UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.

Patent Trials and Appeals Board

Feb 7, 2022

2021001127 (P.T.A.B. Feb. 7, 2022)

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. 14/440,510 05/04/2015 Jesse Robert Manders U1198.70019US01 4958 23628 7590 02/07/2022 WOLF GREENFIELD & SACKS, P.C. 600 ATLANTIC AVENUE BOSTON, MA 02210-2206 EXAMINER WALL, VINCENT ART UNIT PAPER NUMBER 2822 NOTIFICATION DATE DELIVERY MODE 02/07/2022 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): Patents_eOfficeAction@WolfGreenfield.com WGS_eOfficeAction@WolfGreenfield.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JESSE ROBERT MANDERS, DO YOUNG KIM, JIHO RYU, JAE WOONG LEE, and FRANKY SO __________ Appeal 2021-001127 Application 14/440,510 Technology Center 2800 ____________ Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims 1-4, 18, 19, 22-24, 26, and 27. We have jurisdiction over the appeal pursuant to 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 University of Florida Research Foundation, Inc. (Appeal Br. 2). Appeal 2021-001127 Application 14/440,510 2 Appellant’s invention is directed to an ultraviolet light detector where the detecting structure is a pn-junction of wide-gap semiconductor layers where the junction occurs at the contact between a p-type semiconductor polycrystalline metal oxide layer and an n-type metal oxide nanoparticle semiconductor layer. (Spec. 2:30-3:1). Claim 18 is illustrative: 18. An ultraviolet light detector, comprising: a pn-junction of wide-gap semiconductor layers, wherein the pn-junction comprises a first semiconductor layer comprising a polycrystalline continuous metal oxide film and a second semiconductor layer comprising a multiplicity of metal oxide nanoparticles, wherein the first semiconductor layer contacts the second semiconductor layer, wherein the polycrystalline continuous metal oxide film comprises a plurality of grains with an average grain size of 1 nm or less; an anode in contact with a p-type semiconductor layer of the pn-junction; a cathode in contact with an n-type semiconductor layer of the pn-junction, wherein an external quantum efficiency (EQE) of the ultraviolet light detector is higher than 100% at a negative voltage of IV between the anode and cathode in response to an incident light with a wavelength between 330 nm and 360 nm. Appellant appeals the following rejections: 1. Claims 18, 1-4, 23, and 26 are rejected under 35 U.S.C. § 103 as unpatentable over Jasieniak (WO 2012/045113 A1, published Apr. 12, 2012) as evidenced by Richards (US 2011/0143088 A1, published June 16, 2011), Song (Xuefeng Song & Lian Gao, Facile Synthesis of Polycrystalline NiO Nanorods Assisted by Microwave Heating, 91 J. Am. Ceramic Soc’y (2008)), and Correia (WO 2011/125036 A1, published Oct. 13, 2011). Appeal 2021-001127 Application 14/440,510 3 2. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Jasieniak as evidenced by Richards, Song, Correia, and WebElements (https://www.webelements.com/compounds/nickel/nickel_oxide. html). 3. Claims 19 and 27 are rejected under 35 U.S.C. § 103 as unpatentable over Jasieniak as evidenced by Richards and Song. 4. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over Jasieniak as evidenced by Richards, Song, and WebElements. Appellant argues the subject matter common to independent claims 18 and 19 only (Appeal Br. 4-18). Appellant separately addresses the rejection of claims 22 and 26, but relies on arguments made regarding claims 18 and 19 (Appeal Br. 17-18). Any claim not argued separately will stand or fall with claim 18 or claim 19. FINDINGS OF FACT & ANALYSIS We review the appealed rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Appeal 2021-001127 Application 14/440,510 4 Claim 18 The Examiner’s findings and conclusions regarding Jasieniak, Richards, Song, and Correia are located on pages 2 to 6 of the Final Office Action. The Examiner finds in relevant part that Jasieniak teaches p-n junction of wide-gap semiconductor layers wherein one of the layers is a metal oxide film that may be a NiO continuous film containing nanoparticles (Final Act. 3). The Examiner finds that Jasieniak teaches