Ex Parte Bulovic et al

Patent Trial and Appeal Board

Feb 11, 2016

13095619 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/095,619 04/27/2011
92364 7590
The Salehi Law Group
8 Crystalglen
Aliso Viejo, CA 92656
02/16/2016
FIRST NAMED INVENTOR
Vladimir Bulovic
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MIT-0900DIV1 2976
EXAMINER
GAMBETTA, KELLY M
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
dan@salehilaw.com
slg. admin @slgip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR BULOVIC,
MARC A. BALDO, MARTIN A. SCHMIDT,
VALERIE GASSEND, and JIANGLONG CHEN
Appeal2014-004669
Application 13/095,619
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-2, 4-6, and 25-32 under 35 U.S.C.
§ 103(a). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Real Party in Interest is stated to be Massachusetts Institute of
Technology (Br. 3).
Appeal2014-004669
Application 13/095,619
Claims 1 and 29 are illustrative of the appealed subject matter
(emphasis added):
1. A method for depositing a layer of substantially solvent-
free organic material on a substrate, comprising:
heating the organic material to form a plurality of suspended
organic particles;
delivering the suspended organic particles to a discharge
nozzle, the discharge nozzle having a plurality of micro-pores for
receiving the suspended organic particles;
processing the suspended organic particles through the
plurality of micro-pores to substantially block a portion of the
suspended organic particles; and
energizing the discharge nozzle to pulsatingly eject the
suspended organic particles from the plurality of micro-pores
onto the substrate.
29. A method for depositing substantially solvent-free organic
film on a substrate, the method comprising:
transporting an OLED solution from a reservoir to a discharge
nozzle, the OLED solution having OLED particles in a solvent;
receiving the OLED solution at a plurality of micro-pores of
the discharge nozzle, each micro-pore containing a porous
medium;
separating a quantity of OLED particles from the solvent at
the porous medium of the micro-pores;
removing the solvent from the discharge nozzle, and;
dislodging the quantity of organic particles from the
discharge nozzle onto a substrate.
(Br. 16, 21 (Claims App.).)
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
(a) Claims 1, 2, 4-6, 25, and 28 as unpatentable over Shtein et al. (US
2005/0087131 Al, published Apr. 28, 2005) (hereinafter "Shtein") in view
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Application 13/095,619
of Ivfayer et al. (US 2005/0100690 Al, published Ivfay 12, 2005) (hereinafter
"Mayer"); and
(b) Claims 26, 27, and 29-32 as unpatentable over Mayer in view of
Shtein.
Appellants' arguments focus on limitations recited in independent
claims 1 and 29 (Br. 9-15). Accordingly, our discussion will focus on
claims 1 and 29.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports Appellants' position that the Examiner has not shown the
applied prior art discloses or suggests a method that includes the claimed
steps (generally Br.). We reverse the Examiner's§ 103 rejections of claims
1-2, 4-6, and 25-32, for the reasons set forth in the Brief.
We add the following for emphasis.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
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Application 13/095,619
Here, Appellants argue that Ivfayer does not disclose or suggest the
limitation ''pulsatingly eject the suspended organic particles" within the
meaning of claim 1 (emphasis added) because Mayer "does not dislodge
particles in a ... start and stop fashion" (Br. 14). Appellants further argue
that neither Shtein nor Mayer discloses or suggests a micro-pore which
contains a porous medium as recited in claim 29 (Br. 12).
Rejection (a) (Claim 1)
It is well established that the "PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). Since applicants may amend claims
to narrow their scope, "a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
Accordingly, we tum to Appellants' Specification to determine the
meaning of the term "pulsatingly eject" as recited in claim 1. The
Specification explains that "[a]ctivating nozzle heater 130 to provide energy
to discharge nozzle 125 can cause ejection of organic particles 109 from the
discharge nozzle" (Spec. ,-i 21 (emphasis added)). The Specification further
explains that heat energy can be provided in "cyclical pulses" and the
duration and intensity of each pulse can be controlled (id.). Therefore, we
conclude that, when claim 1 is read in light of the Specification, the claim
requires that pulsating ejection must occur as a result of periodic
pulses/bursts of thermal energy.
The Examiner finds that Mayer teaches pulsating ejection because the
reference discloses use of an oscillating nozzle for depositing a polymer film
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Application 13/095,619
on a substrate (Final Act. 4 (citing Ivfayer iJ 60) ). The Examiner asserts that
"'pulsing' or 'pulsatingly' includes oscillation" because "pulsing and
oscillation are ... synonyms" (Ans. 8).
Mayer, however, describes oscillation as referring to movement
distinguishable from providing periodic pulses/bursts of thermal energy.
Contrary to the Examiner's position, Mayer's oscillation refers only to the
motion of spray heads (see Mayer ,-i 64 ("[t]he spray heads ... oscillate, as
indicated by double-ended arrows ... about an axis perpendicular to the
plane" of Figure 6A)). The term "oscillate," may be defined as "to swing or
move to and fro, as a pendulum does." See, e.g., Oscillate I Define Oscillate,
DICTIONARY.COM UNABRIDGED
http://dictionary.reference.com/browse/oscillate. The Examiner has not
provided persuasive evidence that "pulsing" and "oscillation" are synonyms,
and has not shown why it would be obvious to pulsatingly eject suspended
organic molecules as opposed to merely oscillating them.
Accordingly, we reverse rejection (a).
Rejection (b) (Claim 29)
The main dispute in this rejection is whether Mayer or Shtein suggest
the limitations "each micro-pore containing a porous medium" and
"separating a quantity of OLED particles from the solvent at the porous
medium of the micro-pores" as required by independent claim 29 (emphasis
added).
The Examiner relies upon Shtein's use of a nozzle with micro-pores
as meeting the claimed step of "receiving the OLED solution at a plurality of
micro-pores of the discharge nozzle" (Ans. 8 (citing Shtein, Figs. 1, 2, and
5); see also Final Act. 5). The Examiner further finds that Mayer's transport
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Application 13/095,619
of an OLED solution with solvent to a discharge nozzle meets the claimed
step of "separating a quantity of OLED particles from the solvent" (Ans. 4-5
(citing Mayer,-i,-i 43-47). The Examiner's findings, however, are silent as to
what disclosure, in either Shtein or Mayer, teaches or suggests the claimed
porous medium (see generally Final Act. 5-6, Ans. 8-9).
A preponderance of the evidence supports Appellants' position that
the Examiner has not adequately established that the applied prior art teaches
or suggests the required porous medium of the micro-pores as recited in
Appellants' independent claim 29.
On the record before us, the Examiner has not shown that each and
every limitation of the claim is either described or suggested by the prior art
or would have been obvious based on the knowledge of the ordinary artisan.
See In re Fine, 837 F.2d at 1074; see also In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) ("A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art"). The fact finder must be
aware "of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a "temptation to read into the prior art the teachings
of the invention in issue")).
Accordingly, we reverse rejection (b ).
DECISION
The Examiner's§ 103 rejections are reversed.
REVERSED
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cdc
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