Ex Parte Wu et al

Patent Trial and Appeal Board

Sep 24, 2013

11318044 (P.T.A.B. Sep. 24, 2013)

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.
11/318,044 12/23/2005 Yiliang Wu 20050719USNP-XER1174US01 4340
62095 7590 09/24/2013
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
MALDONADO, JULIO J
ART UNIT PAPER NUMBER
2898
MAIL DATE DELIVERY MODE
09/24/2013 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 YILIANG WU and BENG S. ONG

________________

Appeal 2011-005377
Application 11/318,044
Technology Center 2800
________________

Before RICHARD E. SCHAFER, RICHARD TORCZON, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-15, 21, and 22 as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of Kubota
et al. (US 2006/0113523 Al, June 1, 2006) (“Kubota”) and Miura et al. (US
2007/0012914 Al, January 18, 2007) (“Miura”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a dielectric layer for electronic
devices comprising inorganic nanoparticles dispersed in a polymer selected
from the group consisting of polysiloxane, polysilsesquioxane, and
mixtures thereof. The layer improves the carrier mobility and current
on/off ratio of an electronic device incorporating it, especially a thin film
transistor. Abstract.

GROUPING OF CLAIMS

Appellants assert that claims 1-4 and 8-15 stand or fall together.
App. Br. 4. We consequently select independent claim 1 as representative
of these claims. Claim 1 recites:
1. An electronic device comprising:

a single substrate layer consisting of one material;

a single dielectric layer; and

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a semiconductor layer consisting of a polythiophene;

wherein the single dielectric layer is in direct contact
with the semiconductor layer; and

wherein the single dielectric layer comprises a
polysiloxane polymer and inorganic particles.

App. Br. 11.
Appellants assert that claims 5-7 and 21 stand or fall together. App.
Br. 4. We add claim 22 to this group for reasons that we shall explain
below. We consequently select independent claim 21 as representative of
these claims. Claim 21 recites:
21. An electronic device comprising:

a single substrate layer consisting of one material;

a single dielectric layer; and

a semiconductor layer;

wherein the single dielectric layer is in direct contact
with the semiconductor layer; and

wherein the single dielectric layer comprises:

a polymer selected from the group consisting of (i)
polysiloxane and (ii) mixtures of polysiloxane and
polysilsesquioxane; and

inorganic nanoparticles having functional groups which
have reacted with the polymer.

App. Br. 13.

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ISSUES AND ANALYSES
A. Claim 1
Issue 1
Appellants argue that the Examiner erred in combining the teachings
of the prior art because Miura teaches away from Appellants’ claimed
devices. App. Br. 5. We therefore address the issue of whether the
Examiner so erred.

Analysis
Appellants argue that claim 1 requires the semiconducting layer to
consist of a polythiophene, excluding the presence of other materials. App.
Br. 5. According to Appellants, Miura teaches “by laminating a specific
organic semiconductor material and a layer promoting crystallization,” a
uniform crystal is formed so that high field effect mobility is achieved.
App. Br. 5-6 (citing Miura, ¶ [0052]). Appellants contend that Miura also
teaches the advantages of combining layer A with a semiconducting layer
containing specific compounds like porphyrin, phthalocyanine, or
pentacene. App. Br. 6. Appellants argue that the latter compounds are
excluded from the present claims, which explicitly recites only
polythiophene to be present in the semiconducting layer. Id. As a result,
Appellants argue, Miura teaches away from both the present claims and
from the cited combination with Kubota. Id.
The Examiner responds that Kubota teaches an electronic device
including a substrate made of a single material, a single dielectric layer, and
a semiconductor layer consisting of a polythiophene, in which the single
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dielectric layer is in direct contact with the semiconductor layer and in
which the single dielectric layer comprises a polymer made of
polysilsesquioxanes and inorganic particles. Ans. 11 (citing Kubota,
¶¶ [0042], [0067], [0075], [0097]).
We are not persuaded by Appellants’ argument that Miura teaches
away from Appellants’ claimed invention. A reference teaches away when
“a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be
led in a direction divergent from the path that was taken by the applicant.”
In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994). Appellants adduce no
evidence that an artisan of ordinary skill would be discouraged or diverted
by the teachings of Miura from using Kubota’s teaching of a semiconductor
layer consisting of a polythiophene. Miura teaches the use of alternative
chemicals as the semiconductor layer. That is insufficient to establish that
Miura teaches away from using polythiophen and overcome the Examiner’s
prima facie finding of obviousness. See In re Dunn, 349 F.2d 433, 438
(C.C.P.A. 1965) (noting that teaching an alternative method does not teach
away from the use of a claimed method). We consequently conclude that
the Examiner did not err in improperly combining the teachings of Kubota
and Miura.

