Ex Parte Tu et al

Patent Trial and Appeal Board

Aug 30, 2016

13094262 (P.T.A.B. Aug. 30, 2016)

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.
13/094,262 04/26/2011 Chang-Ching Tu SLA2987 1279
55286 7590 08/31/2016
SHARP LABORATORIES OF AMERICA, INC.
C/O LAW OFFICE OF GERALD MALISZEWSKI
P.O. BOX 270829
SAN DIEGO, CA 92198-2829
EXAMINER
HOSSAIN, MOAZZAM
ART UNIT PAPER NUMBER
2898
MAIL DATE DELIVERY MODE
08/31/2016 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 CHANG-CHING TU,
LIANG TANG, JIANDONG HUANG,
and APOSTOLOS T. VOUTSAS
__________

Appeal 2014-002217
Application 13/094,262
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1–18 and 22–25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter new grounds of rejection.
Independent claims 1, 18, and 25 are pending in the instant Application.
Independent claim 1 is reproduced below from the Claims Appendix of the Appeal
Brief dated July 31, 2013 (“App. Br.”). The limitations at issue are italicized.
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1. A method for fabricating a colloidal silicon quantum dot
(SiQD) visible spectrum light-emitting diode (LED), the method
comprising:
forming a transparent first electrode;
forming a hole-injection layer overlying the first electrode;
forming a hole-transport layer overlying the hole-injection
layer;
forming a single SiQD layer overlying and in contact with the
hole-transport layer, where each SiQD has a diameter of less than
about 6 nanometers (nm);
forming an electron-transport layer overlying and in contact
with the single SiQD layer; and,
forming a second electrode overlying the electron-transport
layer.
App. Br. 18 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 1, 4, 8, 10, 11, 17, 18, 22, 24, and 25 under 35 U.S.C. § 102(e)
as anticipated by Cho et al.;1
(2) claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Cho in
view of Huang et al.;2
(3) claims 5, 7, 9, 12, 13, 16, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Cho;
(4) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Cho in view of
Heeger et al.;3 and

1 US 2010/0213438 A1, published August 26, 2010 (“Cho”).
2 US 2011/0032743 A1, published February 10, 2011 (“Huang”).
3 US 2009/0126779 A1, published May 21, 2009 (“Heeger”).
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(5) claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable over Cho
in view of Kwon et al.4
B. DISCUSSION
1. Rejections (1) – (5)
The dispositive issue on appeal is: Did the Examiner reversibly err in
finding that the colloidal silicon quantum dot (SiQD) visible spectrum light-
emitting diode (LED) described in Cho comprises a single SiQD layer as recited in
independent claims 1, 18, and 25?
Referring to Cho Figure 2, reproduced below, the Examiner finds Cho
describes a SiQD visible spectrum LED comprising, inter alia, single SiQD layer
16. Final 3, 6, 7.5

Cho Figure 2 depicts a cross-sectional view of an
embodiment of a quantum dot (QD) light emitting device.

4 US 2007/0215856 A1, published September 20, 2007 (“Kwon”).
5 Final Office Action dated March 14, 2013.
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The Appellants argue that layer 16 is not a single SiQD layer.6 Rather, the
Appellants argue that layer 16 is a multilayer comprised of first SiQD sublayer 17
and second SiQD sublayer 18 wherein one side of SiQD sublayer 17 is in contact
with hole-transport layer (HTL) 15 and a second side of SiQD sublayer 17 is in
contact with second SiQD sublayer 18, not electron-transport layer (ETL) 20 as
claimed. Likewise, the Appellants argue that one side of SiQD sublayer 18 is in
contact with SiQD sublayer 17, not hole transport layer 15 as claimed. App. Br. 7.
The Appellants also argue that Cho’s SiQD sublayers 17 and 18 are made in
separate steps from different materials and have different electrical properties and
thus are not a single SiQD layer as claimed. App. Br. 7–8 (referring to Cho Fig.
3). The Appellants rely on a Declaration of Dr. David R. Evans dated April 30,
2013 (“Evans Decl.) to support their argument. App. Br. 9; see Evans Decl. ¶ 4
(“[Cho] Fig. 3 shows that QD light emitting layer 17 has a different energy band
than QD light emitting layer 18. It is impossible for a single SiQD layer to have
two different energy bands.”).7
We find the Appellants’ arguments are supported by the record.
In an attempt to show that the “single layer SiQD layer” recited in claims 1,
18, and 25 encompasses more than one layer as in Cho’s multilayer 16, the
Examiner directs our attention to steps 708f–708h in Appellants’ Figure 7B and
finds multiple coatings are applied. Ans. 4. We disagree. Steps 708a–708h
merely disclose a process for forming a SiQD suspension (step 708f) and