the nanoparticles may have a size of at least 1 nanometer (Final Act. 3). The Examiner finds that Jasieniak does not teach the crystal orientation (amorphous, crystalline, or polycrystalline) of the nanoparticles of NiO (Final Act. 4). The Examiner finds Richards teaches that polycrystalline nanoparticles of NiO are known in the art (Final Act. 4). The Examiner finds Song teaches the use of polycrystalline nanostructures of NiO that have strong ultraviolet light absorption properties (Final Act. 4). The Examiner concludes it would have been obvious to use nanostructures of NiO that are polycrystalline in the device of Jasieniak for their low cost and UV absorption characteristics (Final Act. 4). Regarding the quantum efficiency limitation, the Examiner finds that the limitation is optional because it is tied to how the device is used (i.e., whether it is exposed to radiation with a wavelength of between 330 and 360 nm) (Final Act. 5). Alternatively, the Examiner finds the quantum efficiency limitation is a characteristic of the device and would be satisfied by the combined teachings of Jasieniak, Song, Richards, and Correia because the structure would have been the same as recited in claim 18 (Final Act. 5-6; Ans. 6). Appellant argues that none of the prior art references teach a polycrystalline continuous metal oxide film that comprises a plurality of Appeal 2021-001127 Application 14/440,510 5 grains with an average grain size of 1 nm or less as recited in claim 18 (Appeal Br. 9). Appellant argues the declaration of Franky So (the So Declaration) establishes that nanoparticles are not synonymous with polycrystalline (Appeal Br. 10). Appellant contends that the So Declaration states that polycrystalline refers to the atomic structure of the material whereas nanoparticle refers to the size of the particles with diameters on the nanometer scale (Appeal Br. 10). Appellant contends that Jasieniak fails to teach a polycrystalline film having a particle size of 1 nm or less as recited in claim 18 (Appeal Br. 10). Appellant argues there is no reason provided by the Examiner that a person of ordinary skill in the art would have used polycrystalline nanostructures of NiO in Richards or Song in the device of Jasieniak (Appeal Br. 11). Appellant argues that the Examiner’s reasoning that a person of ordinary skill would have used Richard’s and Song’s polycrystalline NiO nanostructures for its good ultraviolet light absorption property in Jasieniak’s solar cells fails to consider that Jasieniak is not concerned with any efficiency at light wavelength below 400 nm (i.e., in the UV range) (Appeal Br. 11). Appellant contends that Song and Richards fail to teach using NiO nanoparticles that are 1 nm or less as required by claim 18 (Appeal Br. 11). Appellant argues that a person of ordinary skill in the art would not have arrived at the claimed nanoparticle size range of 1 nm or less through routine experimentation (Appeal Br. 12). Appellant argues there is no correlation in the art of grain size and quantum efficiency, such that there is no support for the Examiner’s optimization of the grain size through routine experimentation (Appeal Br. 12). Appellant argues that Jasieniak teaches away from using a smaller grain size (Appeal Br. 13). Appeal 2021-001127 Application 14/440,510 6 Appellant argues that Jasieniak teaches using a larger crystal size improves current densities and reduces susceptibility to oxidation (Appeal Br. 13). Appellant argues that Song teaches forming nanorods with diameters of 6.7 nm, 8.8 nm and 17.6 nm (Appeal Br. 14). Appellant contends that Song does not teach how to extrapolate the NiO nanorod synthesis temperature to yield a polycrystalline metal oxide film of a grain size of 1 nm or less (Appeal Br. 14). Appellant argues there is no reasonable expectation of success in using Song’s method to make a 1 nm or less NiO nanoparticle (Appeal Br. 14). Appellant’s arguments are not persuasive because they fail to address the Examiner’s finding that Jasieniak teaches forming a layer that may contain NiO nanoparticles, where the nanoparticles may have a size of at least about 1 nm (Jasieniak ¶¶ 100, 102, 110, 112; Final Act. 3; Ans. 7). In other words, Jasieniak teaches a nanoparticle size range (i.e., “at least about 1 nm”) that overlaps with the recited nanoparticle size range (i.e., “1 nm or less”). Accordingly, the use of NiO in the claimed sized range would have been prima facie obvious. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“We and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). With regard to the claimed polycrystallinity, Appellant does not direct us to a definition of polycrystalline (Appeal Br. 10-11). The So Declaration describes polycrystalline as “the atomic structure of a material.” (So Dec. ¶ 9). The Examiner defines polycrystalline as “material [that] has a plurality of monocrystalline structures, e.g. grains that meet at grain boundaries.” (Ans. 7). Appellant does not dispute the Examiner’s definition of polycrystalline (Reply Br. generally). The Examiner finds that Jasieniak Appeal 2021-001127 Application 14/440,510 7 teaches that the nanoparticles may be called nanocrystals (Ans. 7). The Examiner finds Richards and Song teach that NiO nanostructures may have a polycrystalline structure (Ans. 7; Final Act. 4). As we understand the Examiner’s rejection, Jasieniak is used to teach a semiconductor layered structure that includes a layer having at least about 1 nm NiO nanocrystals. Richards and Song are used as evidentiary references to show that NiO nanostructures have a polycrystalline structure (Final Act. 4). In other words, the Examiner finds that Jasieniak’s NiO nanometer-sized nanocrystals would have a polycrystalline structure. We agree in that Jasieniak teaches that the nanoparticles are typically crystalline and maybe referred to as nanocrystals (¶ 100). Jasieniak’s layer is composed of a plurality of crystal structures (i.e., nanocrystals) and therefore reasonably constitutes a polycrystalline material. The Examiner’s rejection does not appear to suggest substituting Song’s or Richards’ nanoparticles for Jasieniak’s nanocrystals as argued by Appellant (Ans. 7). Accordingly, Appellant’s arguments about the rejection being improper because there is no reason to modify Jasieniak to use Richards’ or Song’s larger nanoparticles is not persuasive. We do not find Jasieniak teaches away from using smaller particles. In fact, Jasieniak teaches the nanoparticles are preferably sized to at least about 1 nm (¶ 102). Appellant points to paragraphs 239, 245, and 262 of Jasieniak as teaching away from smaller grain sizes (Appeal Br. 13). Although Jasieniak may teach benefits with larger particles, Jasieniak does not numerically indicate what is considered a “larger” particle. In other words, Jasieniak’s “at least about 1 nm” may be considered a “large” grain size in the context of paragraph 239. Appellant does not direct us to where Jasieniak’s teachings Appeal 2021-001127 Application 14/440,510 8 of large grain size requires the grain size is necessarily larger than 1 nm. Nevertheless, Jasieniak’s teachings regarding the benefits of a larger grain size do not detract from the teaching that at least about 1 nm grain size is preferred and may be used (Jasieniak ¶ 102). Appellant argues that none of the applied prior art teaches an external quantum efficiency as recited in claim 18 (Appeal Br. 5, 8). Appellant argues that the Examiner treats the quantum efficiency limitation as optional and, thus, has not addressed how the applied prior art teaches the property (Appeal Br. 6). Appellant contends the Examiner erred in failing to consider the limitation (Appeal Br. 6). Appellant argues the quantum efficiency is a characteristic of the UV detector (Appeal Br. 6). Appellant argues the Examiner failed to articulate a reason to use Richards’ or Song’s NiO nanostructures in Jasieniak’s device to arrive at the claimed quantum efficiency (Appeal Br. 7). Appellant argues that Jasieniak discloses solar cells containing films of sintered nanoparticles and does not mention detecting ultraviolet light (Appeal Br. 8). Appellant’s arguments are not persuasive. The Examiner has established that Jasieniak as evidenced by Richards, Song, and Correia has the same structure as