Ex Parte Foos et al

Patent Trial and Appeal Board

May 2, 2018

14256263 (P.T.A.B. May. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/256,263 04/18/2014
26384 7590 05/02/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
Edward E. Foos
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.
102634-USl 7668
EXAMINER
OYER, ANDREW J
ART UNIT PAPER NUMBER
1767
MAILDATE DELIVERY MODE
05/02/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD E. FOOS and TROY K. TOWNSEND
Appeal2017-005555
Application 14/256,263
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1---62. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Appellants claim a composition for forming indium tin oxide
1 Appellants identify The Government of the United States of America, as
represented by the Secretary of the Navy, as the real party in interest.
Appeal Brief filed September 14, 2016 ("App Br."), 2.
2 Claims 7-17 stand withdrawn from consideration. Final Office Action
entered April 20, 2016 ("Final Act."), 1.
Appeal2017-005555
Application 14/256,263
(independent claim 1) and a composition for forming metal oxides
(independent claim 6). Claims 1 and 6 illustrate the subject matter on appeal
and are reproduced below with contested language italicized:
1. A composition for forming indium tin oxide (ITO), the
composition consisting essentially of
a solution of a tin salt, an indium(III) salt, ammonium
nitrate, ammonium hydroxide, and a solvent of 2-
methoxyethanol or water,
wherein, upon heating in a solution, the composition is
capable of forming a substantially transparent ITO film having
a sheet resistance of< 300 Q/sq.
6. A composition for forming metal oxides, the composition
consisting essentially of
a solution of a nitrate of zinc, indium, cadmium, or
aluminum, optionally tin chloride, ammonium nitrate,
ammonium hydroxide, and a solvent of 2-methoxyethanol or
water,
wherein the composition is capable of forming zinc tin
oxide (ZTO), indium oxide (IO), indium zinc oxide (IZO),
cadmium tin oxide (CTO), aluminum zinc oxide (AZO), or zinc
oxide (ZO).
App. Br. 5---6 (Claims Appendix, emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered
December 20, 2016 ("Ans."):
I. Claims 1 and 3 under 35 U.S.C. § 102(a)(l) and (a)(2) as
anticipated by Facchetti et al. (US 2013/0196469 Al, published August 1,
2013);
II. Claim 6 under 35 U.S.C. § 102(a)(l) and (a)(2) as anticipated
by Facchetti; and
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Application 14/256,263
III. Claims 2, 4, and 5 under 35 U.S.C. § 103 as unpatentable over
Facchetti.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we reverse the Examiner's rejections of
claims 1, 3, and 6 under 35 U.S.C. § 102(a)(l) and (a)(2), and rejection of
claims 2, 4, and 5 under 35 U.S.C. § 103, for the reasons set forth below.
Rejections I and II
We need consider only independent claims 1 and 6, which both
include a "consisting essentially of' transitional phrase separating the
preamble from the body of the claims.
The Examiner finds that Facchetti discloses "a composition containing
indium nitrate, tin chloride, ammonium nitrate, and aqueous NH3 (i.e.,
ammonium hydroxide) in 2-methoxyethanol," which the Examiner finds
meets the limitations of claims 1 and 6. Final Act. 2 (citing Facchetti i-f 156).
Appellants argue that "Facchetti teaches a method [for producing
metal oxide films] involving acetylacetone or other fuels," and Appellants
assert that the "fuel is not an incidental contaminant in Fachetti, but rather a
vital component." App. Br. 3. Appellants point out that their Specification
discusses a prior art process for producing indium tin oxide (ITO) films that
utilizes acetylacetone as a fuel, and indicates that the method results in poor
films "contaminated with highly absorbing yellow powder and overall high
resistances." App. Br. 3 (citing Spec. i-fi-118-19). Appellants further point
out that their Specification explicitly states that "the fuel component
[ acetylacetone] of the prior art mixture is not required and is contrary to the
basic and novel characteristics of the new formula." App. Br. 3 (citing Spec.
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Application 14/256,263
i-f 20 [sic i-f 21 ], emphasis omitted). Appellants argue that the claims thus
"exclude a fuel such as acetylacetone" due to the "consisting essentially of'
transitional phrase in independent claims 1 and 6, and Appellants assert that
"Fachetti [therefore] falls outside the scope of the claims." App. Br. 3.
The phrase "consisting essentially of' in a patent claim has long been
understood to permit inclusion of components not listed in the claim,
provided that they do not "materially affect the basic and novel properties of
the invention." PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354
(Fed. Cir. 1998); In re Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963).
The dispositive claim construction issue in this appeal is therefore whether a
fuel as disclosed in Facchetti would materially affect the basic and novel
properties of the compositions of claims 1 and 6 so as to exclude it from the
claimed compositions.
We look to Appellants' Specification to determine the basic and novel