6 A reference is anticipatory when it discloses each and every element of the
claimed invention, arranged or combined in the same way as in the claim. In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citations omitted).
7 Dr. Evans states, “In contrast, the Applicant’s device is able to bridge the energy
gap between hole and electron-transport layers using a single SiQD layer having a
single energy band, see Applicant’s Figs. 3A and 5A.” Evans Decl. ¶ 4.
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subsequently spin-coating the suspension of SiQDs on hole-transport layer 106.
See Spec. 10, l. 21–11, l. 6; Reply Br. 2.8
The Examiner also directs our attention to steps 708k–708m in Appellants’
Figures 7A–7B which describes forming electron and hole barrier gaps. Ans. 4–5.
Significantly, the Examiner does not direct us to any evidence showing that the
electron and hole barrier gaps formed in steps 708j–708m each comprise a separate
SiQD layer.
Finally, the Examiner finds that the shell of the core/shell SiQDs is “formed
by coating sub-layer as described in [page] 10, Lns. 18–20.” Ans. 5.
According to the Appellants’ Specification, “[i]n one aspect, Step 708 forms
the SiQD layer using core/shell SiQDs, where the cores are Si.” Spec. 10, ll. 18–
20 (emphasis added). We find that one of ordinary skill in the art would have
understood that the shells surround the Si cores and are integral therewith. Thus, it
is not clear on this record how the shell of the core/shell SiQDs forms a separate
sub-layer as found by the Examiner.
Independent claim 25 recites the following additional limitation:
wherein an electron energy barrier gap of the single SiQD layer
is between the electron energy barrier gap of the hole-transport layer
and the electron energy bandgap of the electron-transport layer.
App. Br. 25. The Appellants contend that Appellants’ Figures 3A and 5A
illustrates the limitation. App. Br. 10.
The Appellants argue that Cho does not disclose the additional limitation
recited in claim 25:
Cho’s Fig. 3 describes a first SiQD layer 17 with an electron energy
barrier gap of about 4.3 eV, which is not in between the electron
energy barrier gap of the hole-transport layer 15, which is 2.3 eV, and

