Ex Parte Lee et al

Patent Trial and Appeal Board

Aug 13, 2018

12362131 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/362, 131 01/29/2009
23995 7590 08/15/2018
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Tzong-Ming Lee
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.
TAIW-1019 9489
EXAMINER
PADGETT, MARIANNE L
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
firm@rabinberdo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TZONG-MING LEE, RUOH-HUEYUANG,
KUO-CHAN CHIOU, YU-MING WANG, and YI-TING CHENG 1
Appeal2017-005612
Application 12/362, 131
Technology Center 1700
Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-6, 9, and 10. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a method for manufacturing a
substrate with surface structure by employing photothermal effect. E.g.,
Spec. 1:10-12; Claim 1. Claim 1, the sole independent claim, is reproduced
below from page 24 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is Industrial
Technology Research Institute. Br. 1.
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Application 12/362, 131
1. A method for manufacturing a substrate with surface structure
by employing photothermal effect, comprising the steps of:
a. providing a substrate;
b. distributing on the provided substrate a plurality of
nanoparticles including nanoparticles having a first primary
particle size and nanoparticles having a second primary
particle size, such that the nanoparticles having the first
primary particle size are mixed with the nanoparticles having
the second primary particle size, the first primary particle size
being between 120 nm and 500 nm, the second primary
particle size being between 2.5 nm and 40 nm, a material of
the nanoparticles being selected from the group consisting of
Au, Cu, Ag and a combination thereof, and the first primary
particle size being greater than the second primary particle
size;
c. irradiating at least part of the plurality of nanoparticles on the
provided substrate with a specific wavelength, so that the
irradiated nanoparticles among the plurality of nanoparticles
are excited to convert irradiating energy to thermal energy;
and
d. forming a layer of a predetermined pattern on a surface of the
provided substrate through the thermal energy formed by the
excited nanoparticles among the plurality of nanoparticles,
wherein
the first primary particle size and the second primary particle size
are determined by measuring non-agglomerated nanoparticles;
the nanoparticles having the second primary particle size are
melted and fused with the nanoparticles having the first primary
particle size, which are around the nanoparticles having the
second primary particle size; and
the melted nanoparticles having the second primary particle size
fill vacant space between melted nanoparticles having the first
primary particle size, so as to form the predetermined pattern.
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REJECTIONS ON APPEAL 2
The claims stand rejected as follows:
1. Claims 1---6, 9, and 10 under 35 U.S.C. § I03(a) as unpatentable
over Li (US 2008/0286488 Al, claiming priority to a provisional application
filed May 18, 2007), Kodas (US 6,951,666 B2, issued Oct. 4, 2005),
Agrawal '282 (US 2010/0002282 Al, claiming priority to a provisional
application filed July 3, 2008) or Agrawal '690 (US 2010/0039690 Al,
claiming priority to a provisional application filed May 19, 2008) or
Agrawal '900 (WO 2009/099900 A2, claiming priority to an application
filed Jan. 31, 2008), and optionally Yadav (US 6,652,967 B2, issued Nov.
25, 2003);
2. Claims 1---6, 9, and 10 under 35 U.S.C. § I03(a) as unpatentable
over Prasad (US 2005/0276933 Al, published Dec. 15, 2005), Kodas,
Agrawal '282 or Agrawal '690 or Agrawal '900, and optionally Yadav;
3. Claims 1---6, 9, and 10 for nonstatutory double patenting over
claims 1-23 of Wang (US 8,715,536 B2, issued May 6, 2014).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-26; Ans. 3-14.
2 The Appellants do not challenge the prior art status of any reference.
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For each ground of rejection, the Appellants argue the claims as a
group. We select claim 1 as representative, and the remaining claims will
stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection 1
The Examiner finds that Li teaches a method that falls within the
scope of claim 1, including the use of copper nanoparticles ranging in size
from 2 nm to 200 nm. Final Act. 10-14. The Examiner determines that,
because claim 1 recites "a plurality of nanoparticles including nanoparticles
having a first primary particle size and nanoparticles having a second
primary particle size" ( emphasis added), claim 1 is not limited to a bimodal
distribution of particle sizes, and that Li's disclosure of a mixture of sizes
ranging from 2 to 200 nm falls within the scope of claim 1. Id.; Ans. 3.
