Ex Parte Ho et al

Board of Patent Appeals and Interferences

Sep 10, 2007

10391320 (B.P.A.I. Sep. 10, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER KIAN-HOON HO and
VICTOR ALEXANDER LIFTON
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Appeal 2007-1764
Application 10/391,320
Technology Center 1700
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Decided: September 10, 2007
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 4, 5, 9, 11, 12, and 26-32.1 We have jurisdiction under 35 U.S.C.
§ 6.

1 The Examiner indicates that claim 10 has been canceled (Answer 3).
Appeal 2007-1764
Application 10/391,320

2
Claim 1 is illustrative:
1. An apparatus comprising:

a first polymer layer carrying positively charged moieties and a
net positive charge, the first polymer layer including a member
selected from the group consisting of
poly(diallyldimethylammonium), poly(diallylammoniurn), and
poly(allylammonium);

a second polymer layer carrying negatively charged moieties
and a net negative charge, the second polymer layer including
poly(3,4-ethylenedioxythiophene); and

a dielectric substrate;

said first and second polymer layers constituting a multilayer
coating on said dielectric substrate.

The Examiner relies upon the following references:
Rubner US 5,518,767 May 21, 1996
Onda US 6,020,175 Feb. 1, 2000

Peter K. H. Ho, Molecular-Scale Interface Engineering for Polymer Light-
Emitting Diodes, Nature, vol. 404, 481-484 (2000).

Appellants’ claimed invention is directed to an apparatus that includes
a first polymer layer carrying positively charged moieties and a net positive
charge, and a second polymer layer carrying negatively charged moieties
and a net negative charge wherein the first and second polymer layers
constitutes a multilayer coating on a dielectric substrate.
Appeal 2007-1764
Application 10/391,320

3
Appealed claims 1, 5, 9, 11, 12, and 26-32 stand rejected as
unpatentable under 35 U.S.C. § 103(a) over Onda in view of Ho; and claim 4
stands rejected as unpatentable under 35 U.S.C. § 103(a) over Onda in view
of Ho and further in view of Rubner.
Appellants have indicated that “[t]his Reply Brief (filed November 20,
2006) replaces Appellants’ Brief which was filed on July 3, 2006” (Br. 1).
Consequently, we will limit our discussion to Appellants’ position presented
in the Reply Brief. 2 We have considered the Examiner's position as
presented in the Answer mailed September 19, 2006. Appellants have
grouped the arguments for the rejected claims together. Accordingly, all of
the claims stand or fall together. 3
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in full agreement with the Examiner that the
claimed subject matter is unpatentable over the cited prior art. Accordingly,
we will sustain the Examiner’s rejections for the reasons set forth in the
present record, and we add the following for emphasis only.
The Examiner properly determined that Onda teaches a dielectric
support material that is coated with multilayer thin films formed by a layer-
by-layer process comprising coating the solid support with alternating layers
of ionic polymers having opposite net electrical charges (Answer 3-4).

2 We will reference this document as “Br” in this decision.
3 Regarding the subject matter of claim 4, Appellants rely on the position
presented in response to the rejection over Onda in view of Ho.
Consequently, the subject matter of claim 4 will stand or fall with
independent claim 1 from which it depends.
Appeal 2007-1764
Application 10/391,320

4
Onda discloses the positively charged polymer may be
poly(diallyldimethylammonium) and that organic polymer ions such as those
derived from polythiophene can also be used in the present invention (col. 4,
ll. 48-51). Onda discloses the suitability of using mixtures of polymer ions
(complexes) for formation of the coating solution (Onda, col. 5, l. 58- col. 6,
l. 25). The Examiner recognized that Onda did not specify the use of
poly(3,4-ethylene dioxythiophene) in the negatively charged
layer. The Examiner determined that Ho teaches polythiophene conductive
polymer complex, specifically poly(3,4-ethylene
dioxythiophene)-poly(styrene sulfonate), may be used as a conductive
anionic material in a layer-by-layer process to form multilayer films
(Answer 4). Appellants did not dispute that Onda teaches a dielectric
support material that is coated with multilayer thin films Onda and Ho
teaches polythiophene conductive polymer complex.
Appellants’ principal argument is “Onda’s listing at col. 4, lines 48-51
of ‘polymer ions such as those derived from polythiophene’ in the last-
quoted passage stands alone and is not, as the Examiner argues, a statement
or suggestion that both anionic and cationic forms of ‘polythiophene’ exist
or can be used.” (Br. 15). Appellants also argue there is no suggestion or
motivation to combine the teachings of Onda and Ho (Br. 16-20).
We do not find Appellants’ arguments persuasive. Onda teaches a
dielectric support material that is coated with multilayer thin films. Onda
teaches organic polymer ions such as those derived from polythiophene are
suitable for use in the invention. A person of ordinary skill in the art would
Appeal 2007-1764
Application 10/391,320

5
have recognized that poly(3,4-ethylene dioxythiophene)-poly(styrene
sulfonate) was an anionic conductive polymer complex. The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). The obviousness determination “not
only permits, but requires, consideration of common knowledge and
common sense.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367-68, 80 USPQ2d 1641, 1650 (Fed. Cir.
2006). “[A] prior art reference must be ‘considered together with the
knowledge of one of ordinary skill in the pertinent art.” In re Paulsen,
30 F.3d 1475, 1480, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994). As stated
above, Onda discloses suitability of using mixtures of polymer ions for
formation of the coating solution. As such, a person of ordinary skill in the
art would have reasonably expected that ionic polymer complexes could be
utilized in the invention of Onda. Appellants have not argued that a person
of ordinary skill in the art would have recognized that poly(3,4-ethylene
dioxythiophene)-poly(styrene sulfonate) was not an anionic conductive
polymer complex suitable for use in the formation of multilayer thin films
formed by a layer-by-layer process.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
Appeal 2007-1764
Application 10/391,320

6
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)(iv).
AFFIRMED

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