11375413 (B.P.A.I. Jun. 20, 2012)

Ex Parte Sager et al

Board of Patent Appeals and InterferencesJun 20, 2012

11375413 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRIAN M. SAGER, MARTIN R. ROSCHEISEN, KLAUS PETRISTSCH, GREG SMESTAD, JACQUELINE FIDANZA, GREGORY A. MILLER and DONG YU ____________ Appeal 2011-004797 Application 11/375,413 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004797 Application 11/375,413 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 16 through 36 and 40 through 42. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to methods of making an optoelectronic device. App. Br. 2. Claim 16 is illustrative: 16. A method for making an optoelectronic device, the method comprising: forming a porous, film on a substrate by a surfactant templation technique, wherein the porous film includes interconnected pores that are substantially uniformly distributed wherein the pores have diameters of between about 1 nm and about 100 nm, and wherein neighboring pores are separated by between about 1 nm and about 100 nm; and substantially filling the pores in the porous film with a pore- filling material, wherein the porous film and the pore-filling material have complementary charge transfer properties with respect to each other. The Examiner relied on the following references in rejecting the appealed subject matter: Anderson US 5,104,539 April 14, 1992 Gray US 5,441,762 August 15, 1995 Yu US 6,300,612 B1 October 9, 2001 Stucky US 6,592,764 B1 July 15, 2003 Appeal 2011-004797 Application 11/375,413 3 Kalkan US 6,919,119 B2 July 19, 2005 Appellants request review of the following rejections (App. Br. 3) from the Examiner’s final office action:1 I. Claims 16-20, 25-31, 34-36, 40, and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stuckey and Kalkan. II. Claims 21-24 and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stuckey, Kalkan and Anderson.2 III. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stuckey, Kalkan and Yu. IV. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stuckey, Kalkan and Gray. OPINION The prior art rejections The dispositive issue for all the rejections on appeal is: Did the Examiner err in determining that the combination of Stucky and Kalkan would have led one skilled in the art to a method of making an photoelectronic device having a porous film including interconnected pores as required by the subject matter of independent claims 16 and 40? 3 1 We note that the Examiner in the Answer rejects some claims on the ground of nonstatutory obviousness-type double patenting. Ans. 12-13. However, these rejections were not maintained in the Final Office Action mailed August 3, 2009. The Examiner has not designated these rejections as new grounds in the Answer mailed October 25, 2010. Therefore, we will not consider these rejections in addressing this appeal. 2 Appellants mistakenly typed 24 instead of 42 in their request. The above rejection statement reflects the correct claims on appeal. 3 We will limit our discussion to independent claims 16 and 40. Appeal 2011-004797 Application 11/375,413 4 After thorough review of the respective positions provided by Appellants and the Examiner, we REVERSE for the reasons presented by the Appellants and add the following for emphasis. During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We refer to the Examiner’s Answer for a statement of the Examiner’s rejection. Ans. 4-8.4 Appellants argued that Stucky discloses a porous film having pores that are parallel to each other and not interconnected as required by the subject matter of independent claim 16. App. Br. 4. Appellants further argued that Kalkan also fails to disclose interconnected pores. Id. at 6. We agree with the Appellants that the Examiner failed to establish a prima facie case of obviousness. Id. at 4. The Examiner asserts that Figure 41 of Stucky shows interconnected pores formed using identical steps and materials as the claimed invention. Ans. 14-15. However, as correctly noted by Appellants, the structure described in Figure 41a of Stucky is a structure with macropores in the order of 10 microns, which is outside the claimed pore diameter. App. Br. 5. The Examiner’s reasoning that the pores of Stucky are interconnected because Appellants and Stucky use the same 4 We note that the portions of Stucky cited in the Answer do not adequately support the Examiner’s statement of rejection. Appeal 2011-004797 Application 11/375,413 5 method of making the porous film (Ans. 15-16) is speculatory in nature and unsupported by an adequate explanation or evidence. The Examiner has not explained why Stucky’s description of macropores as in Figure 41a would have led one skilled in the art to a porous film having interconnected pores as required by the subject matter of independent claims 16 and 40.5 Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing a prima facie case of obviousness under 35 U.S.C. § 103(a). The Examiner relied on additional references to meet respective limitations of dependent claims 21-24, 32, 33 and 42. These references do not overcome the deficiencies of Stucky discussed above. Accordingly, we reverse these rejections as well for the reasons given above. ORDER The rejection of claims 16-20, 25-31, 34-36, 40, and 41 under 35 U.S.C. § 103(a) as unpatentable over Stuckey and Kalkan is reversed. The rejection of claims 21-24 and 42 under 35 U.S.C. § 103(a) as unpatentable over Stuckey, Kalkan and Anderson is reversed. The rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Stuckey, Kalkan and Yu is reversed. The rejection of claim 33 under 35 U.S.C. § 103(a) as unpatentable over Stuckey, Kalkan and Gray is reversed. REVERSED ssl 5 The Examiner cited Kalkan to address other elements of the claimed invention (filling pores with a material with complementary charge transfer properties).