The Boeing Company

Patent Trials and Appeals Board

Mar 9, 2020

13836646 - (D) (P.T.A.B. Mar. 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.
13/836,646 03/15/2013 Alpana N. Ranade 0192.0248 1013
124834 7590 03/09/2020
MH2 TECHNOLOGY LAW GROUP, LLP (Boeing)
Timothy M. Hsieh
1951 KIDWELL DRIVE
SUITE 310
TYSONS CORNER, VA 22182
EXAMINER
INOUSSA, MOULOUCOULAY
ART UNIT PAPER NUMBER
2818
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
docketing@mh2law.com
doreen@mh2law.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALPANA N. RANADE, MARVI A. MATOS, and GREGORY M.
NEWBLOOM
Appeal 2019-002265
Application 13/836,646
Technology Center 2800
BEFORE LINDA M. GAUDETTE, JEFFREY W. ABRAHAM, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14–18, 20, and 21. See Final Act. 2, 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “The Boeing
Company.” Appeal Br. 1.
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Application 13/836,646

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CLAIMED SUBJECT MATTER
The claims relate to partially crystalline thin films and methods for
forming such films Spec. 1. Claim 14, reproduced below, is illustrative of
the claimed subject matter:
14. An organic material device comprising:
an organic porous interpenetrating network comprising
sized porous domains, the organic porous interpenetrating
network positioned on a substrate, the substrate comprising an
electrically conductive film of metal, indium tin oxide; or a
transparent conductive film; and
inorganic material conformally arranged about at least a
portion of the sized porous domains of the organic porous
interpenetrating network, the inorganic material being at least
partially crystalline.
Claims Appendix (Appeal Br. 15).

REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Nakamura

US 2002/0015881 A1

Feb. 7, 2002

Zang US 2009/0233374 A1 Sept. 17, 2009

REJECTION
Claims 14–17, 20, and 21 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Nakamura. Final Act. 2.
Claim 18 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Nakamura in view of Zang. Final Act. 3.
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OPINION
From the outset, we emphasize that to prevail in an appeal to this
Board, Appellant must adequately explain or identify reversible error in the
Examiner’s rejections. See 37 C.F.R. § 41.37(c)(1) (iv) (2012); see also In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d at 1365 (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections.”). After having considered the evidence
presented in this Appeal and each of Appellant’s contentions, we are not
persuaded that reversible error has been identified, and we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.

