Ex Parte Chueh et al

Board of Patent Appeals and Interferences

Jul 2, 2012

11126242 (B.P.A.I. Jul. 2, 2012)

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

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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.
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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.
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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
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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
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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
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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).
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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