properties of the compositions of claims 1 and 6. AK Steel Corp. v. Sollac
and Ugine, 344 F.3d 1234, 1239-1240 (2003). The Specification indicates
that the object of Appellants' invention is to produce high-quality metal
oxide films that are conductive and transparent to visible light. i-f 1. The
Specification explains that Appellants developed a new formula---or
precursor solution---of indium and tin salts that can be applied by solution
deposition onto a non-conductive substrate to yield a substantially
transparent indium tin oxide film having a sheet resistance of less than 300
Q/sq. i-fi-1 3, 4, 18.
The Specification describes a prior art "literature method" for
producing an indium tin oxide film that entails combining indium and tin
salts in a solution containing 2-methoxyethanol (solvent), NH40H (pH
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Application 14/256,263
stabilizer), NH4N03 (oxidizing agent), and acetylacetone (fuel). i-f 19. The
Specification explains that heating this solution to a relatively low
temperature of 150-350QC initiates a highly exothermic combustion
synthesis reaction that produces indium tin oxide contaminated with a highly
absorbing, non-conductive yellow powder. Id. The Specification indicates
that the yellow powder present in the indium tin oxide solution causes films
produced from the solution to have resistances greater than 1000 Q/sq and
increased absorbance (decreased transmittance) in the visible region between
250 and 350 nm. i-fi-18, 19. Appellants illustrate these properties of the prior
art films in Figures 2A and 2B.
The Specification discloses that Appellants surprisingly discovered
that a fuel ( acetylacetone) is not needed in the indium tin oxide formation
reaction, and eliminating the fuel produces films having 30 times lower
resistivity. i-f 21. The Specification further discloses that Appellants
developed a new composition that does not contain fuel and yields
conductive and highly transparent films of indium tin oxide that exhibit a
resistivity of less than 300 Q/sq. Id. The Specification further indicates that
"this new formula can be applied to other transparent conductive metal
oxides such as zinc tin oxide (ZTO), indium oxide (IO), indium zinc oxide
(IZO), cadmium tin oxide (CTO), aluminum zinc oxide (AZO), zinc oxide
(ZO) to produce higher quality films." i-f 22. The Specification further states
that "[ t ]he fuel component of the prior art mixture is not required and is
contrary to the basic and novel characteristics of the new formula." i-f 21.
The Specification thus makes clear that the presence of a fuel such as
acetylacetone in Appellants' composition for forming metal oxides would
adversely affect the basic and novel properties of Appellants' invention, and
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Application 14/256,263
claim 1 and 6 therefore exclude fuels from the claimed compositions due to
the "consisting essentially of' transitional phrases recited in the claims. AK
Steel, 344 F.3d at 1239--1240.
The composition disclosed in Facchetti relied on by the Examiner
includes acetylacetone, which is excluded from claims 1 and 6. We find no
disclosure in Facchetti of compositions that do not include a fuel, and the
Examiner does not identify any such disclosure. Therefore, the Examiner
does not establish that Facchetti anticipates claims 1 and 6.
Although the Examiner asserts that Appellants do not prove that
acetylacetone is contrary to the basic and novel characteristics of the
compositions of claims 1 and 6, and further contends that "a statement to
that end within the specification does not limit the claims," the Examiner
fails to appreciate that the claims must be interpreted in light of the
disclosures provided in the Specification. Ans. 5. As discussed above,
Appellants' Specification explicitly indicates that the presence of a fuel such
as acetylacetone in Appellants' composition for forming metal oxides
adversely affects the basic and novel properties of Appellants' invention.
Contrary to the Examiner's assertions, in light of this disclosure in
Appellants' Specification, claims 1 and 6 are properly interpreted to exclude
fuels as disclosed in Facchetti from the claimed compositions. See, e.g.,
PPG, 156 F.3d at 1355 ("PPG could have defined the scope of the phrase
"consisting essentially of' for purposes of its patent by making clear in its
specification what it regarded as constituting a material change in the basic
and novel characteristics of the invention.").
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Accordingly, consistent with Appellants' arguments, we do not
sustain the Examiner's rejections of claims 1, 3, and 6 under 35 U.S.C.
§ 102(a)(l) and (a)(2).
Rejection III
We also do not sustain the Examiner's rejection of claims 2, 4, and 5
under 35 U.S.C. § 103 because it suffers from the same reversible errors as
the Examiner's rejections of claims 1 and 6 discussed above. Final Act. 3--4.
DECISION
We reverse the Examiner's rejections of claims 1, 3, and 6 under
35 U.S.C. § 102(a)(l) and (a)(2), and rejection of claims 2, 4, and 5 under
35 U.S.C. § 103.
REVERSED
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