8 Reply Brief dated November 12, 2013.
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the electron energy barrier gap of the electron-transport layer 20,
which is 4.0 eV. Likewise, Cho’s second SiQD layer 18 has an
electron energy barrier gap of about 4.8 eV, which is not between 2.3
and 4.0 eV.
App. Br. 10 (emphasis omitted).
In response, the Examiner directs our attention to Cho Figure 10 and
contends that QD sub-layer 17a satisfies the relationship recited in claim 25 (i.e.,
ETL>QD>HTL). Ans. 11. However, remaining QD sub-layers 17b and 18 do not
satisfy the claimed relationship.
For the reasons set forth above, the § 102(e) rejection is not sustained.
As for the § 103(a) rejections on appeal, the Examiner does not explain, in
any detail, why a single SiQD layer would have been obvious to one of ordinary
skill in the art based on the disclosure of Cho either alone or in combination with
the remaining prior art of record. Therefore, the § 103(a) rejections are not
sustained.
2. New grounds of rejection
a. Claims 1, 4, 8, 10, 11, 17, 18, 22, and 24
Claims 1, 4, 8, 10, 11, 17, 18, 22, and 24 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Cho.
Cho discloses:
The energy band structure of FIG. 3 shows an embodiment of a
QD-LED in which the first electrode (anode) 14 is formed of ITO, the
second electrode (cathode) 22 is formed of Al, the HIT [hole-injection
layer] 13 is formed of PEDOT, the HTL 15 is formed of TFB, the
ETL 20 is formed of TiO2, and the QD containing layer 17 (QD layer
1) having a band level shifted by a surface exchange process is formed
between the QD light emitting layer 18 (emitting layer (“EML”), QD
layer 2) and the HTL 15. . . . When the QD-LED is formed to have
the band structure shown in FIG. 3, compared to the case when the
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QD containing layer 17 is not included, the band offset of the QD-
LED having the band structure shown in FIG. 3 may be reduced . . . .
Cho ¶ 97 (emphasis added).
Based on the foregoing, we find Cho not only describes a QD-LED
comprising, inter alia, two QD layers, i.e., QD containing layer 17 and QD light
emitting layer 18, but also describes a QD-LED, as illustrated in Cho Figure 2,
wherein the QD containing layer 17 is omitted. Thus, we find Cho describes a
QD-LED comprising, inter alia, a single SiQD layer (i.e., QD light emitting layer
18) as recited in claims 1 and 18. See also Cho ¶ 7 (“A typical quantum dot light
emitting device . . . has a basic structure of three layers, that is: a QD light
emitting layer, and a hole transport layer . . . and an electron transport layer . . .
which are respectively located at either end of the QD light emitting layer.”).
The Appellants do not direct us to any error in the Examiner’s findings as to
claims 4, 8, 10, 11, 17, 22, and 24. See App. Br. 9–10. Therefore, we adopt the
Examiner’s findings as to claims 4, 8, 10, 11, 17, 22, and 24 on pages 4–7 of the
Final Office Action.
b. Claims 2 and 3
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Cho in view of Huang.
The Appellants do not direct us to any error in the Examiner’s findings of
fact or dispute that the limitations recited in claims 2 and 3 would have been
obvious to one of ordinary skill in the art based on the combined teachings of Cho
and Huang. See App. Br. 11–12. Therefore, we adopt the Examiner’s findings of
fact and conclusions of law as to claims 2 and 3 on pages 8–10 of the Final Office
Action.
c. Claims 5, 7, 9, 12, 13, 16, and 23
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Claims 5, 7, 9, 12, 13, 16, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cho.
The Appellants do not direct us to any error in the Examiner’s findings of
fact or dispute that the limitations recited in claims 5, 7, 9, 16, and 23 would have
been obvious to one of ordinary skill in the art based on the teachings of Cho. See
App. Br. 12–13. Therefore, we adopt the Examiner’s findings of fact and
conclusions of law as to claims 5, 7, 9, 16, and 23 on pages 10–12 and 14–16 of
the Final Office Action.
As to claims 12 and 13, the Appellants argue that “claims 12–13 recite a
relationship between SiQD particle diameters and energy barrier gap values. Cho
fails to describe a relationship between SiQD diameters and energy barrier gap
values.” App. Br. 13.
According to the Appellants’ Specification:
In [one] aspect, forming the SiQD layer in Step 708 [in Figure
7A] includes the following substeps. . . . Step 708l forms a hole
energy barrier gap between the hole-transport layer and the SiQD
layer of less than, or equal to 0.9 electron volts (eV) [as recited in
claims 9, 13, and 23]. Step 708m forms a hole energy barrier gap
between the SiQD layer and the electron-transport layer of greater
than, or equal to 1.5 eV [as recited in claims 9, 13, and 23].
More explicitly, the Step 708 forms the SiQD layer using
SiQDs having a diameter in a range between 3 and 6 nm, then . . .
Step 708l forms a hole energy barrier gap between the hole-transport
layer and the SiQD layer of less than, or equal to 0.4 eV [as recited in
claim 12], and Step 708m forms a hole energy barrier gap between the
SiQD layer and the electron-transport layer of greater than, or equal to
2eV [as recited in claim 12].
Alternatively, if Step 708 forms the SiQD layer using SiQDs
having a diameter in a range between 1 and 2 nm, then . . . Step 708l
forms a hole energy barrier gap between the hole-transport layer and
the SiQD layer of less than, or equal to 0.9 eV [as recited in claims 9,
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13, and 23]. Step 708m forms a hole energy barrier gap between the
SiQD layer and the electron-transport layer of greater than, or equal to
1.5 eV [as recited in claims 9, 13, and 23].
Spec. 11, l. 21–12, l. 24 (emphasis added).
Based on the foregoing, we find the Appellants appear to teach that the
diameter of the SiQDs dictates (1) the hole energy barrier gap value between the
hole-transport layer and the single SiQD layer and (2) the hole energy barrier gap
value between the single SiQD layer and the electron-transport layer. Thus, we
find the range of SiQD diameters recited in claim 12 necessarily results in the hole
energy barrier gap values recited in claim 12 and the range of SiQD diameters
recited in claim 13 necessarily results in the hole energy barrier gap values recited
in claims 9, 13, and 23.
Cho discloses that the QDs in QD light emitting layer 18 may have a
diameter of about 1 nm–10 nm. Cho ¶ 59. That range encompasses the ranges
recited in claims 12 and 13. Thus, we find the range of QD diameters disclosed in
Cho necessarily results in a range of hole energy barrier gap values that
encompasses the hole energy barrier gap values recited in claims 9, 12, 13, and 23.
See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“when, as here, the
claimed ranges are completely encompassed by the prior art, the conclusion [of
prima facie obviousness] is even more compelling than in cases of mere overlap”).
d. Claim 6
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Cho in
view of Heeger.
The Appellants do not direct us to any error in the Examiner’s findings of
fact or dispute that the limitation recited in claim 6 would have been obvious to
one of ordinary skill in the art based on the combined teachings of Cho and
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Heeger. See App. Br. 14. Therefore, we adopt the Examiner’s findings of fact and
conclusions of law as to claim 6 on pages 16–17 of the Final Office Action.
e. Claims 14 and 15
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Cho in view of Kwon.
The Appellants do not direct us to any error in the Examiner’s findings of
fact or dispute that the limitations recited in claims 14 and 15 would have been
obvious to one of ordinary skill in the art based on the combined teachings of Cho
and Kwon. See App. Br. 14–15. Therefore, we adopt the Examiner’s findings of
fact and conclusions of law as to claims 14 and 15 on pages 18–19 of the Final
Office Action.
C. DECISION
We reverse the Examiner’s decision and enter the following new grounds of
rejection under 37 C.F.R. § 41.50(b):
Claims 1, 4, 8, 10, 11, 17, 18, 22, and 24 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Cho.
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Cho in view of Huang.
Claims 5, 7, 9, 12, 13, 16, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cho.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Cho in
view of Heeger.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Cho in view of Kwon.
According to 37 C.F.R. § 41.50(b), the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
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following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
REVERSED; 37 C.F.R. § 41.50(b)