Issue 2
Appellants argue that the Examiner erred in combining the teachings
of the prior art references because there is no motivation to combine Kubota
with Miura. App. Br. 7. We therefore address the issue of whether the
Examiner so erred.
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Analysis
Appellants argue that the Examiner erred by failing to identify a new
problem that is solved by the combination of Kubota and Miura, but not
already solved by Kubota or Miura separately. App. Br. 8. Appellants
suggest, therefore, that the Examiner impermissibly applied hindsight
reasoning. App. Br. 7-8.
Appellants argue further that the Examiner also erred in finding that
it would have been obvious to combine Kubota with Miura to gain the
advantage of providing an organic semiconductor device which can be
driven with low voltage and a stable drive voltage. App. Br. 8 (citing
Kubota, ¶ [0013]). Appellants contend that Kubota teaches that
polysilsesquioxanes can achieve this advantage and that Miura does not
provide evidence that this assumption is correct.
The Examiner responds that it would have been within the scope of
one of ordinary skill in the art to combine the teachings of Kubota and
Miura to enable the dielectric layer of Kubota, as taught by Miura, because
one of ordinary skill in the art would have been motivated to look to
analogous art teaching alternative suitable or useful polymers for the
selection of a known material based on its suitability for its intended use.
Ans. 11-12 (citing MPEP § 2144.07). The Examiner finds that the
fact that the claimed combination of elements was “obvious to try” might
show that such a combination was obvious under §103, since, if there is a
design need or market pressure to solve a problem, and there are a finite
number of identified, predictable solutions, a person of ordinary skill in art
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has good reason to pursue known options within his or her technical grasp.
Ans. 12.
We are persuaded that the Examiner asserted a prima facie case of
obviousness over the prior art references.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to
pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not
of innovation but of ordinary skill and common sense.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The Examiner
finds that a person of ordinary skill would have been motivated to combine
Kubota’s and Muria’s teachings as a means to improving performance of
organic semiconductor-based field effect transistors. Ans. 4-5. We find
that the Examiner articulated a rational underpinning to support the legal
conclusion of obviousness.1 Kubota teaches an electronic device including
a polysilsesquioxane dielectric or insulating layer. Kubota, ¶ [0014].
Miura teaches that polysiloxanes are useful as a dielectric layer (Layer A)

1 Appellants also inappositely argue that Miura teaches the use of
polysilsesquioxane as a layer for promoting the crystallization of the
semiconducting layer, and not for use as a dielectric layer. App. Br. 7. The
language of independent claim 1 (and claims 2-4, and 8-15 which depend
from it) does not require that the dielectric layer contains
polysilsesquioxane, but rather that “the single dielectric layer comprises a
polysiloxane polymer.” Claim 21 requires “wherein the single dielectric
layer comprises: a polymer selected from the group consisting of (i)
polysiloxane and (ii) mixtures of polysiloxane and polysilsesquioxane; and
inorganic nanoparticles having functional groups which have reacted with
the polymer.” We consequently address this limitation in our discussion of
claim 21 below.
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adjacent an organic semiconductor (Layer B) in organic semiconductor
devices such as field effect transistors. Miura, ¶ [0058]. One having
ordinary skill in the art would have expected that polysiloxanes of the type
disclosed by Miura would have been acceptable alternatives to the
polysilsesquioxane insulator used by Kubota.

Issue 3
Appellants argue that the Examiner erred in finding that the
combined prior art references teach or suggest the limitation of claim 1
reciting “a single dielectric layer in direct contact with the semiconducting
layer, and that the semiconducting layer consist of a polythiophene.” App.
Br. 8. We therefore address the issue of whether the Examiner so erred.