The Examiner further finds that, even if a bimodal distribution of
particle sizes were required by claim 1, Kodas teaches "making
compositions for creating the conductive features of metals including Ag
&/or Cu," and that Kodas "specifically discusses use of bimodal or tri-modal
particle size distributions with nanoparticles advantageously enhancing
packing efficiency of the particles when deposited." Final Act. 6.
The Examiner finds that the three Agrawal references "all have
teachings with respect to the advantageous use of nanoparticles in the laser
sintering, where particularly the melting points of metal nanoparticles for
materials ... sharply decreased below 50 nm due to the increase in surface
area." Id. at 7. The Examiner determines:
Therefore, given the teachings of Kodas . . . concerning the
desirability of rapid heating that advantageously prevent damage
to underlying substrate of the deposited precursors for
conductive configurations, where particles having low melting
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Id.
points are employed, including with laser treatment to effect such
short heating times; it would've been obvious to one of ordinary
skill in the art when employing bimodal distributions for taught
packing efficiency, to particularly employ nanoparticles having
a size below 50 nm, particularly Au or Ag or Cu nanoparticles
on the order of 10 nm or 6 nm for their known sharply decreased
melting points over larger particle sizes in order to accomplish
the taught advantageous rapid heating times & preventing
damage to underlying substrates.
With regards to the optional reliance on Yadav, the Examiner finds
that, to the extent that the other references do not teach or suggest the
particle size distribution of claim 1, Y adav "provides teachings that would
have reasonably suggested to one of ordinary skill [in] the art effective
particle size distributions for delivering combinations of fine nanoscale &
coarser carrier particles," including bimodal particle size distributions falling
with the scope of claim 1. Ans. 12-13; Final Act. 15-16.
In view of those and other findings, the Examiner concludes that the
subject matter of claim 1 would have been obvious to a person of ordinary
skill in the art.
The Appellants first argue, contrary to the Examiner's determination
that Li uses a mixture of particle sizes, "that Li uses particles of the same
size." Br. 14--15. The Appellants rely on Figures 13-17 of Li for support.
Id.
In the Answer, the Examiner finds that the figures of Li relied upon by
the Appellants "are clearly testing the effects of a range of different specific
particle sizes on the photosintering process," but that Li is not limited to
compositions having only a single particle size. Ans. 6. The Examiner
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relies on Li's disclosure of copper inks in which "[t]he size of copper
nanoparticles ranges from 2 nm to 200 nm." Id. (citing Li ,r 144).
The Appellants do not file a Reply Brief to contest the Examiner's
findings concerning Li's figures. Li explicitly teaches that "[t]he size of
copper nanoparticles ranges from 2 nm to 200 nm." Li ,r 144; see also Final
Act. 10-11 (discussing additional disclosures of Li). That disclosure at least
suggests copper inks that include a range of particle sizes. On this record,
the Appellants have not shown error in the Examiner's determination that Li
teaches or suggests compositions including a mixture of particle sizes
ranging from 2 nm to 200 nm. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... ").
The Appellants also argue that "Li teaches that all of [the]
nanoparticles have to be completely melted," and that "Appellant's method
is distinguishable in that the first nanoparticles are not completely melted."
Br. 15.
That argument is not persuasive. In the Answer, the Examiner
concludes that "the claims are silent with respect to this alleged
requirement ... the claim limitations do not distinguish with respect to the
degree of melting, complete or incomplete of the nanoparticles having the
first size ... or second size .... " Ans. 3--4. That interpretation of claim 1 is
consistent with the claim language, which recites "melted nanoparticles
having the second primary particle size" and "melted nanoparticles having
the first primary particle size." The word "melted" is used in reference to
both particle sizes with no apparent distinction in meaning. The Appellants
did not file a Reply Brief to contest the Examiner's interpretation of claim 1.
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On this record, the Appellants have not identified error in the rejection on
the basis of a complete, as opposed to partial, melting distinction. See In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("The invention disclosed
in Riniker' s written description may be outstanding in its field, but the name
of the game is the claim."); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (rejecting appellant's nonobviousness argument as based on limitation
not recited in claim); see also Jung, 637 F.3d at 1365; In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989) ("[D]uring patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.").
