Ex Parte Hunt

Patent Trial and Appeal Board

Dec 6, 2016

13019875 (P.T.A.B. Dec. 6, 2016)

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.
13/019,875 02/02/2011 Jeffrey H. Hunt 10-1217-US-NP 1262
11670 7590 12/08/2016
The Boeing Company c/o Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
Irvine, CA 92618
EXAMINER
OSINSKI, MICHAEL S
ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
c ad @ viplawgroup .com
patentadmin @ boeing. com
j 11 @ viplawgroup .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY H. HUNT
Appeal 2016-000303
Application 13/019,8751
Technology Center 2600
Before BRUCE R. WINSOR, AMBER L. HAGY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—5 and 21—25, which are all of the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to a frequency selective imager which senses
photons and emits an electrical pulse voltage proportional to the energy level
of the sensed photon. Abstract.
1 Appellant states the real party in interest is The Boeing Co. App. Br. 2.
Appeal 2016-000303
Application 13/019,875
Representative Claim
Claim 1 is representative and reproduced below with the limitation at
issue emphasized:
1. A frequency selective imager, the imager comprising:
an array of pixels arranged in a focal plane array,
wherein a pixel includes at least one nanoparticle-sized
diameter thermoelectric junction of dissimilar materials that is
formed between nanowires of different compositions,
wherein when the at least one nanoparticle-sized diameter
thermoelectric junction senses at least one photon, charged
carriers in the nanowires diffuse from the at least one
nanoparticle-sized diameter thermoelectric junction to
connecting electrical terminals, thereby causing each of the at
least one nanoparticle-sized diameter thermoelectric junction to
emit at least one electrical pulse having a voltage that is
proportional to an energy level related to a wavelength of the at
least one photon, thereby discriminating the wavelength of the at
least one photon.
Rejection
Claims 1—5 and 21—25 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Huber (US 2012/0062317 Al; Mar. 15,
2012) and Peczalski et al. (EP 2037243 A2; Mar. 18, 2009). Final Act. 5.
ISSUE
Did the Examiner err in finding the combination of Huber and
Peczalski teaches or suggests “at least one nanoparticle-sized diameter
thermoelectric junction of dissimilar materials that is formed between
nano wires of different compositions,” as recited in claim 1?
ANALYSIS
Claim 1 recites “at least one nanoparticle-sized diameter
thermoelectric junction of dissimilar materials that is formed between
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Application 13/019,875
nanowires of different compositions.” Independent claim 21 recites a
commensurate limitation.
The Examiner relies on Huber as teaching “at least one nanoparticle­
sized diameter thermoelectric junction,” but relies on Peczalski as teaching
the junction is “of dissimilar materials” and formed between nanowires “of
different compositions.” Final Act. 5—6; Ans. 2—3. Specifically, the
Examiner and Appellant agree that “in Huber, the nanowire comprises a
single bismuth tellurium crystal (BETes)” whereas “Peczalski teaches a
nano wire 112 composed of a Pt (platinum) section 111 and an Au-Ni (gold-
nickel) section 113.” App. Br. 8; Ans. 3.
Appellant contends it would not be obvious to combine Huber and
Peczalski because “in Peczalski,. . . each antenna is unable to discriminate
between photons with different wavelengths”; because Peczalski measures
resistance whereas Huber measures voltage; and because “[i]t is not
probable, and not likely, that the metal (Pt/Au-Ni) nano wire 112 of Peczalski
would be able to exhibit the same properties (e.g., acting as photon detector)
as the semiconductor (BETes) nanowire 120 of Huber.” App. Br. 6—8.
However, Appellant’s first two arguments merely summarize the prior
art yet fail to sufficiently explain whether and how that affects the
Examiner’s proposed combination, and they therefore are unpersuasive. In
reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/019,875
We also agree with the Examiner that Appellant has made speculative
assertions that lack supporting evidence in the record. Ans. 6; see also
Reply Br. 5. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Moreover, “it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Here, the Examiner does not
seek to combine all of Peczalski’s device into Huber, only Peczalski’s
teaching that a nanowire can be made of two different compositions. Ans.
2—3. Appellant has not provided sufficient evidence to persuade us that a
nano wire and junction of two different compositions would not work in
Huber. That is particularly true given that the only material for the nanowire
specifically identified in the Specification is the same material as Huber:
“the nanowires are preferably manufactured from a compound material
containing Bismuth (Bi) and Tellurium (Te) (e.g., Bismuth Telluride
(BFTes)).” Spec. 116; see also id. H 26—27; Huber 115. If Appellant and
the Examiner are correct that a junction within bismuth tellurium (BFTes) is
not “of dissimilar materials” or “formed between nanowires of different
compositions” (a finding which we do not address here given the limited
record before us), then the Specification of the present application provides
even less disclosure of “dissimilar materials” than Peczalski. Compare
Spec. H 15, 20, 24 (disclosing the nanowire is made of “different
compositions” or “different materials” yet never identifying those materials),
with Peczalski 124 (specifically identifying “[t]he nano wire 112 can be
composed of a Pt [i.e., platinum] section 111 and an Au-Ni [i.e., gold-nickel]
section 113”). Thus, given the record of the Specification and the prior art,
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Application 13/019,875
Appellant has not sufficiently persuaded us with evidence that the Examiner
erred in combining Peczalski’s “different compositions” with Huber’s
nano wire and junction.
Accordingly, we sustain the Examiner’s rejection of claims 1 and 21,
and dependent claims 2—5 and 22—25, which Appellant argues are patentable
for similar reasons. See App. Br. 8; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—5 and 21—25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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