Ex Parte Chueh et alDownload PDFBoard of Patent Appeals and InterferencesJul 2, 201211126242 (B.P.A.I. Jul. 2, 2012) Copy Citation 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. 11/126,242 05/11/2005 Miao-Ju Chueh CHUE3003/EM 3514 23364 7590 07/03/2012 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER FITZGERALD, JOHN P ART UNIT PAPER NUMBER 2856 MAIL DATE DELIVERY MODE 07/03/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte MIAO-JU CHUEH, PI-GUEY SU, YIH-SHIAW HUANG, I-CHERNG CHEN, and TUNG-SHENG SHIH ________________ Appeal 2010-001904 Application 11/126242 Technology Center 2800 ________________ Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001904 Application 11/126,242 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4-6, 17, and 22, which stand rejected as unpatentable under 35 U.S.C. § 103(A) over Yang, US 2005/0009224 A1, Wang, US 6,863,943, and Gole, US 2003/01390003 1 . We affirm. STATEMENT OF THE CASE Appellants argue independent claim 1, and dependent claims 4, 17, and 22 together and we therefore select claim 1 as representative of this group. Claim 1 recites: 1. A gas sensor, which comprises: a substrate; two separated metal electrodes located on a surface of said substrate; a semiconductor film deposited on the surface of said substrate and connecting said two metal electrodes; wherein said semiconductor film comprises a mixed oxide of zinc and indium, and said mixed oxide of zinc and indium are in the form of nanowires which constitute a gas-sensing surface of said semiconductor film, wherein said nanowires have a diameter of 5-900 nm and in a substantially perpendicular orientation to the surface of the substrate. 1 Claims 18-21 are objected to as being dependent upon a rejected base claim. Appeal 2010-001904 Application 11/126,242 3 Br. 15. Appellants also argue dependent claims 5 and 6 together. We therefore select claim 5 as representative: 5. The sensor as claimed in Claim 1, wherein said two separated electrodes are parallel to each other and are made of gold, platinum, or an alloy thereof. Id. ISSUES Appellants argue that the Examiner erred in concluding that claim 1 was unpatentable under 35 U.S.C. § 103(a) over the combination of Yang, Wang, and Gole. Br. 3. Appellants further argue that the Examiner erred in finding that claim 5 is unpatentable under 35 U.S.C. § 103(a) over the same prior art references. Br. 13. ANALYSIS Claim 1 Appellants first argue that the Examiner erred in finding that the combination of Yang, Wang, and Gole disclosed or suggested a gas sensor having two separated metal electrodes located on a surface of the substrate, a semiconductor film deposited on the surface of the substrate and connecting the two metal electrodes as recited in claim 1. Br. 3. Appellants point to Figure 13 of Yang in support of their argument that the zinc oxide nanowire-polymer composite is located upon the first conductive layer of Yang’s recited structure and not on the substrate as recited in claim 1. Br. 5. Appellants contend that Yang does not therefore disclose “a semiconductor film deposited on the surface of the substrate, wherein the semiconductor film comprises a mixed oxide of zinc and indium in the form of nanowires which constitute a gas-sensing surface of the semiconductor film,” as recited by claim 1. Appeal 2010-001904 Application 11/126,242 4 The Examiner responds by pointing out that both the Specification and Figure 13 of Yang disclose that “the nanowire can be . . . deposited on the conductive layer [62]” in the manner described herein” and “that the semiconductive polymer layer may be . . . deposited on the wire composite [66].” Ans. 5. The Examiner found that the conditional language “can be” and “may be” of the embodiment disclosed in the Specification are not limiting on Yang’s Figure 13 and, further, that Yang’s Figure 13 shows the formed semiconductor film located on both the substrate and the conductive layer. Ans. 5-6. We find the Examiner’s reasoning persuasive. Yang’s Figure 13 clearly shows that the wire-polymer composite [66] is in contact with the substrate [68] between the first [62] and second [64] conducting elements. Consequently, we find that the Examiner was reasonable in finding that Yang discloses a semiconductor film deposited on the surface of the substrate, wherein the semiconductor film comprises a mixed oxide of zinc and indium in the form of nanowires which constitute a gas-sensing surface of the semiconductor film as recited by claim 1 and herewith affirm the Examiner’s finding. Appellants also argue that the Yang Specification characterizes the wire-polymer composite as being “sandwiched” between the two conductive layers and that paragraph 104 of the Specification discloses that “the wire composite 66 can be formed first, and then the substrate 68 and the first and second conductive layers 62, 64 can be laminated together.” Yang ¶ 0104. Consequently, according to Appellants, Yang does not disclose claim 1’s recited “semiconductor film deposited on the surface of the substrate, or a semiconductor film comprising a mixed oxide of zinc and Appeal 2010-001904 Application 11/126,242 5 indium in the form of nanowires which constitute a gas-sensing surface of the semiconductor film.” Br. 7. The Examiner responds that Figure 13 clearly depicts a portion of the semiconductor wire-polymer composite [66] that is exposed and not totally enclosed between the first 62 and second [64] conductive layers. We agree with, and affirm, the