The Appellants do not challenge the Examiner's interpretation of
claim 1 as not requiring a bimodal particle distribution. Accordingly, the
Examiner's reliance on Kodas, the Agrawal references, and Y adav is not
necessary for affirmance of the rejection. Nevertheless, we determine that
the Appellants have not shown error in the Examiner's findings and
conclusions concerning those references. In particular, the Appellants'
argument that Kodas uses a micron-scale first particle, as opposed to nano-
scale as required by claim 1, see Br. 17-18, is not persuasive because the
Examiner does not rely on Kodas for its disclosure of particle sizes; rather,
the Examiner relies on Kodas for its broader teachings concerning bimodal
particle size distributions. E.g., Ans. 7-8. The Appellants' arguments
concerning the Agrawal references, see Br. 18, are similarly unpersuasive
because the Appellants attack them individually and do not meaningfully
address or show error in the Examiner's determination that their disclosures
concerning melting point and particle size "provide specific evidentiary
reasons why in the bimodal distributions" of the other references "one would
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particularly employ ... nanoparticles having size dimensions less than 50
nm." Ans. 11; see also In re Keller, 642 F.2d 413,426 (CCPA 1981)
("[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.").
Likewise, the Appellants' argument concerning Y adav is unpersuasive
because, even assuming Y adav teaches "how to disperse smaller particles on
the surface of a larger particle," see Br. 19, that fails to show error in the
Examiner's determination that Y adav suggests the particle size distribution
of claim 1 (i.e., larger particles of 50-250 nm and smaller particles of less
than 40 nm). E.g., Ans. 12; Final Act. 15-16. In short, the Appellants
discussion of those references identifies certain differences among those
references and the subject matter of claim 1 without meaningfully
addressing the specific aspects of those references actually relied upon by
the Examiner in the rejection. Thus, the arguments fail to identify reversible
error in the Examiner's rationale. See Jung, 637 F.3d at 1365.
On this record, we affirm the Examiner's rejection of claim 1.
Rejection 2
Rejection 2 is similar to Rejection 1 except that Prasad, rather than Li,
is the primary reference. The Examiner relies on Prasad as disclosing a
method that falls within the scope of claim 1, and further relies on Kodas,
the Agrawal references, and optionally Yadav, as teaching or suggesting
particle size distributions falling within the scope of claim 1. Final Act. 8-9.
The Examiner relies on Prasad's disclosure of Au nanoparticles of 1-999
nm. Id. As noted above, the Examiner determines that, because claim 1
recites "a plurality of nanoparticles including nanoparticles having a first
primary particle size and nanoparticles having a second primary particle
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size" ( emphasis added), claim 1 is not limited to a bimodal distribution of
particle sizes. E.g., Ans. 3.
With no citation to the record, the Appellants first argue that Prasad' s
"nanoparticles hav[e] a single size." Br. 16. In the Answer, the Examiner
reasonably explains why a person of ordinary skill in the art would not have
understood Prasad's compositions to be limited to a single particle size. See
Ans. 8-9. The Appellants do not file a Reply Brief to challenge the
Examiner's explanation. On this record, we discern no basis to reject it. See
Jung, 637 F.3d at 1365.
The Appellants also argue that Prasad' s range of 1-999 nm is "all
encompassing" and "does not and would not provide an artisan with any
meaningful teaching or suggestion about using multi-sized particles having
particular sizes." Br. 16. As noted above, however, the Appellants do not
challenge the Examiner's determination that claim 1 does not require a
bimodal particle size distribution. Prasad' s disclosure of particle sizes
overlaps those of claim 1 and thus reasonably suggests a composition having
particles that meet both the first and second claimed sizes. "[E]ven a slight
overlap in range establishes a prima facie case of obviousness." See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). In addition, we observe
that the particle sizes ranges recited by claim 1 (2.5--40 and 120-500) cover
nearly half the range disclosed by Prasad. Thus, we are not persuaded that
Prasad's range is so large relative to the narrower claimed ranges as to
render the claimed ranges nonobvious.
The Appellants further argue that Prasad teaches "selectively
irradiat[ing] a certain portion of the nanoparticles to fuse that portion, rather
than fusing a part of the irradiated nanoparticles that have a size
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corresponding to the wavelength of the irradiating light." Br. 16. Claim 1,
however, does not require "fusing a part of the irradiated nanoparticles that
have a size corresponding to the wavelength of the irradiating light"
( emphasis added). Id. Claim 1 requires only "irradiating at least part of the
plurality of nanoparticles ... with a specific wavelength, so that the
irradiated nanoparticles among the plurality of nanoparticles are excited to
convert irradiating energy to thermal energy." As noted above, the
Appellants concede that Prasad teaches "selectively irradiat[ing] a certain
portion of the nanoparticles to fuse that portion." Br. 16. Prasad also
teaches that its laser "may have a particular wavelength." Prasad ,r 19. The
Appellants have not shown error in the Examiner's determination that
Prasad's disclosures teach or suggest the disputed limitation.
