Ex Parte Kim

Patent Trial and Appeal Board

Feb 10, 2017

13122964 (P.T.A.B. Feb. 10, 2017)

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.
13/122,964 04/06/2011 Yong Hwan Kim 34975-00001 4011
124602 7590
Polsinelli PC
1401 EYE ST NW
SUITE 800
WASHINGTON, DC 20005-2225
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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):
SMosiolek@Polsinelli.com
Lee @polsinelli. com
DC -IPDocketing @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YONG HWAN KIM
Appeal 2016-000374
Application 13/122,9641
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER L. OGDEN, and
MONTE T. SQUIRE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1—12 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies INFOVION, Inc. as the real party in interest. Appeal
Br. 2, Mar. 23,2015.
2 Final Office Action, Sept. 22, 2014 [hereinafter Action]; Examiner’s
Answer, July 9, 2015 [hereinafter Answer],
Appeal 2016-000374
Application 13/122,964
BACKGROUND
Appellant’s invention relates to “a method for manufacturing a
transparent anode by forming a thin film for the transparent oxide electrode
on a substrate and post-treating the thin film for the transparent anode using
an irradiation of an electron beam to the surface of the thin film for the
transparent oxide electrode to thereby improve performance of the
electrode.” Spec. 11. Sole independent claim 1 is representative:
1. A method for manufacturing a transparent oxide
electrode using an electron beam post-treatment comprising:
(a) forming a thin film for the transparent oxide electrode
on a substrate; and
(b) irradiating an electron beam with a beam energy of
100 eV to 500 eV onto a surface of the thin film for 5 to 10
minutes such that sheet resistance of the thin film is decreased.
Appeal Br. 10 (emphasis added).
The Examiner maintains the following grounds of rejection3:
I. Claims 1—3, 5—7, and 10 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yamamoto.4 See Action 4—5.
II. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamamoto, and further in view of Kishimoto.5 See Action
6.
3 In the Answer, the Examiner withdrew a rejection of claims 1—12 under 35
U.S.C. § 112, 1st paragraph, as failing to comply with the written description
requirement. See Answer 2.
4 Yamamoto et al., U.S. Patent No. 5,413,959 (issued May 9, 1995).
5 Kishimoto et al., U.S. Patent No. 6,242,686 B1 (issued June 5, 2001).
2
Appeal 2016-000374
Application 13/122,964
III. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamamoto, and further in view of Ohnishi.6 See Action
6-7.
IV. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yamamoto, and further in view of Wakalopulos.7
See Action 7—8.
In the Appeal Brief, Appellant specifically addresses rejection I as it
relates to claim 1, and argues that dependent claims 2, 3, 5—7, and 10 are
allowable for the same reasons. See Appeal Br. 8—9. Appellant relies on the
same arguments in response to rejections II—IV, while arguing that
Kishimoto, Ohnishi, and Wakalopolus fail to remedy the alleged deficiency
of the rejection of claim 1. Because Appellant only addresses the substance
of the Examiner’s rejection of claim 1 as the basis for this appeal, we limit
our discussion to claim 1. Claims 2—12 stand or fall with claim 1.
DISCUSSION
Yamamoto describes “a method of modifying a transparent conductive
oxide film,” in which the film “is irradiated with an energy beam for
increasing the carrier concentration and thereby reducing the resistance of
the transparent conductive oxide film.” Yamamoto Abstract. In the
examples described in Yamamoto, the energy beam is a laser beam;
however, Yamamoto teaches that “the present invention is not restricted to a
6 Ohnishi, U.S. Patent No. US 6,912,031 B2 (issued June 28, 2005).
7 Wakalopulos, U.S. Patent No. 3,970,892 (issued July 20, 1976).
3
Appeal 2016-000374
Application 13/122,964
laser beam but another energy beam such as an electron beam is also
employable.” Id. at 10:35—37.
The Examiner finds that Yamamoto teaches all the limitations of claim
1, except that the reference “does not specifically teach that the beam had an
energy in the range of 100 eV to 500 eV for a duration of 5 to 10 minutes.”
Action 4. However, the Examiner finds that “Yamamoto does teach that the
energy of the beam affected the decrease in sheet resistance.” Id. (citing
Yamamoto 5:3—36, Figs. 1, 2). The Examiner also finds that “the energy of
the energy beam and duration of irradiation were relevant process
parameters affecting the decrease in sheet resistance of the oxide film,” and
that “[o]ne of ordinary skill in the art would have recognized that the energy
and duration of irradiation of the energy beam itself was relevant and would
have applied these teachings to the specific types of energy beams taught by
Yamamoto which included electron beams.” Answer 3. Thus, the Examiner
determines that “it would have been obvious to one having ordinary skill in
the art to have determined optimal beam energy and irradiation duration
through routine experimentation because these factors affected the decrease
in sheet resistance of the film.” Action 5 (citing In reAller, 220 F.2d 454,
456 (CCPA1955)).
Appellant argues that
[ujnlike the presently claimed invention, Yamamoto et al. is not
directed toward the use of an electron beam. Instead, Yamamoto
et al. is only directed toward a laser. Further, Yamamoto et al.
has no disclosure with regard to the beam energy of an electron
beam, much less the duration of an electron beam on a thin film.
Any assertion that a laser, which is a stream [of] photons, is the
same as an electron beam, which is a stream of electrons, is just
wrong. In other words, the laser of Yamamoto et al. provides no
4
Appeal 2016-000374
Application 13/122,964
basis of teaching with regard to the claimed electron beam of the
presently claimed invention.
Appeal Br. 8—9.
Appellant’s argument does not persuade us that the Examiner
reversibly erred in rejecting claim 1. Yamamoto explicitly teaches that the
disclosed method may be performed using either an electron beam or a laser
beam as its energy beam. Yamamoto 10:34—37. Implicit in this teaching is
that Yamamoto’s discussion of the effect of the beam energy and duration of
an energy beam, such as a laser beam, on the film resistance is also
applicable to an electron beam identified as an alternative energy beam.
Yamamoto 5:3—36, 10:34—37. Furthermore, Appellant does not direct us to
any evidence rebutting the Examiner’s finding that beam energy and
duration were known at the time of filing to affect the resistance of the film,
and that a person of ordinary skill in the art would have had the ability and
motivation to determine the optimal energy and duration of an electron
beam, as specified by claim 1, through routine experimentation. Thus, we
find no ground to reverse the Examiner’s decision to reject claim 1. For the
same reasons, we are not persuaded of reversible error in the Examiner’s
rejection of claims 2—12.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
5