Sun, Kai et al.

Patent Trials and Appeals Board

Jun 9, 2020

11880210 - (D) (P.T.A.B. Jun. 9, 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.
11/880,210 07/19/2007 Kai Sun 10762.0037-01 6359
22852 7590 06/09/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
PAYEN, MARVIN
ART UNIT PAPER NUMBER
2816
NOTIFICATION DATE DELIVERY MODE
06/09/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAI SUN, FAN YANG, and STEPHEN R. FORREST
____________

Appeal 2019-004897
Application 11/880,210
Technology Center 2800
____________

Before MONTÉ T. SQUIRE, LILAN REN, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1 and 3–7.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies The Trustees of Princeton University and
The Regents of the University of Michigan as the real parties in interest.
Appeal Brief filed July 20, 2018 (“Appeal Br.”) at 1.
2 Claims 8–14 have been withdrawn from consideration. Final Office
Action entered June 22, 2017 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a method of fabricating a photosensitive
optoelectronic device. Appeal Br. 3–4. Claim 1, the sole pending
independent claim, reads as follows:
1. A method of fabricating a photosensitive optoelectronic
device, comprising:
depositing a first organic semiconductor material over a
first electrode to form a continuous first layer;
depositing a second organic semiconductor material over
the first layer to form a discontinuous second layer, portions of
the first layer remaining exposed;
depositing the first organic semiconductor material
directly on the second layer to form a discontinuous third layer,
portions of at least the second layer remaining exposed;
alternating deposition of the first and second organic
semiconductor materials;
depositing the second organic semiconductor material to
form a continuous fourth layer, and
depositing a second electrode over the fourth layer,
wherein at least one of the first electrode and the second
electrode is transparent, and
the first organic semiconductor material is one or more
donor-type materials or one or more acceptor-type materials
relative to the second organic semiconductor material, said
second organic semiconductor material being one or more
materials of the other material,
wherein at least one of the first and second organic
semiconductor materials comprise nanocrystals.

Appeal Br. 15 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered April 4, 2019 (“Ans.”):
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I. Claims 1 and 3–7 under 35 U.S.C. § 112, first paragraph for
failing to comply with the enablement requirement; and
II. Claims 1 and 3–7 under 35 U.S.C. § 103(a) as unpatentable
over Forrest et al. (US 2002/0119297 Al, published August 29, 2002) in
view of Peumans et al. (US 2005/0061364 Al, published March 24, 2005).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1 and 3–7 under 35 U.S.C. § 112, first paragraph for failing to
comply with the enablement requirement, and rejection of claims 1 and 3–7
under 35 U.S.C. § 103(a) as unpatentable over Forrest in view of Peumans,
for reasons set forth in the Appeal and Reply Briefs, and below.
Rejection I
We first address the Examiner’s rejection of claims 1 and 3–7 under
35 U.S.C. § 112, first paragraph for failing to comply with the enablement
requirement.
The entirety of the Examiner’s enablement rejection as set forth in the
Final Action states that “the applicant has illustrated numerous examples of
prior/related art; however there is/are no clear and distinct figure/s of the
claimed invention. Furthermore, the specification fails to make direct
references to the claimed elements/features as it relates to the figures and in
the context of claims 1, 5 and 6.” Final Act. 5.
On the record before us, however, the Examiner does not establish
that Appellant’s Specification fails to teach those skilled in the art how to
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make and use the full scope of the methods recited in claims 1, 5, and 6
without undue experimentation.
For an enablement rejection, the PTO must “set[] forth a reasonable
explanation as to why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of the invention.” In
re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993). “[T]o be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without ‘undue
experimentation.’” Id. at 1561. Some experimentation, even a considerable
amount, is not “undue” if it is merely routine, or if the Specification provides
a reasonable amount of guidance as to the direction in which the
experimentation should proceed. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988).
The following factors are relevant in determining whether undue
experimentation would be required to make and use a claimed invention:
“(1) the quantity of experimentation necessary, (2) the amount of direction
or guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims.” Id. It is not necessary for an Examiner to review
all of the Wands factors, as long as it is evident that the Examiner’s analysis
is at least reasonably based on some of the factors. In re Hillis, 484 Fed.
App’x 491, 495 (Fed. Cir. 2012) (unpublished); see also Amgen, Inc. v.
Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991) (“[I]t is not
necessary that a court review all the Wands factors to find a disclosure
enabling. They are illustrative, not mandatory.”).
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Appellant’s Specification describes fabrication of a photosensitive
optoelectronic device as recited in claim 1 in which the photoactive region
comprises a nanocrystalline network of ultra-thin, alternating layers of donor
and acceptor molecules, and layers that do not fully cover an underlying
layer are sandwiched between two continuous layers. Spec. ¶¶ 18, 35, 63,
65. The Specification explains that formation of the discontinuous layers
results from a combination of lack of surface wetting, and control of film
morphology and crystalline texture using organic vapor phase deposition
(OVPD). Spec. ¶ 63.
The Specification describes a process for forming such a
nanocrystalline donor/acceptor network that involves first depositing a
continuous and planar donor layer of copper phthalocyanine (CuPc) on a
transparent conductive, indium-tin-oxide (ITO) substrate; adding a very thin
accepter layer of C60 to the continuous donor layer that forms crystalline
islands due to incomplete surface wetting and leaves a portion of the
underlying CuPc layer exposed; and depositing a second, thin crystalline
CuPc layer that partially covers the C60 and includes portions that directly
contact the first, continuous CuPc layer. Spec. ¶ 64. The Specification
explains that by “continuously alternating the deposition of C60 and CuPc,
3D interpenetrating nanocrystalline networks of C60 and CuPc are formed.”
Id.
The Specification further provides a detailed description of suitable
organic vapor phase deposition conditions for fabricating such a photoactive
region comprised of a nanocrystalline network of ultra-thin, alternating
layers of donor and acceptor molecules, including suitable materials for each
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layer, and suitable source temperatures, flow rates, reactor pressures, and
growth times. Spec. ¶ 77.
The Specification also describes formation of an exciton blocking
layer as recited in claim 5 (Spec. ¶¶ 37, 69; Figs. 2, 7, and 8), and formation
of a second photoactive region as recited in claim 6 (Spec. ¶ 51; Figs. 7 and
8).
As Appellant points out (Appeal Br. 7), the Specification also
incorporates U.S. patent application 11/561,448 by reference (Spec. ¶ 3),
which includes Figures 9A–9G that illustrate fabrication of a photoactive
region comprised of a nanocrystalline network of ultra-thin, alternating
layers of donor and acceptor molecules. Application 11/561,448 ¶¶ 81, 82;
Figs. 9A–9G. Specifically, Figure 9A illustrates deposition of first
continuous donor layer 152, Figure 9B illustrates deposition of plural
nanocrystals as first discontinuous layer 953a, Figure 9C illustrates
deposition of plural nanocrystals of an acceptor material as second
discontinuous layer 953b, Figure 9D illustrates deposition of plural
nanocrystals of a donor material as third discontinuous layer 953c, Figure 9E
illustrates deposition of plural nanocrystals as fourth discontinuous layer
953d, and Figure 9F illustrates deposition of continuous acceptor layer 154.
Although the Examiner need not address all of the Wands factors, the
Examiner’s enablement analysis must be based at least on some of the
factors, as discussed above. The Examiner, however, does not discuss even
a single Wands factor in setting forth the enablement rejection. Rather, the
Examiner’s rejection is based solely on an asserted lack of Figures that
illustrate the features of claims 1, 5, and 6, and does not take into
consideration the above disclosures in Appellant’s Specification and
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drawings, including Figures 9A–9G from application 11/561,448
(incorporated into Appellant’s application). Final Act. 5; Ans. 3–4. The
Examiner does not explain why, in light of this direction and guidance
provided in the Specification, and given the state of the prior art, the relative
skill of those in the art, and the predictability of the art, one of ordinary skill
in the art would be unable to fabricate a photosensitive optoelectronic device
according to the method steps recited in claims 1, 5, and 6 without undue
experimentation. Id.
Consequently, the Examiner does not establish that the
experimentation required for one of ordinary skill in the art to practice the
full scope of the methods of claims 1, 5, and 6 would be undue. We,
