Ex Parte Miyagishima et al

Patent Trial and Appeal Board

Sep 12, 2016

12570002 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/570,002 0913012009
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
09/14/2016
FIRST NAMED INVENTOR
NORI MIYA GI SHIMA
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.
8111-1024 9371
EXAMINER
CHRISS, JENNIFER A
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORI MIRAGISHIMA, RYOJI NISHIMURA,
YOICHI HOSOY A, TAKESHI FUNAKUBO,
and KENJI NAOI
Appeal2015-002332
Application 12/570,002
Technology Center 1700
Before TERRY J. OWENS, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 6-9. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a transparent conductor. Claim 6 is illustrative:
6. A transparent conductor comprising:
a transparent conductive layer,
wherein the transparent conductive layer contains metal
nanowires which comprise metal fine particles having an aspect
ratio (major axis length/diameter) of 30 or more,
Appeal2015-002332
Application 12/570,002
Jones
wherein 7 5% by mass or more of the metal fine particles
in terms of metal have a diameter of 50 nm or less and a major
axis length of 5 µm or more,
wherein an average diameter of the metal nanowires is
3 5 nm or less, and
wherein the coefficient of variation of diameter of the
metal nanowires is 30% or less.
The References
US 2012/0033367 Al Feb. 9, 2012
(effective filing date Apr. 18, 2008)
Yugang Sun et al., Uniform Silver Nanowires Synthesis by Reducing AgN03
with Ethylene Glycol in the Presence of Seeds and Poly(Vinyl Pyrrolidone),
14 Chem. Mater. 4736-45 (2002) (hereinafter Sun).
Dabin Yu and Vivian Wing-Wah Yam, Hydrothermal-Induced Assembly of
Colloidal Silver Spheres into Various Nanoparticles on the Basis of HTAB-
Modified Silver Mirror Reaction, 109 J. Phys. Chem. B 5497-503 (2005)
(hereinafter Yu).
The Rejection
Claims 6-9 stand rejected under 35 U.S.C. § 103 over Yu in view of
Jones and Sun.
OPINION
We affirm the rejection.
The Appellants argue the claims as a group (Br. 3-15). We therefore
limit our discussion to one claim, i.e., claim 6, which is the sole independent
claim. Claims 7-9 stand or fall with that claim. See 3 7 C.F .R.
§ 41.37(c)(l)(iv) (2012).
Yu discloses silver nanowires having a uniform diameter of about
28 nm and a length of tens of microns (p. 5498).
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Appeal2015-002332
Application 12/570,002
Jones discloses a transparent conductor comprising primary and
secondary conductive media, both of which can be metal nanowires having a
diameter of about 5-100 nm, preferably 50 nm, a length of 5-100 µm,
preferably about 20 µm, and an aspect ratio greater than 10, more preferably
greater than 100 (i-fi-f 28, 33, 38, 45). The metal in either the primary or
secondary metal nanowires can be silver (i-f 36).
Sun discloses a solution-phase approach for large-scale synthesis of
silver nanowires having a diameter of 30-40 nm and a length of up to about
50 µm (Abstract; p. 4745). Exemplified nanowires have a mean diameter of
about 38 nm with a standard deviation of about 5 nm (p. 4741).
The Appellants state that they recognized the problem of durability
degradation of metal nanowire-containing transparent conductors and
discovered that the degradation can be reduced if the metal nanowires have
the recited dimensions (Br. 5-6). The Appellants assert that the discovery of
the problem, not just its solution, must be considered in determining whether
the claimed transparent conductor would have been prima facie obvious
(Br. 6).
Establishing a prima facie case of obviousness does not require that
references solve the same problem solved by the Appellants. See In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en
bane); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). As indicated by
the reference disclosures set forth above, those references would have led
one of ordinary skill in the art, through no more than ordinary creativity, to
combine their disclosures to produce a workable metal nanowire-containing
transparent conductor. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
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Application 12/570,002
(2007) (in making an obviousness determination one "can take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ"). The Appellants recognition that use of certain metal
nanowire dimensions within the references' disclosures would provide the
transparent conductor with the undisclosed property of reduced durability
degradation is insufficient to cause the claimed transparent conductor to not
have been prima facie obvious to one of ordinary skill in the art. Compare
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("The discovery of a new
property or use of a previously known composition, even when that property
and use are unobvious from the prior art, can not impart patentability to
claims to the known composition.").
The Appellants argue that "[t]here would have been no motivation to
willingly employ [Yu's and Sun's] nanowire production methods for
producing nanowires for the transparent conductors of JONES without the
recognition of the problem of 'deterioration of storage stability' when used
in transparent conductors, since these methods would have required
additional manufacturing costs for producing thin nanowires, in which
reducing the coefficient of variation is difficult" (Br. 8).
That argument is not well taken because it is merely unsupported
attorney argument, and arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
The Appellants argue that Jones' s nanowires are thicker than those of
Yu or Sun and that, therefore, one of ordinary skill in the art would not have
combined the references (Br. 12-13).
Jones' s nano wire size range ( 5-100 nm diameter and 5-100 µm
length (i-f 45)) encompasses or overlaps the nanowire sizes of Yu (about
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Appeal2015-002332
Application 12/570,002
28 nm diameter and tens of microns length (p. 5498)) and Sun (30-40 nm
diameter and up to about 50 µm length (Abstract; p. 4745)). Hence, one of
ordinary skill in the art, through no more than ordinary creativity, would
have combined the references' disclosures regarding nanowire length. See
KSR, 550 U.S. at 418.
The Appellants argue that one of Jones' s embodiments requires a
mixture of nanowire lengths and that, therefore, Jones teaches away from
nanowire length uniformity (Br. 13).
That argument is not well taken because Jones is not limited to the
embodiments wherein the primary and secondary metal nanowires have
different dimensions (i-f 54). Moreover, even if the primary and secondary
metal nano wire lengths differ, the lengths of both the primary and secondary
metal wires can be 5-100 µm (i-f 45) and, therefore, be within the Appellants'
recited range of 5 µm or more.
The Appellants assert that Jones heats AgN03 in ethylene glycol
(i-f 131) whereas Yu heats [Ag(NH3)2]0H in water (p. 5498) and that,
therefore, one of ordinary skill in the art would not have combined their
disclosures (Br. 13-14).
The Appellants do not explain, and it is not apparent, why that
difference would have caused one of ordinary skill in the art to not combine
the references' disclosures regarding nano wire dimensions.
The Appellants assert that one of ordinary skill in the art would not
have combined Yu and Sun because Yu prepares silver particles of various
forms whereas Sun prepares uniform nanowires (Br. 14).
One of Yu's silver particle forms is nanowires having a uniform
diameter of about 28 nm (p. 5498), and Sun discloses nanowires having a
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Application 12/570,002
mean diameter of about 38 nm with a standard deviation of about 5 nm
(p. 4741). The Appellants provide no explanation as to why, in view of
those disclosures, one of ordinary skill in the art would not have combined
Yu and Sun.
The Appellants assert that Yu and Sun would not have motivated one
of ordinary skill in the art to produce nanowires having the Appellants'
recited dimensions (Br. 14).
The Appellants do not explain, and it is not apparent, why the
references would have failed to provide one of ordinary skill in the art with
that motivation.
For the above reasons we are not persuaded of reversible error in the
rejection.
DECISION/ORDER
The rejection of claims 6-9 under 35 U.S.C. § 103 over Yu in view of
Jones and Sun is affirmed.
It is ordered that the Examiner's decision is affirmed.
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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