Ex Parte Forrest et al

Patent Trial and Appeal Board

Oct 29, 2018

12843949 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/843,949 07/27/2010 Stephen R. Forrest
22852 7590 10/31/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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.
10762.0066-00 7133
EXAMINER
GOODWIN, DAVID J
ART UNIT PAPER NUMBER
2817
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN R. FORREST and NING LI
Appeal2017-001530
Application 12/843,949 1
Technology Center 2800
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, and 4--23, which constitute all of the claims
pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b). 3
We reverse.
1 Appellants state that their interests in this application have been assigned to
the Regents of the University of Michigan, which has conveyed
confirmatory licenses to the United States Air Force and the U.S.
Department of Energy and which has licensed NanoFlex Power Corporation
under this application. App. Br. 3.
2 Claim 3 is canceled.
3 On September 20, 2018, an oral argument was held in this case.
Appeal2017-001530
Application 12/843,949
STATEMENT OF THE CASE
Introduction
Appellants disclosed and claimed invention generally relates to
methods of making bulk heterojunction organic photovoltaic cells by
glancing angle deposition. Spec. ,r 4. 4 More specifically, it is directed to
growing organic thin films for bulk heterojunctions by oblique
angle vacuum deposition (i.e., where the trajectory of the vapor flux is not
parallel to the substrate). Id.
Claim 1, which is the only pending independent claim, is reproduced
below (with the disputed limitation emphasized in italics):
1. A method of making an organic photovoltaic cell, said
method comprising depositing onto a substrate at least one
organic material to form at least one bulk heterojunction
comprising one or more columnar structures of organic films by
exposing said substrate to an incident vapor flux having a
trajectory that is at an angle (a) ranging from 30° to 70° to the
substrate normal.
App. Br. 16 (Claims App'x).
Rejections on Appeal
Claims 1, 2, 4--10, 12-14, 16, 17, and 20-22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Yang et al. (US 7,638,356
4 Our Decision refers to the Final Office Action mailed Nov. 19, 2014
("Final Act."); Appellants' Appeal Brief filed Mar. 15, 2016 ("App. Br.")
and Reply Brief filed Nov. 14, 2016 ("Reply Br."); the Examiner's Answer
mailed Nov. 3, 2016 ("Ans."); and the original Specification filed July 27,
2010 ("Spec.").
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Application 12/843,949
B2; issued Dec. 29, 2009) ("Yang") in view of Robbie et al. (US 6,206,065
Bl; issued Mar. 27, 2001) ("Robbie"). Final Act. 5-8.
Claim 11 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yang, Robbie, and Forrest (US 6,972,431 B2; issued Dec.
6, 2005).
Claim 15 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yang, Robbie, and Forrest.
Claim 18 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yang, Robbie, and Strip (US 7,208,863 B2; issued Apr.
24, 2007).
Claim 19 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yang, Robbie, and Strip.
Claim 23 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yang, Robbie, and Fujiyama et al. (US 2007/0219375 Al;
published Sept. 20, 2007) ("Fujiyama").
ANALYSIS
Rejection of Claim 1 Under§ 103(a)
Claim 1 recites "exposing said substrate to an incident vapor flux
having a trajectory that is at an angle (a) ranging from 30° to 70° to the
substrate normal." In the Final Office Action, the Examiner finds that Yang
teaches exposing substrate 110 to an incident vapor flux having a trajectory
that is not parallel to the substrate normal. Final Act. 2 ( citing Yang Fig.
10b; 16:10-50). The Examiner also finds that "Yang does not teach the
angle of tilt." Id. Regarding the spray angle, the Examiner finds that
"Robbie teaches spray depositing organic material at an angle of 30 to 70
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Application 12/843,949
degrees." Id. ( citing Robbie Fig. 1 [ CJ). The Examiner further finds that,
given the teaching of the references, it would have been obvious to
determine the optimum angle of vapor disposition by routine
experimentation. Id. at 2-3.
In the Appeal Brief, Appellants argue that Robbie teaches away from
using an angle of tilt of 30Q as shown in Figure 1 C of Robbie. App. Br. 10-
12. Appellants argue that Robbie specifically disparages using such an
angle because Robbie teaches that "at 0-50Q, the resultant of thin films do
not have particularly useful properties." Id. at 10 (citing Robbie at 4:30-
33). Appellants also argue that Robbie "states that its 'inventors have found
that for angles of incidence of vapor flux greater than 70° and even more so
at 80° and greater, the resultant thin films have well defined structures with
useful properties.'" Id. ( citing Robbie at 4:33-36). Appellants contend that
by implementing the lower recited angle ( a) ranging from 30° to 70°,
Appellants "proceeded contrary to the accepted wisdom of the prior art,"
which is "strong evidence ofnonobviousness." Id. at 11 (citing W.L. Gore
& Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983); see
also In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986)). Appellants
further contend that the Examiner's "ordinary experimentation" finding is
unsupported and conclusory, as well as contradicted by Robbie which
specifies the angles required to achieve "well defined structures with useful
properties" as those angles "greater than 70Q and even more so at 80Q and
greater." Id. at 13 (citing Robbie at 4:31-36).
As noted by Appellants, the Examiner presents a new rationale for
obviousness in the Answer. Reply Br. 2. In the Answer, the Examiner finds
that Yang "teaches that the incident vapor flux is at an angle of O and 90
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Application 12/843,949
degrees" and a person of ordinary skill in the art would "expect an angle of
between O and 90 degrees, although unspecified by Yang, to be effective and
produce desirable results." Ans. 2 (citing Yang Figs. 10, 11). The Examiner
also finds that Robbie teaches that incident vapor flux angles of O to 90
degrees are known in the art, and a person of ordinary skill would have
"every expectation of success in using the 30 degree angle taught by Robbie
in the deposition process taught by Yang." Id. In regard to Appellants'
argument that Robbie teaches away from a combination with Yang, the
Examiner finds "Yang does not disparage depositing at an angle, rather
Yang explicitly encourages doing so." Id. at 3. The Examiner also finds
that Robbie teaches alternative deposition angles and "a less effective
embodiment is not a teaching away." Id. (citing In re Gurley, 27 F.3d 551,
554 (Fed. Cir. 1994)). Regarding "routine optimization," the Examiner finds
that Yang shows the flux angle is "with the ordinary and general conditions
of the prior art process" and where the general conditions of a claim are
disclosed in the prior art, "it is not inventive to discover the optimum or
workable ranges by routine experimentation." Id. ( citing In re Aller, 220
F.2d 454,456 (CCPA 1955)).
We are persuaded by Appellants' arguments that the Examiner has
erred. First, contrary to the Examiner's finding that, based on Yang, a
person of ordinary skill in the art would expect any angle between O and 90
degrees "to be effective and produce desirable results," Appellants argue,
and we agree, that Yang does not teach any specific angle, "much less
provide any reasonable expectation of success for using all angles between 0
and 90 degrees." Reply Br. 2. Instead, we agree with Appellants, and the
Examiner's finding in the Final Office Action, that "Yang does not teach the
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angle of tilt." Id.; Final Act. 2. We also agree with Appellants' argument
that the Examiner has failed "to provide any evidence or factual support" for
the finding that the mere existence of an unspecified angle in Yang would
lead to an expectation that an angle between O and 90 degrees would be
"effective and produce desirable results." Reply Br. 3 ( citing KSR Int 'l. Co.
v. Teleflex Inc., 550 U.S. 398,418 (2007)). We further agree with
Appellants' argument that the Examiner's reliance on Yang for an
expectation of success for the entire range from O to 90 degrees contradicts
the disclosure of Robbie:
A person of ordinary skill in the art would not have had any
reasonable expectation of success in using a 30-70 degree angle
based on Robbie's statements that 0-50 degree angles "do not
have particularly useful properties" and its teaching that angles
"greater than 70° and even more so at 80° and greater" should
be used instead. Robbie at 4:30-36. Indeed, a person of ordinary
skill would not have ignored Robbie's specific guidance away
from Appellant's claimed ranges based on the minimal
disclosure of Yang, which the Examiner admits "does not teach
the angle of tilt." FOA at 2; In re Hedges, 783 F.2d 1038, 1041
(Fed. Cir. 1987) (holding, on similar facts, that "[i]t is
impermissible within the framework of section 103 to pick and
choose from any one reference only so much of it as will support
a given position, to the exclusion of other parts necessary to the
full appreciation of what such reference fairly suggests to one of
ordinary skill in the art.") ( citation omitted).
Reply Br. 3.
Second, we agree with Appellants' argument that Robbie teaches
away from claim 1 's requirement that the incident vapor flux has a trajectory
that is at "an angle (a) ranging from 30° to 70° to the substrate normal." In
that regard, we agree with Appellants that Robbie does not merely disclose
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alternatives, as the Examiner finds, but "expressly guides one of ordinary
skill away from the claimed range of 30 to 70 degrees, stating that such low
angles 'do not result in particularly useful properties'" and instead directs
one of ordinary skill to use angles "greater than 70Q and ... at 80Q and
greater." Id. at 4 (citing Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
F.3d 1342, 1362 (Fed. Cir. 2012) ("A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant."). We
further agree with Appellants that the Examiner's reliance on In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) "is misplaced because Fulton did not
involve any disparaging statements in the prior art, unlike Robbie's
disparaging remarks about Appellant[]s['] claimed angles." Reply Br. 4.
Third, for the following reasons set forth by Appellants, we are
persuaded by Appellants' argument that the Examiner's finding that the
claimed range is merely the result of "routine experimentation" is
unsupported and conclusory:
In sum, the Examiner's Answer identifies no reason and no
motivation for why a person of ordinary skill would seek to use
an angle of 30 to 70 degrees. It therefore fails to provide the
necessary foundation to support a conclusion of obviousness.
InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327,
1352 (Fed. Cir. 2014) (conclusory statements, lacking evidence
of a motivation to arrive at the claimed invention, are "not
sufficient and fraught with hindsight bias") ( citation omitted).
Bare allegations of "routine optimization" do not suffice,
particularly when the angles relied upon by the Examiner were
disparaged in Robbie. In re Hedges, 783 F.2d at 1040. One of
ordinary skill would have understood from Robbie and Yang that
angles from 30 to 70 degrees should not be used, and would have
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instead sought to use angles greater than 70° "and even more so
at 80° and greater," which Robbie identifies as having "well
defined structures with useful properties." Id. at 4:33-36.
Reply Br. 4.
Based on this record, we are persuaded the Examiner erred in finding
the combination of Yang and Robbie teaches or suggests exposing the
substrate to an incident vapor flux having a trajectory that is at "an angle ( a)
ranging from 30° to 70° to the substrate normal," as recited in claim 1.
Accordingly, we do not sustain the Examiner's rejection of claim 1, and
dependent claims 2 and 4--23, under§ 103.
DECISION
We reverse the Examiner's rejection of claims 1, 2, and 4--23 under 35
U.S.C. § 103(a).
REVERSED
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