Shinichi Maeda et al.

Patent Trials and Appeals Board

Jul 24, 2019

14226225 - (D) (P.T.A.B. Jul. 24, 2019)

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.
14/226,225 03/26/2014 Shinichi Maeda 432574US99DIV 6270
22850 7590 07/24/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
LISTVOYB, GREGORY
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINICHI MAEDA and YOSUKE IINUMA1
____________

Appeal 2018-000659
Application 14/226,225
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN and
SHELDON M. McGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This decides an appeal under 35 U.S.C. § 134(a) from the Nov. 28,
2016 final rejection of claims 11–13, 15–19 and 23–37.2 An oral hearing
was held on July 16, 2019.3 We have jurisdiction under 35 U.S.C. § 6.
We reverse.

1 Nissan Chemical Industries, Ltd. is the appellant and real party in interest.
(App. Br. 1).
2 Claims 36 and 37 are withdrawn from consideration.
3 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.

Appeal 2018-000659
Application 14/226,225

2
The following rejections are presented for appeal:
(I) Claims 11–13, 15–19, 24–26, 29, and 32–34 are rejected as
obvious under 35 U.S.C. § 103 over Sawahata (U.S. 6,294,639 B1, iss. Sept.
25, 2001) in view of Vora (U.S. 4,978,737, iss. Dec. 18, 1990).
(II) Claims 23 and 27–28 are rejected as obvious under 35 U.S.C.
§103 over Sawahata in view of Vora and Shimizu (U.S. 2004/0031950 A1,
pub. Feb. 19, 2004).
(III) Claims 11–13, 15–19, 24–26, 29, and 32 are rejected as obvious
under 35 U.S.C. §103 over Hanna (U.S. 2005/0156161 A1, pub. July 21,
2005) in view of Sawahata and Vora.
(IV) Claims 23, 27, and 28 are rejected as obvious under 35 U.S.C.
§103 over Hanna in view of Sawahata, Vora and Shimizu.
(V) Claims 11 and 35 are rejected as obvious under 35 U.S.C. §103
over Sawahata in view of Choi (WO 03/0229955 A1, pub. March 20, 2003).
The statement of rejections I–IV appears in the June 9, 2016 Non
Final Action and the statement of rejection V appears in the November 28,
2016 Final Action.
Claim 11 is illustrative of the subject matter on appeal and is
reproduced below:
11. A process for producing an organic transistor, comprising:
applying a solution containing at least one solvent selected from
the group consisting of a glycol, a lactate and a Ketone, and a
polyimide on a substrate and a gate electrode and baking at a
temperature of at most 180°C;
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wherein the organic solvent soluble polyimide is obtained by
cyclodehydration of a polyamic acid having repeating units
represented by the following formula (1),

wherein A is a tetravalent organic group, B1 is at least
one bivalent organic group selected from the following
formulae (2), (3), ( 4) and (5),

and B2 is a bivalent organic group other than the
following formulae (2) to (9):
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Application 14/226,225

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wherein each R5 independently is a hydrogen, a methyl
group or a trifluoromethyl group,
each of b1 and b2 represents a compositional ratio, and
b1 and b2 have a relationship of 0.5≤ (b1/(b1+b2)) ≤ 1 in ratio
(mol).

OPINION4
We have reviewed each of Appellant’s arguments for patentability.
We determine that a preponderance of the evidence does not support the
Examiner’s conclusion that the claimed subject matter is unpatentable within
the meaning of § 103 in view of the applied prior art. Accordingly, we will
not sustain the Examiner’s § 103 rejections.
Appellant argues the claimed invention is directed to a process for
making a high-performance organic transistor that is obtained by lowering
the baking temperature as compared to the conventional process. (App. Br.

