Koji Murayama

Patent Trials and Appeals Board

Apr 1, 2020

13430040 - (D) (P.T.A.B. Apr. 1, 2020)

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.
13/430,040 03/26/2012 Koji Murayama 036433.03146 2057
38485 7590 04/01/2020
ARENT FOX LLP - New York
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
GONZALEZ RAMOS, MAYLA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOJI MURAYAMA
____________

Appeal 2019-002713
Application 13/430,040
Technology Center 1700
____________

Before JEFFREY T. SMITH, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s non-final decision to reject claims 1–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Murata
Manufacturing Company, Ltd. (Appeal Br. 3).
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to a method for producing
a nanograin material and a photoelectric conversion device having a
quantum dot layer comprising the nanograin material. Appeal Br. 2. Claim
1 illustrates the subject matter on appeal and is reproduced below:
1. A method of producing a nanograin material,
the method comprising:
forming a film containing ultrafine grains having a grain size
of 10 nm or less using a first dispersion solution having a first
polarity, the ultrafine grains being covered with a first
surfactant having a first transporting characteristic; and
immersing the film in a second dispersion solution having a
second polarity opposite the first polarity, the second dispersion
solution containing a second surfactant having a second
transporting characteristic different from the first transporting
characteristic so that the ultrafine grains of the film are covered
with both the first and second surfactants, and, through the
film, the film has a changing ratio of the first surfactant to the
second surfactant between opposed first and second surfaces of
the film, and a first concentration of the first surfactant at the
first surface is greater than that of the second surfactant at the
first surface and a second concentration of the second surfactant
at the second surface is greater than that of the first surfactant at
the second surface,
wherein the first transporting characteristic is one of a hole-
transporting characteristic and an electron-transporting
characteristic.
Appeal Br. 13, Claims Appendix.
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Appellant (see App. Br., generally) requests review of the following
rejections from the Examiner’s Non-Final Office Action (Non-Final Act. 5–
26):
I. Claims 1–6, 8, 10–11, and 15-18 rejected under 35 U.S.C. § 103(a)
as unpatentable over Cho et al. (US 2010/0108984 A1, published May
6, 2010) (“Cho”).
II. Claims 7, 9, 11–14, 19, and 20 rejected under 35 U.S.C. § 103(a)
as unpatentable over Cho in view of Takahashi et al. (US
2008/0206565 A1, published August 28, 2008).
OPINION
The Examiner finds that the claims of the instant application are
unpatentable over Cho with regard to claims 1–6, 8, 10–11, and 15–18, and
unpatentable over Cho in view of Takahashi with regard to claims 7, 9, 11–
14, 19, and 20. (Non-Final Act. 5–26.)
Appellant does not dispute the Examiner’s findings and conclusions
with respect to the rejections presented (see generally Appeal. Br.). Instead,
Appellant contends that the Cho reference is not evidence under 35 U.S.C.
§ 102 against the claimed invention. See generally id.
The instant application claims priority to a foreign application filed on
September 28, 2009. The Cho reference was filed in the U.S. on August 3,
2009. Attempting to swear behind Cho and disqualify the reference as prior
art, Appellant submits a Declaration of Koji Murayama under 37 C.F.R.
§ 1.131, dated July 5, 2016 (hereinafter “Murayama Declaration”),
Declarations of Kenji Kawabata, dated June 27, 2016 (hereinafter
“Kawabata Declaration I”) and August 17, 2017 (hereinafter “Kawabata
Declaration 2”), and a Declaration of Yasutoshi Kunihiro, dated September
7, 2017 (hereinafter “Kunihiro Declaration”), accompanied by a number of
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documentary exhibits in support thereof. See Exhibits 1–7 (entered into the
record on August 3, 2016 and September 7, 2017) and Exhibits A-G (entered
into the record on August 3, 2016 and September 7, 2017).
The Examiner determines that Appellant’s evidence is sufficient to
establish conception prior to Cho’s filing date. (Ans. 23.) However, the
Examiner determines that the evidence is insufficient to adequately establish
diligence from conception to the filing date of the foreign application during
a “critical period.” (Id. at 23–24.) The Examiner explains that “[t]he critical
period begins with the conception of the invention and ends with the
constructive reduction to practice (i.e., from 03/26/2009 to 09/28/2009).”
