear to rely on the argument that Schroder
does not disclose reduction of a metal compound to argue that "Schroder
does not disclose that the pulsed electromagnetic emission being greater than
500 W/cm2 as claimed." App. Br. 9. Because we reject the argument that
Schroder does not disclose reduction of a metal compound, as explained
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above, we likewise reject this argument. We further note that this argument
does not dispute or otherwise provide any basis to reject the Examiner's
finding that pulse intensity is a result effective variable, the optimization of
which (including to intensities of greater than 500 W/cm2) is within the
ordinary level of skill in the art. See Final Act. 6-8; Ans. 6.
For those reasons, we sustain the Examiner's rejection of claims 1 and
19.
Rejections 3-5
Rejections 3-5 concern claims 4, 5, 14, 17, and 18, which depend
from claim 1 and recite as specific reducing agents hexanediol (claim 4),
glutaric acid (claim 5), 1,2-hexanediol (claim 14 ), succinic acid (claim 17),
and uric acid (claim 18).
Rejection 3. The Examiner relies on Figlarz for teaching or otherwise
rendering obvious the use of hexanediol and 1,2-hexanediol as reducing
agents. Final Act. 8-9. The Appellants argue that "Figlarz does not explain
that hexanediol [is] being used as a reducing agent." App. Br. 7. We
disagree. See Ans. 3. Figlarz expressly discloses the use of "polyols" as
reducing agents, e.g., Figlarz at Title, 1: 18-23, and it discloses hexanediol as
an example of a polyol that can be used in an embodiment of the invention,
id. at 2:40--46. A person of ordinary skill in the art would have understood
Figlarz as disclosing the use of hexanediol as a reducing agent.
Rejection 4. The Examiner relies on Schwartzkopf for teaching or
otherwise rendering obvious the use of succinic acid and uric acid as
reducing agents. Final Act. 9-10. The Appellants argue that Schwartzkopf
concerns photoresist compositions and stripping compositions, and that
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"[ n ]one of the above-mentioned usages is related to the fields of Kowalski
and/or the claimed invention." App. Br. 7.
We are not persuaded by that argument. The Appellants do not
dispute the Examiner's finding that Schwarzkopf teaches that succinic acid
and uric acid are known "reducing agents for metal oxides." Final Act. 9-
10. The use of reducing agents for metal oxides is reasonably pertinent both
to Kowalski and to the claimed invention. The combination proposed by the
Examiner is simply the use of known elements (succinic acid and uric acid)
according to their established functions (reducing agent). The use of a
known element according to its established function typically does not result
in nonobvious subject matter. See KSR, 550 U.S. at 416. The Appellants'
limited argument, see App. Br. 7, does not persuade us otherwise.
Rejection 5. The Examiner relies on Wada for teaching the use of
succinic and glutaric acids as reducing agents for use with metals and metal
oxides. E.g., Final Act. 10; Wada at 6: 18-25. The Appellants argue (1)
"Wada discloses a process for the formation of an electric insulation coating,
which contradicts with the claimed method of producing an electrically
conductive film," and (2) that "Wada does not explicitly disclose that
glutaric acid [is] being used as a reducing agent." App. Br. 7.
We are not persuaded by either argument. Concerning the first, the
Appellants do not come forward with evidence and argument that a person
of ordinary skill in the art would not have expected succinic and glutaric
acids to function as reducing agents in Kowalski's process. Cf Belden Inc.
v. Berk-TekLLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) ("A reference must
be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to protect."
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(internal quotation marks and alterations omitted)). Concerning the second,
Wada discloses that aliphatic dicarboxylic acids having at least 4 carbon
atoms are used as reducing agents, e.g., Wada at 1:20-26, 3:74--4:5, Claim 1,
and it provides succinic acid and glutaric acid as specific examples of such
acids, Wada at 3: 7 4--4: 5, 6: 18-22. A person of ordinary skill in the art
reasonably would have understood Wada as disclosing the use of succinic
acid and glutaric acid as reducing agents.
For those reasons, the Appellants' arguments concerning Rejections
3-5 do not persuade us of reversible error.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-8 and 10-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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