4 We limit our discussion to independent claim 11, the sole independent
claim on appeal.
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9.) Appellant specifically states: “[t]he process of the present claims
includes baking at a temperature of at most 180°C. This is achieved at least
in part by using a solvent having a low boiling point (e.g., 200°C), e.g.,
higher temperatures are not need to evaporate the solvent.” (App. Br. 9.)
Appellant argues the Examiner has not identified a teaching in the cited
references that disclose or suggest the baking temperature requirement of the
claimed invention. (App. Br. 14; Reply Br. 5.)
The dispositive issue for the present appeal is:
Did the Examiner err in determining that Sawahata describes the
baking temperature requirement of “a temperature of at most l80°C”,
required by independent claim 11?5
The Examiner found Sawahata teaches a method, where a treating
agent for liquid crystal alignment is coated on a transparent substrate of e.g.
glass or plastic provided with transparent electrodes, followed by baking, to
prepare a polyimide film, and its surface is subjected to rubbing treatment to
obtain a liquid crystal alignment film. (Non-Final Act 3.) The Examiner
relies upon Sawahata to address the baking temperature requirement of the
claimed invention. The Examiner specifically states:
Regarding baking temperature, Sawahata teaches the following:
In the method by heating, the temperature can be selected
optionally within a range of from 100° C. to 300° [C]., preferably
from 120° C. to 250° C. In the method of chemical ring-closure, e.g.
pyridine or triethylamine may be used in the presence of e.g. acetic
anhydride, and the temperature in this case can be selected optionally
within a range of from 20° C to 200° C (see 9:25).
Thus, the limitations of claim 16 are met.

5 A discussion of Hanna, Vora, Shimizu and Choi is unnecessary for
disposition of this appeal. The Examiner cited these additional references to
address various other limitations.
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(Non-Final Act 4.)
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). “Rejections 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)); see
also, Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555
F.3d 984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made
explicit’ refers not to the teachings in the prior art of a motivation to
combine, but to the court’s analysis.”).
The organic solvent soluble polyimide required by the claimed
invention is obtained by cyclodehydration of a polyamic acid having
repeating units represented by formula (1). (Claim 11; Spec. 28.) The
resulting polyimide is mixed with an organic solvent to prepare a coating
fluid for a gate insulating film. (Spec. 30.) The coating fluid comprising the
solution of soluble polyamide is applied to the substrate “by a dipping
method, a spin coating method, a transfer printing method, a roll coating
method, an ink jetting method, a spraying method or a brush-coating
method.” (Spec. 34.) The coated substrate (plastic) is subsequently baked at
a temperature that is at most 180°C preferably at most 150°C in order to
evaporate the solvent. (Spec. 34.)
The chemical imidization of Sawahata, relied upon by the Examiner,
does not form an organic transistor as required by the present claims. The
chemical imidization as described by Sawahata example 1 is performed at
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120°C wherein the obtained solution of a polyimide is mixed with methanol
to precipitate the polyimide in powder form. (Sawahata Ex. 1.) The obtained
powder was dissolved in γ-butyrolactone to prepare a solution that was
flexographically printed on a glass substrate and baked at a temperature of
200°C. Consequently, the Examiner’s reliance on Sawahata as evidence
describing the baking process of at a temperature of at most 180°C as
required by the claimed invention is misplaced. Moreover, the Sawahata
disclosure relied on by the Examiner that discusses a temperature range of
100° C. to 300° C. refers to a reaction temperature of converting the
polyamic acid into a polyimide, not that of baking a substrate. See Sawahata
9:22–28 (explaining “to convert the polyamic acid into a polyimide, a
method of dehydration ring-closure by heating . . . may be employed” and
that “[i]n the method by heating, the temperature can be selected optionally
within a range of from 100° C. to 300° C.”).
Accordingly, for these reasons, we reverse the Examiner’s rejection of
independent claim 11. We likewise reverse the Examiner’s decision to
reject dependent claims 12, 13, 15–19, and 23–35 since the rejection of these
claims is also based on the description of Sawahata. We need not reach
whether the Examiner’s reliance on other references in addition to Sawahata
for the rejection of the dependent claims was supported by the evidence of
record because the rejection of the independent claim based on Sawahata
cannot stand. Additionally, since we reverse because the Examiner has not
established that the relied-upon disclosures of Sawahata are sufficient to
support a finding of obviousness, we need not reach the issue of the
sufficiency of the evidence of unexpected results in the Specification
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presented by Appellant. Cf. In re Geiger, 815 F.2d 686, 688 (Fed. Cir.
1987).
ORDER
The Examiner’s obviousness rejections are reversed.

REVERSED