(Id. at 23.) According to the Examiner, “[t]here is a substantial gap between
06/2009 and 09/2009, which is when the first draft was received
(09/16/2009). . . . For the months of April 2009 through May 2009, and July
2009 through August 2009, Appellant has merely made allegations of
diligence but has failed to show that there was diligence during the
continuous critical period.” Id. at 24.
Appellant argues that in accordance with 37 C.F.R. § 1.131, the
critical period in which diligence must be shown begins prior to the effective
date of the reference or activity and ends with the date of a reduction to
practice. (Reply Br. 2.) Appellant asserts that since the present application
is a pre-AIA application, the Cho reference is prior art as of its U.S. filing
date of August 3, 2009, and therefore, the critical period started on August 2,
2009 and ended on September 28, 2009 with the filing of the Japanese
priority application. (Id.) Appellant asserts that detailed evidence has been
submitted showing reasonably continuous diligence during the critical
period. (Appeal Br. 3 Appendix B.) Appellant further cites MPEP
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§ 2138.06 and Perfect Surgical Techniques, Inc. v. Olympus America, Inc.,
841 F.3d 1004, 1009 (Fed. Cir. 2016), in support of the position that the
absence of evidence that an inventor and his attorney revised or discussed
the application on a daily basis is alone insufficient to determine that the
invention was abandoned or unreasonably delayed. (Reply Br. 3.)
We first determine which of the proposed critical periods is the
appropriate one for which diligence must be shown. Consistent with Perfect
Surgical, we agree with Appellant that the critical period in which diligence
must be shown begins just prior to the effective date of the reference or
activity and ends with the date of a reduction to practice. In this case, the
critical period begins just prior to the effective date of the Cho reference
(effective date of Cho reference is the U.S. filing date of August 3, 2009),
and ends with the filing of the Japanese priority application, September 28,
2009. Reply Br. 2; see Perfect Surgical, 841 F.3d at 1007. That is, the
critical period starting on August 2, 2009 and ending on September 28, 2009
with the filing of the Japanese priority application.
Having determined the appropriate critical period, the dispositive
issue for review on appeal is whether the Examiner erred in finding that
Appellant’s evidence, Declaration and exhibits, are insufficient to establish
diligence by Appellant for the critical period from August 2, 2009 and
ending on September 28, 2009 with the filing of the Japanese priority
application to which the instant application claims priority.
“Diligence turns on the factual record.” In re Steed, 802 F.3d 1311,
1317 (Fed. Cir. 2015); see also 37 C.F.R. § 1.131(b).
The diligence of 35 U.S.C. § 102(g) relates to reasonable
“attorney-diligence” and “engineering-diligence” (Keizerv.
Bradley, 270 F.2d 396, 397 (CCPA 1959)), which does not
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require that “an inventor or his attorney . . . drop all other work
and concentrate on the particular invention involved . . . .”
Emery v. Ronden, 188 USPQ 264, 268 (Bd. Pat. Inter. 1974).
MPEP § 2138.06.
Reasonable diligence is all that is required of the
attorney. Reasonable diligence is established if attorney
worked reasonably hard on the application during the
continuous critical period. If the attorney has a reasonable
backlog of unrelated cases which he takes up in chronological
order and carries out expeditiously, that is sufficient. Work on
a related case(s) that contributed substantially to the ultimate
preparation of an application can be credited as diligence.
MPEP § 2138.06.
The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application. Original exhibits of
drawings or records, or photocopies thereof, must accompany
and form part of the affidavit or declaration or their absence
must be satisfactorily explained. 37 C.F.R. § 1.131(b).
[T]he absence of evidence that an inventor and his
attorney revised or discussed the application on a daily basis is
alone insufficient to determine that the invention was
abandoned or unreasonably delayed. Perfect Surgical, 841 F.3d
at 1009.
A patent owner need not prove the inventor continuously
exercised reasonable diligence throughout the critical period; it
must show there was reasonably continuous diligence. Under
this standard, an inventor is not required to work on reducing
his invention to practice every day during the critical period.
And periods of inactivity within the critical period do not
automatically vanquish a patent owner’s claim of reasonable