Analysis
Appellants argue that Miura requires a semiconducting layer that
contains specific compounds like porphyrin, phthalocyanine, or pentacene.
App. Br. 8. According to Appellants, if the semiconducting layer did
contain such compounds, they would be excluded from the present claims.
App. Br. 8. Alternatively, argue Appellants, if the semiconducting layer did
not contain such compounds, there would be no reason to modify Kubota.
App. Br. 8-9.
As we related supra, Kubota explicitly teaches an organic
semiconductor layer consisting of a polythiophene. Kubota, ¶ [0097] (“The
organic semiconductor layer 7 in the present invention is desirably formed
from an aromatic compound, [such as] … a polythiophene derivative.”); see
also Ans. 11. Additionally, the rejection is based on the combined
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teachings of Kubota and Miura. “[O]ne cannot show non-obviousness by
attacking references individually where … the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (C.C.P.A.
1981) (citing Application of Young, 403 F.2d 754, 757 (1968)). We
therefore find that the Examiner did not err in finding that the combined
prior art references teach or suggest the disputed limitation.

Claim 21
Issue
Appellants inappositely raise, with respect to claims 1-4 and 8-15
supra (see n.1), the issue of whether the prior art references teach or suggest
the limitation of claim 21 reciting “wherein the single dielectric layer
comprises: a polymer selected from the group consisting of (i) polysiloxane
and (ii) mixtures of polysiloxane and polysilsesquioxane; and inorganic
nanoparticles having functional groups which have reacted with the
polymer.” We here address the issue of whether the Examiner erred in so
finding.

Analysis
Appellants argue that Miura teaches the use of polysilsesquioxane as
a layer for promoting the crystallization of the semiconducting layer, but
not for use as a dielectric layer. App. Br. 7 (citing Miura, ¶ [0052]).
Appellants contend that Miura clarifies that the disclosed dielectric layer
and the A layer are separate layers. App. Br. 7 (citing Miura, ¶ [0104]).
The Examiner responds that Kubota discloses a dielectric layer
comprising an organic silicon oxide layer, that is, a polysilsesquioxane
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compound, between the gate electrode layer and the organic semiconductor
layer. Ans. 11 (citing Kubota, ¶ [0042]). The Examiner finds that Miura
teaches a dielectric layer comprising an organic silicon oxide layer such as
a polysiloxane compound, a polysilsesquioxane compound, or a mixture of
a polysiloxane compound and a polysilsesquioxane compound. Id. (citing
Miura, ¶ [0056]).
We are not persuaded by Appellants’ reasoning. Appellants argue
that Miura teaches the use of polysilsesquioxane as a layer for promoting
the crystallization of the semiconducting layer, and not for use as a
dielectric layer. App. Br. 7. However, Kubota explicitly teaches a “gate
insulating [dielectric] layer contains a compound having a silsesquioxane
skeleton of the Formula 1 and an inorganic compound particle which is
dispersed into the compound and does not have ferroelectricity of a relative
dielectric constant of 5 or more.” Kubota, ¶ [0044]. Moreover, Kubota also
teaches “an insulating layer material [i.e., the dielectric layer] …. having a
specific siloxane structure.” Kubota, ¶¶ [0059]-[0060], see also ¶ [0058],
Figure 1. Miura teaches an A layer containing polysiloxanes on the surface
of the dielectric layer, which is immediately adjacent to the semiconductor
layer, and we conclude that it would have been obvious to an artisan of
ordinary skill to combine the teachings of Miura and Kubota such that the
polysioxanes taught in Miura’s A Layer were added to the silsesquioxane in
the dielectric layer taught by Kubota. See In re Nievelt, 482 F.2d 965, 968
(C.C.P.A. 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures”). We also note that it is
generally prima facie obvious to combine two compositions each taught by
the prior art to be useful for the same purpose. Miura teaches that both
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polysiloxane and polysilsesquioxanes are useful for the dielectric layer
associated with organic semiconductor layers. Miura, ¶ [0011].
We therefore find the Examiner did not err in finding that the prior
art references teach or suggest the limitation of claim 21 reciting “wherein
the single dielectric layer comprises: a polymer selected from the group
consisting of (i) polysiloxane and (ii) mixtures of polysiloxane and
polysilsesquioxane; and inorganic nanoparticles having functional groups
which have reacted with the polymer.”

Issue 2
Appellants argue that the Examiner erred in finding that the
combined prior art references teach or suggest the limitation of claim 21
reciting “inorganic nanoparticles having functional groups which have
reacted with the polymer.” App. Br. 13. We therefore address the issue of
whether the Examiner so erred.

