Ex Parte Russell et alDownload PDFPatent Trial and Appeal BoardJun 28, 201312146077 (P.T.A.B. Jun. 28, 2013) Copy Citation 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. 12/146,077 06/25/2008 Stephen W. Russell MI22-4579 4423 21567 7590 07/01/2013 Wells St. John P.S. 601 West First Avenue Suite 1300 Spokane, WA 99201-3828 EXAMINER ANYA, IGWE U ART UNIT PAPER NUMBER 2891 MAIL DATE DELIVERY MODE 07/01/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN W. RUSSELL and MAX HINEMAN ____________ Appeal 2011-000329 Application 12/146,077 Technology Center 2800 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000329 Application 12/146,077 2 STATEMENT OF THE CASE Appellants are appealing claims 1-10. Appeal Brief 1. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We reverse. Introduction The invention is directed to “a metal oxide having at least two oxidation states formed on a metal surface that is enriched with the metal oxide in its higher oxidation state.” Appeal Brief 2. Illustrative Claims 1 and 3 (Emphasis Added) 1. A metal oxide surface that is enriched with metal oxide in its higher oxidation state comprising: a metal layer; and a metal oxide surface that is enriched with metal oxide in its higher oxidation state on the metal layer, wherein the enriched metal oxide surface comprises metal oxide in a first oxidation state and metal oxide in a second higher oxidation state. 3. A copper oxide surface that is enriched with copper oxide in its higher oxidation state comprising: a copper layer; and a copper oxide surface that is enriched with copper oxide in its higher oxidation state on the copper layer, wherein the enriched copper oxide surface comprises copper oxide in a first oxidation state and copper oxide in a second higher oxidation state. Appeal 2011-000329 Application 12/146,077 3 Rejections on Appeal Claims 1-4 and 7-10 stand rejected under 35 U.S.C. §102(b) as being anticipated by Khosla (U.S. Patent Number 6,319,842 B1; issued November 20, 2001). Answer 3-5. Claims 5 and 6 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Khosla and Chikarmane (U.S. Patent Application Publication Number 2003/0034251 A1; published February 20, 2003). Answer 5-7. Issues on Appeal Do Khosla and Chikarmane, either alone or in combination, disclose a “metal oxide surface that is enriched with metal oxide in its higher oxidation state on the metal layer, wherein the enriched metal oxide surface comprises metal oxide in a first oxidation state and metal oxide in a second higher oxidation state” as recited in claim 1? Do Khosla and Chikarmane, either alone or in combination, disclose an “enriched copper oxide surface comprises copper oxide in a first oxidation state and copper oxide in a second higher oxidation state” as recited in claim 3? ANALYSIS Appellants contend that the Examiner’s interpretation of Khosla is based upon a typographical error because although Khosla teaches that copper oxide layer comprises of CuO2 and/or CuO it is clear that the CuO2 was in error. Appeal Brief 6. Appellants provide evidence to support their claims. Id. At 6-7. Appellants further contend that: Appeal 2011-000329 Application 12/146,077 4 Khosla's second plasma treatment is designed to form elemental copper “from cupric or cuprous oxide” in accordance with two equations which are listed in the paragraph bridging cols. 4 and 5. CuO+H2→ Cu+H2O Cu2+H2→ 2Cu +H2O Both of those equations correctly describe copper oxide in one of its two possible valence states, either CuO (valence of +2) or Cu2O (valence of +1). Further, as shown explicitly in Fig. 4, Khosla teaches that it is copper in its lower oxidation state (Cu2O, where Cu is +1) that is completely reduced to copper metal; the presence of copper in its higher oxidation state (i.e., +2) is not even mentioned. Appeal Brief 7. The Examiner finds that: Specifically, Khosla teaches that such copper oxide comprises “CuO2 and/or CuO” (col. 4, line 24). It is therefore erroneous for Applicant to assert that the Khosla reference does not teach copper (CuO) with a higher oxidation, since applicant is not arguing non-existence of CuO. Even if Applicant, were right that CuO2 is an error and should have been Cu2O, the Khosla reference will still be disclosing copper oxide in two oxidation states of +1 and +2 respectively. As such Applicant's argument even if true, Khosla's disclosure will still read on Applicant's claims. Answer 9. Appellants further contend that: The Examiner's reference in the Advisory Action to other prior art publications which allegedly show the existence of CuO2 misses the point. The issue in the rejection is not whether in some other environment or setting that copper Appeal 2011-000329 Application 12/146,077 5 may be in a +4 valence state. The issue is whether one skilled in the art, reading Khosla, would conclude that Khosla expressly teaches that in their environment and under their stated operating conditions, CuO2 would exist. Appeal Brief 8. We do not agree with the Examiner’s findings. It should be noted that prior art does not read on claims but vice versa, claims read upon prior art or the art. The Examiner’s reliance upon the existence of CuO does not address the noted deficiency of Khosla. We find Appellants’ arguments to be persuasive. Khosla does not teach having a metal oxide surface or layer whereas the existence of a first oxidation state and a second oxidation state is present. Therefore we reverse the Examiner’s anticipation rejection of independent claims 1 and 3, as well as, dependent claims 2, 4 and 7-10. Further, Chikarmane fails to address the noted deficiency of Khosla and therefore we reverse the Examiner’s obviousness rejection of dependent claims 5 and 6 for the same reasons as stated above. DECISION The anticipation rejection of claims 1-4 and 7-10 is reversed. The obviousness rejection of claims 5 and 6 is reversed. REVERSED Vsh Copy with citationCopy as parenthetical citation