diligence. Id.
In determining whether an invention antedates another,
the point of the diligence analysis is not to scour the
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[applicant’s] corroborating evidence in search of intervals of
time where the [applicant] has failed to substantiate some sort
of activity. It is to assure that, in light of the evidence as a
whole, “the invention was not abandoned or unreasonably
delayed.” . . . One must weigh the collection of evidence over
the entire critical period to make such a determination. Id.
(emphasis added) (citing Brown v. Barbacid, 436 F.3d 1376,
1379 (Fed. Cir. 2006)).
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we determine
that Appellant has identified reversible error in the Examiner’s
determination that Appellant has not provided sufficient evidence of
reasonable continuous diligence during the critical period.
On the contrary, we find that Appellant has provided sufficient
evidence of reasonable continuous diligence during the critical period
consistent with MPEP § 2138.06 which states “[i]f the attorney has a
reasonable backlog of unrelated cases which he takes up in chronological
order and carries out expeditiously, that is sufficient.”
We find the Declarations and exhibits submitted by Appellant are
sufficient to establish diligence during the critical period. Rather than
weighing the evidence as a whole over the entire critical period, the
Examiner focuses only on portions of the critical period for which there are
“lapses” of time between the dates of the exhibits. Ans. 26. In other words,
the Examiner merely scoured the evidence searching for time intervals
where no activity is substantiated. See Perfect Surgical, 841 F.3d at 1009
(Fed. Cir. 2016) (stating that “periods of inactivity within the critical period
do not automatically vanquish a patent owner’s claim of reasonable
diligence”). For example, the Examiner questions Appellant's diligence
between June 2009 and September 2009 by asserting that the corresponding
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Kunihiro Declaration merely makes allegations of diligence without
showing evidence of diligence during the continuous critical period. Ans.
26–27 (discussing paragraph 11 of the Kunihiro Declaration). Yet, the
Examiner does not appear to weigh the Kunihiro Declaration evidence
which states that
“12. The preparation of both of the nanograin material and the
process of making the nanograin material applications
progressed in parallel because of overlap in the disclosure.
Because of the advanced technical nature of the invention, I
continuously and repeatedly communicated with the inventor to
ask various questions, address points where we needed further
clarification, and request supplemental data. For example, we
requested further information on the method of preparation of a
quantum dot dispersion solution, information regarding the
various energy levels, and other technical matters so as to
provide a complete and clear disclosure of the invention.
13. On September 16, 2009, I send [sic] a first draft of the
application to Mr. Kenji Kawabata at Murata. A copy of the
email enclosing the first draft is attached hereto as Exhibit 3,
along with an English translation thereof. Copies of the draft
application documents attached to the email have been omitted
to preserve confidential and privileged information contained
therein. Due to the advanced technical nature of this invention,
a significant period of time was required for preparing an
adequate first draft. Even with the advanced technical
invention of the present application, it is my opinion that my
actions were reasonably continuously diligent based on the
many hundreds of other cases I was handling at the time.”
Kunihiro Declaration ¶¶ 12–13; see also Appeal Br. 7–8.
Thus, the Examiner does not explain adequately why the evidence
Appellant submits is insufficient to show the requisite reasonable continuous
diligence during the critical period consistent with MPEP § 2138.06.
Weighing the evidence as a whole over the entire critical period, it is
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apparent that Appellant did not abandon or unreasonably delay the
invention, and, thus, the evidence sufficiently establishes reasonably
continuous diligence throughout the critical period. See Perfect Surgical,
841 F.3d at 1009.
For the reasons stated above we reverse the prior art rejections of
claims 1–20 under 35 U.S.C. § 103(a).
ORDER
The rejections of claims 1–20 under 35 U.S.C. § 103(a) are reversed.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 10–
11, 15–18 103(a) Cho
1–6, 8,
10–11,
15–18
7, 9, 11–14,
19, 20 103(a) Cho, Takahashi
7, 9, 11–
14, 19, 20
Overall
Outcome 1–20

REVERSED