Claim 14
In rejecting claim 14, the Examiner finds that Nakamura discloses a
photosensitive layer corresponding to “an organic porous interpenetrating
network.” Final Act. 2 (citing component 20 of Nakamura Fig. 1). Citing
various portions of Nakamura, the Examiner explains that Nakamura
describes the photosensitive layer as being “made up of semiconductor
particles 21 which are sensitized with a dye 22 and a charge transporting
material 23 penetrating into the gaps among the semiconductor particles 21”
and that the “semiconductor particles 21 are in contact with one another and
connected to one another to form a porous film.” Id. at 5 (citing Nakamura
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¶ 23). Nakamura discloses that “[t]he particulate semiconductor layer is
formed on the conductive substrate by, for example, a method comprising
coating the conductive substrate with a dispersion” and provides that
“[u]seful dispersing media include water and various organic solvents.”
Nakamura ¶¶ 44–45.
Appellant argues that the Examiner reversibly erred because the
semiconductors are inorganic materials and therefore do not disclose the
“organic porous interpenetrating network” as recited in claim 14. Appeal Br.
3–4, 8 (arguing that the photosensitive layer of Nakamura has not been
“defined as being organic, a porous organic material, or a porous organic
interpenetrating network”). Appellant cites the Specification paragraphs 11
and 43 as written description support of the recited “organic porous
interpenetrating network.” Id. at 1. Paragraph 11 of the Specification
provides: “In another embodiment, an organic material is provided,
comprising a porous interpenetrating network, and inorganic material
present in at least a portion of the porous interpenetrating network, the
inorganic material being at least partially crystalline.” Paragraph 43 of the
Specification discusses the preparation of “an interpenetrating fiber
network” which includes an example in which “the conjugated organic
polymer is dissolved in a solvent, cooled rapidly, and allowed to gel.”
Appellant does not provide a definition of the limitation “an organic
porous interpenetrating network” and paragraphs 11 and 43 of the
Specification cited by Appellant as written description support provide that a
porous interpenetrating network that is prepared from an organic material
may nonetheless include additional inorganic material. See Spec. ¶ 11
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(providing that “inorganic material [is] present in at least a portion of the
porous interpenetrating network”), ¶ 43; see also Appeal Br. 1.
A prior art reference can anticipate a claimed invention even though it
describes the claimed subject matter using different terms. See In re
Schaumann, 572 F.2d 312, 317 (CCPA 1978) (“[A]lthough appellants would
have us hold that Hildebrandt fails as an anticipation because it does not
contain a description of the subject matter of the appealed claims, ipsissimis
verbis, we cannot countenance a result which so obviously exhalts [sic] form
over substance.”). We are therefore not persuaded by Appellant’s arguments
that the photosensitive layer of Nakamura does not disclose the recited
“organic porous interpenetrating network” because (1) Nakamura does not
define the photosensitive layer as an “organic porous interpenetrating
network” and (2) the photosensitive layer may include semiconductor
particles made from inorganic material.
Appellant next argues that the Examiner reversibly erred in finding
that Nakamura discloses “inorganic material conformally arranged about at
least a portion of the sized porous domains of the organic porous
interpenetrating network” as recited in claim 14. More specifically,
Appellant repeats the argument that “the organic porous interpenetrating
network of claim 14 is still erroneously asserted as the equivalent of
photosensitive layer 20 of Nakamura” but does not elaborate on why the
Examiner reversibly erred in finding that there is no structural distinction
between the prior art and claim 14. Appeal Br. 5 (arguing that Nakamura “is
in contrast with claim 14” without elaboration). Appellant states that
“Nakamura is quite specific in disclosing the dye 22 and charge transporting
material 23 ‘penetrating into the gaps among the semiconductor particles
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21’” (id.) but does not identify reversible error in the Examiner’s finding that
Nakamura discloses “the semiconductor particles are disposed in the organic
interpenetrating network/(photosensitive layer 20) to form porous structure
within the organic interpenetrating network.” Final Act. 5; see In re Jung,
637 F.3d at 1365 (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”).
We further note that Specification paragraph 36, cited by Appellant as
written description support for this particular limitation (Appeal Br. 1),
broadly provides that “the deposition [of an amorphous material] creates a
conformal coating of amorphous metal oxide phase on the substrate
surrounding the crystalline nanoparticles.” The Specification provides that
“deposition of an amorphous inorganic material forms pore-filling inorganic
phases in combination with the nanoparticle seeds.” Spec. ¶ 49. “The
inorganic phase can be at least partially positioned within the organic
phase.” Id. The Examiner’s finding that Nakamura discloses an identical
structure is therefore supported by the Specification.
Based on the foregoing, we sustain the rejection of claim 14.
Appellant does not argue separately the rejection of claims 15–17, 20, and
21 and it is sustained as well. See Appeal Br. 3, 9; see also 37 C.F.R.
§ 41.37(c)(1)(vii).

Claim 18
Claim 18 depends from claim 14 (and claim 17) and additionally
recites: “wherein the organic porous interpenetrating network comprises
conjugated polymer fibers of a ‘pi-pi’ stacked fiber structure, wherein the
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conjugated polymer fibers comprise branched, linear, or branched and linear
covalently or noncovalently coupled fibers.”
Appellant argues that the Examiner’s proposed modification of
Nakamura and Zang would fundamentally alter the principal operation of
Nakamura because Nakamura’s photosensitive layer is inorganic whereas
the pi-pi stacked fiber structure in Zang is organic. Appeal Br. 12.2 We are
not persuaded by this argument because it is inconsistent with Appellant’s
own statement that Nakamura discloses “an inorganic porous layer with an
(organic) dye.” Appeal Br. 5.
We are not persuaded by Appellant’s argument that Nakamura and
Zang are not analogous art (Appeal Br. 12). As the Examiner points out, and
Appellant does not dispute, both references are “directed to a photoelectric
organic material . . . from the same field of endeavor.” Ans. 4; see, e.g.,
Reply Br. We are also not persuaded by Appellant’s argument that Zang
solves a different problem than the pending claims (Appeal Br. 12–13). It is
long-established that “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). The rejection of claim 18 is sustained.

CONCLUSION
The Examiner’s rejections are affirmed.

2 Throughout the Appeal Brief, Appellant refers to the reference as “Zhang.”
See, e.g., Appeal Br. 10–13.
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More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
14–17, 20,
21
102(b) Nakamura 14–17, 20,
21

18 103(a) Nakamura, Zang 18
Overall
Outcome:
  14–18, 20,
21

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED