Ex Parte JUNG et al

Patent Trials and Appeals Board

Jan 22, 2019

14539408 - (D) (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/539,408 11/12/2014 Doh Won JUNG
23413 7590 01/24/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
PNK1266US 9438
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOH WON JUNG, HEE JUNG PARK,
KIMOON LEE, YOON CHUL SON, WOOJIN LEE,
and YOUNGJIN CHO
Appeal 2018-002628
Application 14/539,408
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and BRIAN
D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 7, 8, 10, 11, and 14--16. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, SAMSUNG ELECTRONICS CO. LTD., which
according to the Appeal Brief, is also the real party in interest. Appeal Br. 2.
Appeal 2018-002628
Application 14/539,408
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a transparent
conductor. Spec. 1: 12. In particular, Appellant explains that the conductor
may be nanosheets. Id. 3:21-22. Claim 1, reproduced below with emphasis
added to certain key recitations and formatting added for readability, is
illustrative of the claimed subject matter:
1. A transparent conductor comprising:
a compound comprising a Group 5 transition metal and
boron, wherein the compound has a layered structure,
the compound is represented by the following Chemical
Formula 1 :
Chemical Formula 1
MxBy
wherein, in Chemical Formula 1,
M is vanadium, niobium, tantalum, or a
combination thereof,
B is boron, and
x and y are stoichiometric ratios of M and B,
the compound comprises V2B3, Nb2B3, Ta2B3, V3B4,
Nb3B4, Ta3B4, VB, NbB, TaB, VsB6, NbsB6, TasB6, or a
combination thereof,
wherein the compound is in a form of a plurality of
exfoliated nanosheets having a thickness of less than or equal to
about 10 nanometers,
wherein the nanosheets contact one another and provide
an electrical connection,
2 In this Decision, we refer to the Final Office Action dated April 26, 2017
("Final Act."), the Appeal Brief filed September 26, 2017 ("Appeal Br."),
the Examiner's Answer dated November 13, 2017 ("Ans."), and the Reply
Brief filed January 11, 2018 ("Reply Br.").
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Application 14/539,408
wherein the layered structure comprises a plurality of unit
crystal layers,
wherein each unit crystal layer comprises an upper layer
and a lower layer, each consisting of the Group 5 transition metal
and boron disposed between the upper layer and the lower layer,
and
wherein the unit crystal layers have an interlayer bonding
force of less than 0.25 electron volts per Angstrom.
Appeal Br. 12 (Claims App.). Claim 15 recites "[a]n electronic device
including the transparent conductor of claim 1." Id. at 13.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Ko et al. US 2010/0294350 Al Nov. 25, 2010
("Ko")
Salguero et al. US 2015/0140331 Al May 21, 2015
("Salguero")
L. Brewer et al., A Study of the Refractory Bodies, Department of
Chemistry and Chemical Engineering and Radiation Laboratory, University
of California Berkeley, California, 1951 ("Brewer").
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1, 7, 8, 10, and 11 under 35 U.S.C. § 103 as
unpatentable over Salguero in view of Brewer. Final Act. 2.
Rejection 2. Claim 14 under 35 U.S.C. § 103 as unpatentable over
Salguero in view of Brewer and further in view of Ko. Id. at 3.
Rejection 3. Claims 15 and 16 under 35 U.S.C. § 103 as unpatentable
over Ko in view of Salguero and Brewer. Id. at 4.
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Application 14/539,408
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable
over Salguero in view of Brewer. Final Act. 2; Ans. 3. The Examiner finds
that Salguero discloses metal boride nanoparticles in the form of nano sheets.
Ans. 3 (citing, for example, Salguero ,r,r 29, 40). The Examiner finds that
Salguero is silent as to the claimed compounds (i.e., claim 1 's recitation "the
compound comprises V2B3, Nb2B3, Ta2B3, V3B4, Nb3B4, Ta3B4, VB, NbB,
TaB, VsB6, NbsB6, TasB6, or a combination thereof'). Id.
The Examiner finds that Brewer discloses boride compounds
including, for example, NbB and Nb3B4. Id. at 4. The Examiner
determines:
Given that there are finite number of crystal structures formed
and compositions that are stoichiometric with respect boride
compositions disclosed by Brewer and Salguero explicitly recites that
other crystal structures can be used, along with explicitly reciting that
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Application 14/539,408
Id.
interlayer ionic interactions are weaker than covalent bonds between
in boron atoms in the boron sheets, it would have been obvious to one
of ordinary skill in the art to use the structures disclosed by Brewer as
the metal borides of Salguero to produce the claimed structure.
Appellant argues that the Examiner has not adequately established
that there is reason to combine the teachings of Salguero with Brewer.
Appeal Br. 6. In particular, Appellant argues that Salguero does not teach
that all types of metal boride can be successfully exfoliated (i.e., formed into
claim 1 's recited nanosheet structure). Id. Appellant emphasizes that
Salguero discloses that metal diborides (i.e., compounds having two
elemental boron atoms) result in nanosheets but other metal borides provide
different morphologies (e.g., nanoparticles and nanorods). Reply Br. 2. As
evidence, Appellant cites paragraph 44 of Saguero which suggests that
Suegero' s process using metal boride starting materials other than metal
diboride will lead to a shape other than a nanosheet:
These reactions with metal diboride starting materials provide
nanosheets, whereas the same reactions with other metal borides ( e.g.,
LaB6) provide differing nanosized morphologizes (e.g., nanoparticles
and nano rods).
Saguero ,r 44 (emphasis added). Consistent with paragraph 44 of Saguero,
each example of Saguero that is identified as a nanosheet results from a
diboride. Id. at ,r,r 46-51. Example D uses LaB6 but results in nanoparticles.
Id. at i151.
On the present record, we agree with Appellant that the Examiner has
not adequately established why a person of ordinary skill in the art would
have had reason to believe one of the compounds disclosed by Brewer and
encompassed by claim 1 could make a nanosheet as taught by Salguero with
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Application 14/539,408
a reasonable expectation of success. Salguero' s indication that "other metal
borides" ( non-diborides) provide different nano sized morphologies weighs
against a person of ordinary skill in the art having a reasonable expectation
of success in achieving nano sheets with the Salguero process and Brewer's
other borides. Reply Br. 3.
We, therefore, do not sustain the Examiner's rejection of claim 1. We
also do not sustain the Examiner's rejection of the other claims on appeal
because the Examiner's treatment of the other claims does not cure the error
addressed above.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1, 7, 8, 10, 11, and 14--16.
REVERSED
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