As explained above in the discussion of the rejection based on Li, the
Appellants do not challenge the Examiner's interpretation of claim 1 as not
requiring a bimodal particle distribution. Accordingly, the Examiner's
reliance on Kodas, the Agrawal references, and Y adav is not necessary for
affirmance of the rejection. However, for reasons set forth above, the
Appellants' arguments do not establish reversible error in the Examiner's
additional reliance on Kodas, the Agrawal references, and/or Yadav.
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 1. See Jung, 637 F.3d at 1365.
Rejection 3
The Examiner finds, inter alia, that Wang claims a method similar to
that of claim 1, and, more specifically, that "claim 11 supplies a composition
that is a plurality of nanowires & nanoconnectors, which are just two species
of different shapes of nanoparticles," and that "claim 16 has nanoconnector
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diameters <100 nm; thus encompassing 2.5--40 nm." Final Act. 16. The
Examiner acknowledges that a specific size of the nanowire is not recited,
but finds that "aspect ratios thereof from 10-800 or more narrowly 200-500
would have provided one of ordinary skill in the art with the means of
estimating appropriate size ranges for the nanowires," and that a person of
ordinary skill "would reasonably consider sizes of the nano connector
diameters as possible diameters of the nano wires, such that 40 nm diameter
nano wire with an aspect ratio of 10 would have a length of 400 nm; thus
such a set of nanowires + nanoconnectors, as suggested by the claim
limitations, would have sets [sic] particle sizes within the scope of
applicant's two primary particle size ranges." Id. at 16-17. In view of those
and other findings, the Examiner concludes that the claimed subject matter is
not patentably distinct from the claims of Wang. Id.
The Appellants argue that "Wang does not teach or suggest the use of
two sizes of nanoparticles," and that "the nanoconnectors and the nanowires
of Wang cannot be relied upon for the teaching of Appellant's first and
second particles." Br. 19-20.
The Appellants' arguments are not persuasive. As the Examiner
explains in the Answer, see Ans. 3, the "Detailed Description of the
Invention" section of the Specification explicitly states that "[t]he
nanoparticles are not restricted in shape, which may be, but [is] not limited
to, spheroid-shaped, ellipse-shaped, triangle-shaped, strip-shaped, bar-
shaped, asteroid-shaped, or any other irregular three-dimensional geometric
shape." Spec. 11: 10-13. Thus, we are not persuaded that the
nanoconnectors and nanowires of Wang fall beyond the scope of the term
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"nanoparticle," as recited by claim 1. 3 The Appellants' naked assertion that
Wang does not teach two sizes of nanoparticles is unpersuasive because it
fails to address or show error in the Examiner's specific findings and
conclusions concerning the sizes of Wang's nanoconnectors and nanowires,
discussed above. See Final Act. 16-17; Jung, 637 F.3d at 1365; see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the 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").
The Appellants also raise arguments concerning sheet resistance and
the sizes of the particles shown in Wang's Figure 1. See Br. 21-22.
However, it is unclear from the Appellants' arguments why sheet resistance
is relevant to the Examiner's rejection given that claim 1 says nothing about
sheet resistance, and, even assuming that Figure 1 shows micrometer-size
nanowires, that would not show error in the Examiner's other findings
regarding the size of the nanowires reasonably suggested by Wang. See
Final Act. 16-17; Jung, 637 F.3d at 1365; cf In re Mills, 470 F.2d 649, 651
(CCPA 1972) ("[A] reference is not limited to the disclosure of specific
working examples."). Figure 1 is described as "one embodiment of the
present invention." Wang at 3:11-14.
On this record, we are not persuaded of reversible error in the
Examiner's obviousness-type double patenting rejection.
3 We recognize that Wang teaches "one exemplary embodiment" in which
the nano wire "has a one-dimensional structure." Wang at 5: 16-18. The
Appellants, however, do not assert error on the basis of that disclosure; nor
do they assert that all of Wang's nano wires are one-dimensional.
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CONCLUSION
We AFFIRM the Examiner's rejections of claims 1---6, 9, and 10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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