Ex Parte Mannsfeld et alDownload PDFPatent Trial and Appeal BoardMay 20, 201612743772 (P.T.A.B. May. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121743,772 07/13/2010 40581 7590 05/24/2016 CRAWFORD MAUNU PLLC 1150 NORTHLAND DRIVE, SUITE 100 ST. PAUL, MN 55120 FIRST NAMED INVENTOR Stefan Christian Bernhardt Mannsfeld 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. STFD.196US (S07-284) 6520 EXAMINER HENRY, CALEB E ART UNIT PAPER NUMBER 2894 NOTIFICATION DATE DELIVERY MODE 05/24/2016 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): USPTO-patent@ip-firm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEP AN CHRISTIAN BERNHARDT MANNSFELD, ARMON SHARE!, and ZHENAN BAO Appeal2014-007245 Application 12/743,772 Technology Center 2800 Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. HANLON, Administrative Patent Judge. uECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection of claims 1-29 and 32-36. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Claims 30 and 31 are also pending but have been objected to as being dependent upon a rejected base claim. The Examiner indicates that claims 30 and 31 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Final Office Action dated June 28, 2013, at 28-29. Appeal2014-007245 Application 12/743,772 Representative claims 1 and 6 are reproduced below from the Claims Appendix of the Appeal Brief dated December 2, 2013 ("App. Br."). The limitations at issue are italicized. 1. A method for manufacturing organic semiconductor devices on a substrate having an array of electrode pairs, the method comprising: selectively wetting the electrode pairs with a solution of organic semiconductor material while a mechanical disturbance is applied to the solution; and precipitating the organic semiconductor material from the solution to bridge gaps between the electrodes in the electrode pairs. App. Br. 14. 6. A method for manufacturing organic semiconductor devices on a substrate having an array of electrode pairs, the method comprising: selectively wetting the electrode pairs with a solution of organic semiconductor material using a mixture of the solution residing in an immiscible host liquid; and precipitating the organic semiconductor material from the solution to bridge gaps between the electrodes in the electrode pairs. App. Br. 14. The claims on appeal stand rejected as follows: (1) claims 1and34 under 35 U.S.C. § 103(a) as unpatentable over Masuda et al. 2 in view of Yamagata et al.; 3 (2) claims 6, 16, 17, 23, 35, and 36 under 35 U.S.C. § 103(a) as unpatentable over Masuda; (3) claims 1--4 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto4 in view of Yamagata; 2 US 7,504,709 B2, issued March 17, 2009 ("Masuda"). 3 US 5,143,750, issued September 1, 1992 ("Yamagata"). 4 US 7 ,390,694 B2, issued June 24, 2008 ("Yamamoto"). 2 Appeal2014-007245 Application 12/743,772 (4) claims 5 and 29 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Yamagata, and further in view of Park et al.; 5 (5) claims 6-8, 11-19, 21-24, and 26-28 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Masuda; (6) claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Masuda, and further in view of Yamagata; and (7) claims 20, 25, 32, and 33 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Masuda, and further in view of Park. B. DISCUSSION 1. Claim 16 The Examiner finds Yamamoto discloses a method for manufacturing organic semiconductor devices on a substrate having an array of electrode pairs comprising, inter alia, the step of selectively wetting the electrode pairs with a solution of organic semiconductor material via a dip coating process. Ans. 9.7 The Examiner finds Yamamoto does not expressly teach selectively wetting the electrode pairs with the solution "while a mechanical disturbance is applied to the solution" as recited in claim 1. Ans. 9. Nonetheless, the Examiner finds Yamagata, like Yamamoto, discloses an adsorption process via dip coating "as well as an extra step which would enhance the adsorption process during dip coating (i.e. an improvement on the previously known adsorption process during the dip coating process)." Ans. 25 (emphasis omitted). That extra step, as found by the Examiner, is applying ultrasonic waves 5 US 2006/0289858 Al, published December 28, 2006 ("Park"). 6 We find the teachings in Masuda to be cumulative of the teachings in Yamamoto. Therefore, our discussion of Yamamoto, infra, is equally applicable to Masuda. 7 Examiner's Answer dated April 16, 2014. 3 Appeal2014-007245 Application 12/743,772 to the solution which forms a chemically adsorbed layer in a reduced period of time. Ans. 26; see also Yamagata, col. 6, 11. 13-17 (substrate is dipped into a solution of chemically adsorbing material simultaneously with applying ultrasonic waves to the solution); Yamagata, col. 5, 1. 67---col. 6, 1. 3 (using ultrasonic waves greatly reduces adsorption time for the formation of the adsorbed film compared to known methods). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to apply ultrasonic waves during the wetting step of Yamamoto to achieve the benefits disclosed in Yamagata. Ans. 9-10, 26. The Appellants argue that one of ordinary skill in the art would not have combined the teachings of Yamamoto and Yamagata because the alleged basis for the combination (i.e., to enhance the dip coating process of Yamamoto) attempts to solve a problem that does not exist in Yamamoto. App. Br. 8. The Appellants' argument is not persuasive of reversible error. There is no dispute on this record that both Yamamoto and Yamagata disclose chemical adsorption processes via a dip coating process. The Examiner relies on Yamagata to show that applying ultrasonic waves during a dip coating process, such as the dip coating process of Yamamoto, would have saved time and money. Ans. 10. The Appellants argue that "reduced process time does not provide a valid motivation to combine the references as suggested." App. Br. 10. We disagree. See In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976) (economic factors alone may provide motivation for proposed modification). As explained by the Examiner: In every field, including semiconductor manufacturing, there is a desire to increase manufacturing speed while maintaining quality. Thus, all fields of manufacturing have at least one inherent problem 4 Appeal2014-007245 Application 12/743,772 that a PHOSITA[SJ in the said manufacturing field tries to solve: increase in manufacturing speed. The field in question is dip coating, which all three aforementioned prior art[9J teaching. Secondary prior art [Yamagata] solves this speed of manufacturing problem by using ultrasonic waves. Ans. 27; see also Yamagata, col. 6, 11. 1--4 (disclosing that reduction in adsorption time is effective for industrial mass production). The Appellants argue "there is no support to show that the improved process [disclosed in Yamagata] requires less time than the existing processes of the primary references. Rather, incorporating this process would appear to increase time of production because of the added step of applying ultrasonic waves." App. Br. 10 (emphasis added). In contrast to the Appellants' speculation, Yamagata expressly discloses that applying ultrasonic waves greatly reduces the adsorption time compared to known methods. Yamagata, col. 5, 1. 67---col. 6, 1. 3. Moreover, Yamagata discloses that ultrasonic waves are applied simultaneously with dip coating, not as an "added step" as the Appellants contend. Yamagata, col. 6, 11. 13-17. Thus, on this record, the Appellants' arguments do not demonstrate reversible error. The Appellants also argue that the ultrasonic waves in Yamagata's process benefit a reaction between a specific active hydrogen group on the substrate surface and a specific functional group at the end of the molecule to be adsorbed and Yamamoto does not indicate that the specific active hydrogen groups disclosed in Yamagata are present on its substrate surface. App. Br. 9. Significantly, the Appellants do not direct us to any evidence or provide any technical reasoning showing that the benefits of applying ultrasonic waves during a 8 Person Having Ordinary Skill In The Art. 9 Masuda, Yamamoto, and Yamagata. 5 Appeal2014-007245 Application 12/743,772 dip coating process are limited to substrates having the active hydrogen groups disclosed in Yamagata. As explained in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007): [I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. On this record, there is no evidence showing that applying ultrasonic waves simultaneously with a dip coating process, as described in Yamagata, "is more than the predictable use of prior art elements according to their established functions." Id. Therefore, the Appellants' argument is not persuasive of reversible error. Finally, for the first time on appeal, the Appellants argue in the Reply Brief that Yamamoto (and Masuda) do not disclose "using electrodes for selective wetting or precipitating any organic semiconductor material from a solution that is on electrode pairs ... to form a channel region" as recited in claim 1. Reply Br. 9; see also Reply Br. 5-6. 10 According to 37 C.F.R. § 41.41(b)(2) (2014): 11 Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer ... will not be considered by the Board for purposes of the present appeal, unless good cause is shown. In this case, the Appellants' argument was not raised in the appeal brief and is not responsive to an argument raised in the Examiner's Answer. Moreover, the Appellants have failed to show good cause why the argument could not have been 10 Reply Brief dated June 16, 2014. 11 Applicable to all appeals in which a notice of appeal is filed on or after January 23, 2012. 6 Appeal2014-007245 Application 12/743,772 raised in the appeal brief. For these reasons, the Appellants' new argument will not be considered on appeal. The§ 103(a) rejections of claim 1 based on the combination of Yamamoto and Yamagata and the combination of Masuda and Yamagata are sustained. 2. Claims 2 and 4 Claim 2, which depends from claim 1, recites that "the mechanical disturbance comprises stirring the solution," and claim 4, which depends from claim 1, recites that "the mechanical disturbance comprises wiping the solution onto the substrate." App. Br. 14. The Appellants argue that "applying ultrasonic waves would not be considered stirring or wiping as is described in claims 2 and 4." App. Br. 11. In response, the Examiner finds that "[o]ne of the definitions of 'stirring' is 'to move or cause (someone or something) to move after being still'." Ans. 30. The Examiner finds that the ultrasonic waves applied in Yamagata would cause movement of the solution, and thus "stir" the solution as recited in claim 2. See Ans. 30-31. As for claim 4, the Examiner finds that "one of the definitions of 'wipe' is ... "to move (something) over a surface'." Ans. 31. The Examiner finds that the ultrasonic waves applied in Yamagata would also cause the solution to move along the surface of the substrate, and thus wipe the solution onto the substrate surface. "If this were not the case, the chemically adsorbing material would have no way of attaching to the ... substrate surface." Ans. 31. The Appellants do not direct us to any evidence demonstrating error in the Examiner's findings. Therefore, the § 103(a) rejection of claims 2 and 4 is sustained. 