recited in claim 18 (Final Act. 2-6). As noted above, Jasieniak teaches nanoparticle size range (i.e., at least about 1 nm) that overlaps with the claimed size range (i.e., 1 nm or less). Jasieniak teaches that the nanoparticles may be nanocrystals and may include NiO. Jasieniak’s layered device structure containing the same or substantially similar materials would have possessed the same quantum efficiency property as recited in claim 18. Appellant bears the burden of showing that Jasieniak’s device does not have the quantum efficiency. In re Best, 562 Appeal 2021-001127 Application 14/440,510 9 F.2d 1252, 1255 (CCPA 1977). Appellant does not proffer any evidence to satisfy that burden. Rather, Appellant argues that if the quantum efficiency is an unappreciated property of the device, then the quantum efficiency would not have been optimized because it was an unknown characteristic of the device (Reply Br. 3-4). The Examiner is not relying on optimization in finding that the characteristic would have flowed naturally from the structure of the device (Ans. 6). We find that the preponderance of the evidence favors the Examiner’s obviousness conclusion. Appellant has not shown a difference in structure between the claimed device and Jasieniak’s device as understood in light of the evidence from Richards, Song and Correia. We affirm the Examiner’s § 103 rejection of claims 18, 1-4, 23, and 26 over Jasieniak as evidenced by Richards, Song and Correia. We further affirm the § 103 rejection of claim 24 over Jasieniak as evidenced by Richards, Song, Correia, and WebElements. Claim 19 The Examiner’s findings and conclusions regarding Jasieniak, Richards, and Song are located on pages 10 to 13 of the Final Office Action. Appellant argues Jasieniak, Richards, and Song fail to teach the X-ray diffraction pattern recited in claim 19 (Appeal Br. 15). Appellant contends that the applied prior art fails to teach the same grain size recited in the Specification (i.e., approximately 1 nm grains) and thus the X-ray diffraction pattern would not have resulted from the material suggested by Jasieniak, Richards and Song (Appeal Br. 16). Appellant argues there is no basis for the Examiner’s assertion that the claimed characteristic angle of full width at Appeal 2021-001127 Application 14/440,510 10 half maximum (FWHM) for a diffraction peak is a characteristic of the grain size of the polycrystalline NiO (Appeal Br. 16). Appellant contends that Song teaches that crystalline sizes calculated by the Debye-Scherrer equation depends on factors other than just FWHM and grain size (Appeal Br. 16). Appellant’s arguments do not dispute that grain size and FWHM are related. Rather, Appellant contends that there is not necessarily a direct relationship between grain size and FWHM (Appeal Br. 16). The Examiner’s rejection is based on Appellant’s disclosure that grain size is verified by using grazing incidence X-ray diffraction pattern (GIXRD) (Final Act. 12). In other words, Appellant discloses that GIXRD and grain size are related. Similar to our discussion of claim 18 above, Appellant has not shown a distinction between the structure recited in claim 19 and that disclosed by Jasieniak as evidenced by Richards and Song. The identity of structure between the prior art and claims shifts the burden to Appellant to show the prior art structure would not have possessed the claimed property or characteristic. Best, 562 F.2d at 1255. Appellant has not met that burden. We affirm the Examiner’s § 103 of claims 19 and 27 over Jasieniak as evidenced by Richards and Song. For the same reasons, we affirm the Examiner’s § 103 rejection of claim 22 over Jasieniak as evidenced by Richards, Song, and WebElements. DECISION Appeal 2021-001127 Application 14/440,510 11 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18, 1-4, 23, 26 103(a) Jasieniak, Richards, Song, Correia 18, 1-4, 23, 26 24 103(a) Jasieniak, Richards, Song, Correia, WebElements 24 19, 27 103(a) Jasieniak, Richards, Song 19, 27 22 103(a) Jasieniak, Richards, Song, WebElements 22 Overall Outcome 1-4, 18, 19, 22- 24, 26, 27 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