Ex Parte Schroder et al

Patent Trial and Appeal Board

Sep 19, 2017

13432399 (P.T.A.B. Sep. 19, 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.
13/432,399 03/28/2012 Kurt A. Schroder NCC.001013 3516
124676 7590 09/21/2017
Russell Ng PLLC
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT A. SCHRODER, IAN M. RAWSON,
STEVEN C. MCCOOL, ANDREW E. EDD, and RONALD I. DASS
Appeal 2016-001920
Application 13/432,399
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1—22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, and we designate our affirmance with respect to claims
3 and 14 as a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R § 41.50(b).
Appeal 2016-001920
Application 13/432,399
CLAIMED SUBJECT MATTER
The claims are directed to a method for drying thin films on substrates
using light pulses from a flash lamp. Spec. 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for drying a thin film stack having a thin film located
on a substrate, said method comprising:
conveying said thin film stack past a flashlamp; and
irradiating said thin film stack with a composite light pulse to
remove solvent from said thin film, wherein said composite light
pulse is formed by a plurality of micropulses from said flashlamp,
wherein a total time duration of said composite light pulse is shorter
than a total thermal equilibration time of said thin film stack, wherein
said total thermal equilibration time of said thin film stack is a
combination of a thermal equilibrium time of said thin film and a
thermal equilibrium time of said substrate.
REFERENCES
The Examiner relies on the following prior art:
Miyasaka US 5,858,819 Jan. 12, 1999
Timans US 2005/0236395 A1 Oct. 27, 2005
Li US 2006/0091125 A1 May 4, 2006
Govek US 2006/0174508 A1 Aug. 10, 2006
Schroder ’304 US 2008/0020304 A1 Jan. 24, 2008
Pope US 2009/0181184 A1 July 16, 2009
Tanaka US 2009/0305483 A1 Dec. 10, 2009
Schroder US 2010/0007285 A1 Jan. 14, 2010
Schroder ’419 WO 2006/071419 A2 July 6, 2006
Katie Schwertz, Useful Estimations and Rules of Thumb for Optomechanics,
2010 (“Schwertz”)
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Application 13/432,399
REJECTIONS
I. Claims 1, 2, 7, 10, 12, 18, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schroder and Tanaka.
II. Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroder, Tanaka, and Schwertz.
III. Claims 2 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroder, Tanaka, and Govek.
IV. Claims 4, 11, 15, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schroder, Tanaka, Pope, and Miyasaka.
V. Claims 5, 6, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schroder, Tanaka, and Timans.
VI. Claims 8 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroder, Tanaka, Schroder ’304, and Schroder
’419.
VII. Claims 9 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroder, Tanaka, and Li.
DISCUSSION
Rejection I— Obviousness in view of Schroder and Tanaka
Appellants argue claims 1, 2, 7, 10, 12, 18, and 21 together. See
Appeal Br. 5—7. We select independent claim 1 as the representative claim,
and claims 2, 7, 10, 12, 18, and 21 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1 is directed to a method of drying a thin film stack, i.e., a thin
film on a substrate, using a composite light pulse from a flashlamp. Appeal
Br. 10 (Claims App.). Claim 1 requires a “total time duration of said
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Application 13/432,399
composite light pulse is shorter than a total thermal equilibration time of said
thin film stack.” Id. The claim defines the total thermal equilibration time
as the combined thermal equilibrium times of the thin film and of the
substrate. Id.
The Examiner finds Schroder discloses a method of drying/thermally
processing a stack, i.e., thin film 102 and substrate 103, using a composite
light pulse (“rapid pulses”) from a flashlamp 121. Final Act. 3; see Schroder
121. The Examiner states Schroder discloses the claimed invention except
for the claimed time duration of the pulse. Id.
The Examiner relies on Tanaka as disclosing the time duration of the
pulse being shorter than the total thermal equilibration time of the stack. Id.
at 3^4. The Examiner finds Tanaka discloses using pulses as short as 1 Ops
(“irradiation”) from a flash lamp 132 to process top layer 118 while avoiding
significant heat conduction to the underlying substrate 100, which can
damage the substrate. Id.; see also Tanaka Tflf 76, 79, Figure 14B.
Based on these teachings, the Examiner concludes it would have been
obvious to modify the method of Schroder such that the pulse time duration
is shorter than the total thermal equilibration time, in view of Tanaka, in
order to avoid defects resulting from heat conduction through the thin film to
the substrate. Final Act. 4.
In response to the Examiner’s rejection, Appellants first argue Tanaka
is not properly combinable with Schroder. Appeal Br. 5—6. Specifically,
Appellants assert Tanaka is directed to melting a layer on a substrate rather
than removing solvent from or thermally processing a thin film on a
substrate. Id at 6. Appellants contend Schroder’s goal of not wanting to
damage the thin film conflicts with Tanaka’s teaching of melting. Id.
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However, as correctly pointed out by the Examiner, not all
embodiments of Tanaka melt the top layer. See Ans. 5; see also Tanka 114.
Further, we note that Schroder discloses thermally processing including
“phase transformation (i.e. melting).” See Schroder 116. Moreover, the
Examiner only relies on Tanaka for the limited teaching of the pulse’s time
duration; in this case, the Examiner finds Tanaka suggests short pulse times
result in less heat being conducted to the underlying substrate. See Final
Act. 3^4; Tanaka 179. Accordingly, Appellants’ argument is
unconvincing.1
Appellants further argue the Examiner’s combination is improper
because Tanaka is directed to a dissimilar, nonanalogous process, i.e.,
processing the substrate, not the top layer. See Reply Br. 2, citing Tanaka 1
79.
However, we are not convinced that the Examiner erred in
characterizing Schroder and Tanaka as being directed to similar methods of
thermally processing a film/layer on a substrate via pulses from a flashlamp.
See Ans. 5. In paragraph 78, Tanaka explains that prior art lamps result in
long irradiation times of the top layer, causing large quantities of heat to
undesirably melt or deform the underlying substrate. Tanaka contrasts this
with the flash lamp and short pulses discussed in paragraph 79, which allows
the top layer to be irradiated without conducting heat to and damaging the
below substrate. Cf. Tanaka Figures 14A with 14B. Thus, Tanaka’s method
is directed to thermally processing the top layer (without damaging the
'We also note that both Tanaka and Schroder disclose flash lamp pulse time
durations as short as lOps, which is the same as disclosed in Appellants’
Specification. See claim 3 of Schroder; see also Tanaka 176; Spec. 11:25—
27.
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substrate), rather than being directed to thermally processing the substrate,
as asserted by Appellants.
Accordingly, Appellants do not provide persuasive evidence or
argument that the Examiner’s proposed combination is improper.
Appellants also argue the Examiner’s proposed combination lacks
certain claim features. Appellants argue Tanaka lacks pulses with total time
durations less time than the total thermal equilibration time of the stack.
Appeal Br. 7. Appellants argue it is clear that “none of paragraphs 0070,
0076, 0079 in Tanaka discloses the claimed feature.” Id. Responding to this
argument, the Examiner explains that
From paragraph 0079 of Tanaka, the flash lamp irradiation time
results in heat being generated mostly in the top layer 118 (Fig
14B) and not conducted to the base substrate 100. If the heat
remains in the top of the film stack (118) than a total thermal
equilibration (layer 118, substrate 100) time will not be reached
or require a very long time to be reached (as compared to the
irradiation time of Tanaka) because heat is unevenly distributed
in the film stack.
Final Act. 5; see also Ans. 6.
Thus, Tanaka discloses that the time required for the stack to reach
thermal equilibration is longer than the time of the pulse because the heat is
still unevenly distributed in the stack after the pulse ends. Accordingly, we
are not apprised of Examiner error.
In addition, Appellants argue that Schroder lacks a claimed feature.
See Appeal Br. 7. Appellants simply state “Schroder does not disclose the
claimed composite pulses.” Id.
Here, Appellants have not identified the alleged error in the
Examiner’s finding that Schroder discloses the pulses, i.e. “rapid light
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Application 13/432,399
pulses.” Final Act. 3; see also Schroder 121. Appellants fail to provide
anything more than a naked assertion that Schroder lacks pulses, and such a
statement does not constitute a separate argument for patentability of claim 1
pursuant to 37 C.F.R. § 41.37(c)(l)(iv). See also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011).
As such, Appellants do not apprise us of error. Moreover, to the
extent that Appellants’ arguments attack the Schroder and Tanaka references
individually as lacking certain claim features, one cannot show non­
obviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981).
For these reasons, we sustain the Examiner’s decision rejecting claim
1. We further sustain the rejection of claims 2, 7, 10, 12, 18, and 21, which
fall with claim 1.
Rejection II— Obviousness in view of Schroder, Tanaka, and Schwertz
Appellants argue dependent claims 3 and 14 together. See Appeal Br.
7—8. We select claim 3 as the representative claim; claim 14 stands or falls
with claim 3. See 37 C.F.R. § 41.37(c)(l)(iv).
Method claim 3 depends from claim 1 and further recites a formula
that defines the total thermal equilibration time x as
where ii represents the thermal equilibrium time of a first layer and i2
represents the thermal equilibrium time of a second layer, x represents the
combined thermal equilibrium times of the two layers. As such, claim 3
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Application 13/432,399
limits what may be interpreted as the stack’s total thermal equilibration time,
first recited in claim 1, to the above formula.
Although claim 3 specifies a formula for calculating x, it requires
neither the derivation of this formula nor a calculation using this formula to
determine the total thermal equilibration time and to set the pulse time
duration accordingly. This differs from the Examiner’s claim construction
set forth in the rejection, which appears to interpret claim 3 as requiring a
derivation of or calculation using the recited formula in order to pre­
determine the pulse time duration. See Final Act. 7.
According to the claim construction set forth herein, claim 3 merely
requires that the pulse be shorter in time than the total thermal equilibrium
time of the stack. Said differently, claim 3 requires that the time value
related to pulse length is less than the time value x. For example, if the pulse
length time value is 1 Ops, the claim is met so long as the time it takes for the
stack to reach total thermal equilibrium is a time value greater than 1 Ops.
Under this claim construction, we conclude claim 3 is indeed obvious
over Schroder, Tanaka, and Schwertz.2 As noted supra, both Tanaka and
Schroder disclose pulses with time durations as short as 1 Ops, which is in the
range disclosed by Appellants. See claim 3 of Schroder; see also Tanaka 1
76; Spec. 11:25-27.
According to the Specification, the layer(s) material and thickness
determine thermal equilibrium time. Spec 6:3—23. Both Tanaka and
Schroder are silent as to thermal equilibrium time.
2 We do not rely on Schwertz to cure any deficiencies of Schroder and
Tanaka. As such, we do not address Appellants’ contentions (see Appeal Br.
8; see also Reply Br. 3) regarding Schertz being nonanalogous art with
respect to Schroder and Tanaka.
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However, Schroder discloses the layer materials. Schroder uses a
PET substrate and a silver-based thin film, which are the same or similar
materials to those disclosed by Appellants. See Schroder H 7, 34; see also
Spec. 7:2—3. Additionally, Schroder’s substrate can be comprised of two
layers, a base 103 and insulating layer 201. Schroder 129. Schroder also
discusses thickness; Schroder discloses a range of thin films from .3 microns
to 100 microns and indicates that the substrate can be PET or paper.
Schroder H 16, 34. The Specification states that the thin film layer can be 1
micron on a 150 micron thick (paper-like thickness) PET substrate. See
Spec. 7:3—4.
Thus, Schroder discloses the same or similar pulse duration times,
layer materials, and layer thicknesses as Appellants’ disclosure.
Furthermore, Schroder recognizes the importance of controlling pulse
duration depending on the thermal properties of the stack to avoid damaging
the substrate as the thin film is thermally processed via the pulses. See
Schroder 119. Given these similarities and Schroder’s explicit teaching that
the pulse duration can be controlled according to the thermal properties of
the stack to avoid damaging underlying substrate, it would have been
obvious to a skilled artisan, at the time of the invention was made, to use
short pulse durations (including pulse durations less than the total
equilibration time of the stack) in Schroder’s method, because it has been
recognized by both Schroder and Tanaka that using short pulse times to
avoid damaging the underlying substrate. See Id.', see also Tanaka 179.
For these reasons, we sustain the Examiner’s decision rejecting
dependent claim 3, and claim 14, which falls therewith, under Schroder,
Tanaka, and Schwertz. However, because the above discussion differs from,
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and expounds upon, the Examiner’s claim construction and analysis, we
designate our affirmance as a new ground of rejection under 37 C.F.R.
§ 41.50(b) to provide Appellants with a full and fair opportunity to react to
the rejection.
Rejections III VII
Appellants do not address rejections III—VII. See Appeal Br. 5—8;
Reply Br. 2—\. As such, Appellants have waived any argument of error, and
we summarily sustain these rejections. See 37 C.F.R. § 41.31(c); see also
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant
fails to contest a ground of rejection to the Board,... the Board may treat
any argument with respect to that ground of rejection as waived.”). .).
DECISION
The Examiner’s rejection of claims 1—2, 4—13, and 15—22 is
AFFIRMED.
The Examiner’s rejection of claims 3 and 14 is AFFIRMED and
designated as a NEW GROUND OF REJECTION under 37 C.F. R.
§ 41.50(b).
This decision contains a new ground of rejection under 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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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)(iv).
AFFIRMED; 37 C.F.R. $ 41.50(b)
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