Analysis
Appellants argue that only paragraph [0075] of Kubota discusses the
inorganic particles, and that that paragraph does not discuss functional
groups or cross-linking with the polymer. App. Br. 9. Appellants contend
that paragraph [0136] of Kubota discusses the polymer as being cross-
linked with itself, but not with the particles. Id.
The Examiner responds that Kubota teaches inorganic particles
inherently have functional groups crosslinking with the polymer. Ans. 9
(citing Kubota, ¶¶ [0042], [0067], [0075], [0097], [0136]).
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We are not persuaded by Appellants’ reasoning. As an initial matter,
claim 21 does not recite functional groups “crosslinking with the polymer,”
as Appellants argue. The language of claim 21 recites “inorganic
nanoparticles having functional groups which have reacted with the
polymer” (emphasis added). Appellants do not explicitly define the claim
term “reacted” in their Specification, and we therefore construe the claim
term “reacted” in light of the Specification as it would be interpreted by one
of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
(Fed. Cir. 2010).
Appellants’ Specification describes the inorganic particles as being
“dispersed evenly throughout the polymer.” Spec., ¶ [0030]. Moreover,
Appellants’ Specification further discloses that “[i]norganic particles are
required because the polymer has a low dielectric constant.” Id.
Appellants’ Specification discloses that the “polysilsesquioxane may react
with functional groups such as hydroxyl groups at the nanoparticle surface,
forming a shell layer to stabilize the nanoparticles in the composition.”
Spec., ¶ [0037] (emphasis added). Appellants’ Specification also discloses
that the inorganic particles are chosen, in specific embodiments, from the
group consisting of: Al2O3, TiO2, ZrO2, La2O3, Y2O3, Ta2O5, ZrSiO4, Si3N4 ,
SrO, MgO, CaO, HfSiO4, BaTiO3, HfO2, and mixtures thereof. Spec.,
¶ [0030].
Contrary to Appellants’ assertions, Kubota teaches an “inorganic
compound particle which is dispersed into the [polymer] compound.”
Kubota, ¶ [0044]. Kubota also teaches that “the insulating film having the
silsesquioxane skeleton may contain inorganic compound fine particles.
With inorganic compound fine particles contained in the insulating film, the
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gate drive voltage (Vg) of the organic semiconductor device can be reduced
even more.” Kubota, ¶ [0072]. Kubota teaches a non-exclusive list of such
inorganic compound fine particles that may be employed for this purpose,
including Al2O3, TiO2, Ta2O5, CeO2 , ZrO2, MgO, SrTiO3, and BaTiO3,
which list overlaps strongly with the list provided in Appellants’
Specification. Kubota, ¶ [0075].
Claims under examination before the PTO are given their broadest
reasonable interpretation consistent with the specification. In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In the instant
appeal, we construe the language of claim 21 reciting “reacted with” as
being “functional groups such as hydroxyl groups maybe interacting with
polysilsesquioxane at the nanoparticle surface” as disclosed by Appellants’
Specification. The “functional groups” (such as hydroxyl groups) of the
inorganic particles recited in claim 21 must perforce be the same as the
“functional groups” of the inorganic particles taught by Kubota, given the
very substantial overlap of the particles listed in the prior art reference and
those listed in the Specification. Kubota also teaches that these same
inorganic particles are dispersed in polysilsesquioxane as described in
Appellants’ Specification. Kubota, ¶ [0072]; Spec. ¶ [0030]. Additionally,
Appellants have not directed us to evidence tending to establish that
Kubota’s oxides would not react with the polymer while Appellants’ would.
The PTO does not have facilities to perform tests on the prior art or
Appellants’ invention.
Furthermore, we can assume that the inorganic particles taught by
Kubota may be interacting with the polymer molecules, because Kubota
teaches that the particles further reduce the gate drive voltage (Vg) of the
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organic semiconductor device. Kubota, ¶ [0072]. Therefore, and given the
speculative language of Appellants’ Specification with respect to the claim
term “reacted with”, we find that Kubota teaches or suggests the limitation
of claim 21 reciting “inorganic nanoparticles having functional groups
which have reacted with the polymer.”
Consequently, we conclude that the Examiner did not err in finding
that the combined cited prior art references teach the disputed limitation of
claim 21.

DECISION
The Examiner’s rejection of claims 1-15, 21, and 22 under 35 U.S.C.
§ 103(a) is affirmed.

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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