Examiner’s finding in this respect. Appellants next contend that Yang fails to disclose or suggest a gas sensor having metal electrodes as recited in claim 1. Br. 7. Appellants point to paragraph 99 of the Yang Specification, which teaches that the disclosed embodiment includes a first conductive layer which comprises a transparent or translucent material to allow for the passage of light. Id. Because metal is neither transparent nor translucent, Appellants argue, Yang teaches, at most, a sensor with only one metal electrode. The Examiner answers that because Gole teaches two metal electrodes, and because both electrodes in Yang are electrically conductive, claim 1 is obvious under 35 U.S.C. § 103(a) over a combination of Yang and Gole. We find that the Examiner’s findings and conclusion are reasonable. We first adopt the Examiner’s finding that Yang’s disclosed first and second conductive layers correspond to the electrodes of claim 1, a finding not disputed by the Appellants. Br. 3. The Yang Specification teaches that the first conductive layer may comprise indium tin oxide while the second conductive layer may comprise gold or silver. Yang, ¶ 0099. Consequently, and contrary to Appellants arguments, Yang teaches “two metal electrodes” as recited in claim 1. Moreover, as the Examiner points out, Gole explicitly teaches the use of metals, including gold, in both Appeal 2010-001904 Application 11/126,242 6 electrodes (front and rear contacts). Gole ¶¶ 109-110. We therefore affirm the Examiner’s finding. Appellants further argue that because the Wang and Gole references do not disclose various elements disclosed by Yang, the Examiner erred by combining Yang with Wang and Gole. Br. 9-11. We agree with the Examiner that primary reference Yang need not bodily incorporate all of the features of the secondary references Wang and Gole, and that the claimed invention need not be expressly suggested in any one or all of the references. Ans. 8. Rather, the proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in the art. See In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (citing In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981) (and cases cited therein)). Furthermore, Appellants have not provided sufficient evidence to show why a skilled artisan would not be able to modify the teachings without predictable results. Consequently, we affirm the Examiner’s combination of the references. Finally, Appellants argue that the Examiner erred by failing to account for objective indicia of nonobviousness disclosed in Examples 1 and 2 of the Appellants’ Specification. Br. 11-12. According to the Appellants, the data provided by these examples, depicted Figures 6 & 7, teach that the addition of indium increases the sensitivity of nanowires of zinc oxide by approximately three-fold. Id., citing Spec. 6-9. Specifically, Example 2 discloses the method by which a gas sensor was prepared having a semiconductor film with nanowires of a mixed oxide of zinc and indium. Appellants’ argument is not persuasive. Wang explicitly teaches the preparation of nanostructures fabricated from mixed oxides of indium and Appeal 2010-001904 Application 11/126,242 7 zinc. Wang’s claim 11 recites a nanostructure “wherein the semiconductor is chosen from ZnS, GaN, CdSe, and oxides of zinc, cadmium, gallium, indium, tin, lead, and, and combinations thereof.” Wang, col. 19, ll. 18-20. The claim therefore explicitly contemplates nanowires of a mixed oxide of zinc and indium. We consequently affirm the Examiner’s finding that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Yang, Wang, and Gole. Claim 5 Appellants argue that because Yang teaches that the first conductive layer is a transparent or translucent material that allows the passage of light, Yang therefore teaches away from the Appellants’ claim 5, which recites that the two separated, parallel electrodes are made of gold, platinum, or an alloy thereof. Consequently, according to Appellants, one skilled in the art would lack the motivation to combine and modify Yang, Wang, and Gole in a manner to obtain claim 5. We disagree. A reference may be said to teach away from the invention if it criticizes, discredits, or otherwise discourages modifying a reference to arrive at the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Furthermore, merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives. Fulton, 391 F.3d at 1201. We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appeal 2010-001904 Application 11/126,242 8 Yang teaches the use of “a first conductive layer 62, which comprises a transparent or translucent material to allow for the passage of light” as one example of one embodiment of the claimed invention. Yang, ¶ 0099. Nevertheless, Yang does not explicitly or implicitly criticize, discredit, or otherwise discourage the use of gold, platinum, or an alloy thereof, as the basis for an electrode in a gas sensor. Consequently, we disagree with Appellants’ argument that Yang teaches away from Appellants’ closed invention and affirm the Examiner’s rejection of claim 5 as unpatentable under 35 U.S.C. § 103(a) over Yang, Wang, and Gole. CONCLUSION Appellants have not shown that the Examiner erred in rejecting claims 1, 4-6, 17, and 22 under 35 U.S.C. §103(a) as unpatentable over Yang, Wang, and Gole. DECISION The Examiner’s decision rejecting claims 1, 4-6, 17, and 22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED ELD Copy with citationCopy as parenthetical citation