accordingly, do not sustain the Examiner’s rejection of claims 1 and 3–7
under 35 U.S.C. § 112, first paragraph for failing to comply with the
enablement requirement.
Rejection II
We turn next to the Examiner’s rejection of claims 1 and 3–7 under 35
U.S.C. § 103(a) as unpatentable over Forrest in view of Peumans.
Claim 1 requires the recited method of fabricating a photosensitive
optoelectronic device to comprise, in part, depositing a first organic
semiconductor material over a first electrode to form a continuous first layer;
depositing a second organic semiconductor material over the first layer to
form a discontinuous second layer, so that portions of the first layer remain
exposed; depositing the first organic semiconductor material directly on the
second layer to form a discontinuous third layer, so that portions of at least
the second layer remain exposed; and alternating deposition of the first and
second organic semiconductor materials.
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The Examiner finds that Figure 6 of Forrest discloses fabricating a
photosensitive optoelectronic device by depositing first organic layer 603
over first electrode 602 to form a continuous first layer; depositing second
organic layer 604 over the first layer to form a discontinuous second layer,
so that portions of the first layer remain exposed; depositing the first organic
semiconductor material directly on the second layer to form a discontinuous
third organic layer 605, so that portions of at least the second layer remain
exposed; and alternating deposition of the first and second organic
semiconductor materials. Final Act. 6 (citing Forrest Fig. 6).
The Examiner finds that Forrest does not disclose that at least one of
the first and second organic semiconductor materials are formed of
nanocrystals. Final Act. 7. The Examiner finds, however, that Peumans
discloses “at least one of the first and second organic semiconductor
materials are formed of nanocrystals,” and the Examiner concludes that “it
would have been obvious to one of ordinary skill in the art at the time the
invention was made, since techniques for forming organic semiconductor
materials of nanocrystals are well-understood in the art.” Id. (citing
Peumans ¶¶ 43, 47).
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that a combination of the relied-upon
disclosures of Forrest and Peumans would have suggested fabricating a
photosensitive optoelectronic device according to a method having the
features recited in claim 1.
Forrest explains that Figure 6 illustrates organic photosensitive
optoelectronic cell 600 comprising substrate 601, first electrode 602 adjacent
to substrate 601, first organic layer 603 adjacent to first electrode 602 and
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comprising 3,4,9,10-perylenetetracarboxylic dianhydride (PTCDA),
3,4,9,10-perylenetetracarboxylicbis-benzimidazole (PTCBI), or copper
phthalocyanine (CuPc); second organic layer 604 adjacent to first organic
layer 603 and comprising 4,4-bis[N-(1-napthyl)-N-phenyl-amino]biphenyl
(-NPD); third organic layer 605 adjacent to second organic layer 604 and
comprising aluminum tris(8-hydroxyquinoline) (Alq3); fourth organic layer
606 adjacent to third organic layer 605 and comprising CuPc, PTCBI, or
PTCDA; and second electrode 607 adjacent to fourth organic layer 606.
Forrest ¶ 81; Fig. 6.
As Appellant argues (Appeal Br. 8–9), although the Examiner asserts
that Forrest’s second organic layer 604 forms a discontinuous second layer,
so that portions of first organic layer 603 remain exposed, the Examiner does
not identify any disclosure in Forrest that actually teaches or would have
suggested that second organic layer 604 is discontinuous so that portions of
first organic layer 603 remaining exposed. Similarly, although the Examiner
also asserts that Forrest’s third organic layer 605 forms a discontinuous third
layer, so that portions of second organic layer 604 remain exposed, the
Examiner does not identify any disclosure in Forrest that actually teaches or
would have suggested that third organic layer 605 is discontinuous so that
portions of second organic layer 604 remain exposed, as Appellant also
points out (Appeal Br. 9–10).
Nor does the Examiner identify any actual disclosure in Forrest of
alternating deposition of first and second organic materials, as recited in
claim 1, as Appellant further points out (Appeal Br. 10–11). As discussed
above, Forrest discloses that first organic layer 603 comprises 3,4,9,10-
perylenetetracarboxylic dianhydride (PTCDA), 3,4,9,10-
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perylenetetracarboxylicbis-benzimidazole (PTCBI), or copper
phthalocyanine (CuPc); second organic layer 604 comprises 4,4-bis[N-(1-
napthyl)-N-phenyl-amino]biphenyl (-NPD); third organic layer 605
comprises aluminum tris(8-hydroxyquinoline) (Alq3); and fourth organic
layer 606 comprises CuPc, PTCBI, or PTCDA. The four organic layers
illustrated in Figure 6 of Forrest, therefore, are not comprised of alternating
layers of first and second organic materials.
Although the Examiner responds to Appellant’s arguments in the
Answer by finding—for the first time—that Figure 9 of Forrest illustrates
“multiple first, second, third and fourth organic layers (903a-d, 904a-d,
905a-d and 906a-d) . . . and illustrates portions of the aforementioned layers
remaining exposed” (Ans. 5), like Figure 6 of Forrest, Figure 9 does not
illustrate discontinuous organic layers formed so that portions of one or
more underlying layers remain exposed. Rather, Figure 9 of Forrest
illustrates a stacked organic photosensitive optoelectronic device comprised
of numerous multilayer organic photovoltaic sub-cells. Forrest ¶ 87. Figure
9 shows that a portion of second electrode 907a in the bottom-most sub-cell
is exposed, but portions of underlying first 903a, second 904a, third 905a,
and fourth 906a organic layers are not exposed. Id. Similarly, in the middle
sub-cell, a portion of first electrode 902b is exposed, but portions of
underlying first 903b, second 904b, third 905b, and fourth 906b organic
layers are not exposed. Id. And in the top-most sub-cells, a portion of
second electrode 907c is exposed, but portions of underlying first 903c,
second 904c, third 905c, and fourth 906c organic layers are not exposed, and
portions of overlaying first 903d, second 904d, third 905d, and fourth 906d
organic layers are also not exposed. Id.
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Thus, the Examiner does not identify any actual disclosure in Forrest
that teaches or would have suggested that any of the organic layers in the
organic photosensitive optoelectronic devices described in the reference are
discontinuous, so that portions of one or more underlying organic layers
remain exposed. Because the Examiner does not rely on Peumans3 for any
disclosure that remedies this deficiency in the Examiner’s reliance on
Forrest, we do not sustain the Examiner’s rejection of claims 1 and 3–7
under 35 U.S.C. § 103(a) as unpatentable over Forrest in view of Peumans.

CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7 112, first
paragraph
Enablement 1, 3–7
1, 3–7 103(a) Forrest,
Peumans
1, 3–7
Overall
Outcome
1, 3–7

REVERSED

3 We need not address the Examiner’s reliance on Peumans in detail for
disposition of this appeal.