7 Appeal2014-007245 Application 12/743,772 3. Claims 5, 26, 27, 29, and 34 Claims 5, 26, 27, 29, and 34 depend either directly or indirectly from claim 1. The Appellants do not present any arguments in support of the separate patentability of those claims apart from claim 1. Therefore, the§ 103(a) rejections of claims 5, 26, 27, 29, and 34 is sustained. 4. Claims 3, 6 and 23 Claim 3, which depends from claim 2, recites that "the mixture comprises the solution in an immiscible host liquid." App. Br. 14. Independent claim 6 recites the step of "selectively wetting the electrode pairs with a solution of organic semiconductor material using a mixture of the solution residing in an immiscible host liquid." App. Br. 14 (emphasis added). Finally, independent claim 23 recites the steps of "forming a solution of the material in a solvent [and] forming an immiscible mixture of the solution in a host liquid." App. Br. 16 (emphasis added). The Examiner finds the "term 'immiscible' means the inability to mix; thus, an 'immiscible host' is a host that doesn't mix with the rest of the components." See, e.g., Ans. 5. The Examiner finds Masuda discloses multiple solvents can be used with the organic semiconductor and in the disclosed process, "the organic semiconductor is immersed in a solvent(s), making a solution." See, e.g., Ans. 5 (citing Masuda, col. 11, 11. 44--49). The Examiner also finds that Yamamoto discloses immersing the organic semiconductor in a solvent, making a solution. Ans. 13 (citing Yamamoto, col. 7 [sic, 13], 11. 43--49). The Appellants argue that neither Masuda nor Yamamoto discloses wetting electrode pairs with a solution of organic semiconductor material using a mixture of the solution residing in an immiscible host liquid. App. Br. 10-11, 12. The Appellants' argument is supported by the record. The Examiner finds Masuda uses water in the disclosed organic film forming fluid and directs our 8 Appeal2014-007245 Application 12/743,772 attention to the Appellants' Specification which describes water as an exemplary immiscible host liquid. See, e.g., Ans. 5 (citing Spec. i-f 28); see also Spec. 6, 11. 7- 8 (disclosing water as an exemplary immiscible host liquid). However, Masuda expressly discloses that water is used as a solvent, not as an immiscible host, to prepare the organic film forming fluid. Masuda, col. 11, 11. 44--48. Therefore, the Examiner's finding that Masuda discloses an immiscible host liquid is not supported by a preponderance of the evidence. Claims 7-22, 32, and 35 depend either directly or indirectly from independent claim 6, and claims 24, 25, 28, 33, and 36 depend from independent claim 23. 12 Therefore, the§ 103(a) rejections of claims 3, 6-25, 28, 13 32, 33, 35, and 3 6 are not sustained. C. CONCLUSION The Examiner's decision to reject claims 1 and 34 under 35 U.S.C. § 103(a) as unpatentable over Masuda in view of Yamagata is affirmed. The Examiner's decision to reject claims 6, 16, 17, 23, 35, and 36 under 35 U.S.C. § 103(a) as unpatentable over Masuda is reversed. 12 We note that the Examiner adds Park in the§ 103(a) rejection of claims 20, 25, 32, and 33. However, the Examiner's reliance on Park in that rejection does not cure the deficiency identified above. See, e.g., Ans. 22 (finding that Park teaches "the source and drain electrodes are surface treated in order to make the electrode more hydrophilic, thus allowing the electrode to have greater affinity to the organic semiconductor layer"). 13 Claim 28 is written in product-by-process format. See App. Br. 16 (reciting "[a] semiconductor device made using the method as recited in claim 23"). On this record, the Examiner has failed to show that the semiconductor device recited in claim 28 would have been obvious to one of ordinary skill in the art based on the combined teachings of Yamamoto and Masuda. See In re Brown, 459 F .2d 531, 535 (CCPA 1972) ("it is the patentability of the product claimed and not of the recited process steps which must be established"). 9 Appeal2014-007245 Application 12/743,772 The Examiner's decision to reject claims 1, 2, and 4 under 35 U.S.C. § 103 (a) as unpatentable over Yamamoto in view of Yamagata is affirmed. The Examiner's decision to reject claim 3 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Yamagata is reversed. The Examiner's decision to reject claims 5 and 29 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Yamagata, and further in view of Park is affirmed. The Examiner's decision to reject claims 6-8, 11-19, 21-24, and 28 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Masuda is reversed. The Examiner's decision to reject claims 26 and 27 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Masuda is affirmed. The Examiner's decision to reject claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Masuda, and further in view of Yamagata is reversed. The Examiner's decision to reject claims 20, 25, 32, and 33 under 35 U.S.C. § 103(a) as unpatentable over Yamamoto in view of Masuda, and further in view of Park is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation