Ex Parte soDownload PDFPatent Trial and Appeal BoardMay 8, 201811865505 (P.T.A.B. May. 8, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/865,505 10/01/2007 23628 7590 05/10/2018 WOLF GREENFIELD & SACKS, P.C. 600 ATLANTIC A VENUE BOSTON, MA 02210-2206 FIRST NAMED INVENTOR Franky So 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. Ul 198.70002US02 5436 EXAMINER SENGDARA,VONGSAVANH ART UNIT PAPER NUMBER 2829 NOTIFICATION DATE DELIVERY MODE 05/10/2018 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): Patents_eOfficeAction@WolfGreenfield.com WGS_eOfficeAction@WolfGreenfield.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANKY SO Appeal2017-004881 Application 11/865,505 1 Technology Center 2800 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and DONNA M. PRAISS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant filed an appeal under 35 U.S.C. § 134(a) from an Examiner's decision finally rejecting claims 1, 2, 5, 6, 8, 9, 11-17, 19, 22, 35, 38, 42, and 44--52. 2 We have jurisdiction under 35 U.S.C. § 6(b). 1 According to the Appellant, the real party in interest is the University of Florida Research Foundation, Inc. Appeal Brief dated August 5, 2016 ("Br."), at 2. 2 Claims 26, 33, 36, 37, and 39--41 are also pending but have been objected to as being dependent on a rejected base claim. The Examiner indicates that those claims 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 July 27, 2015 ("Final Act."), at 28. Appeal2017-004881 Application 11/865,505 We REVERSE. Representative claims 1 and 49 are reproduced below from the Claims Appendix of the Appeal Brief. The limitations at issue are italicized. 1. A device, comprising: an absorbing layer comprising quantum dots; an organic light emitting diode (OLED), wherein the OLED comprises a light-emitting layer; a first electrode transparent to IR light, wherein the IR light to be detected passes through the first electrode and enters the absorbing layer, wherein the IR light is absorbed in the absorbing layer so as to generate charge carriers, wherein the charge carriers are injected into the OLED so as to generate photons in the light-emitting layer; and a second electrode transparent to the photons generated in the light-emitting layer, wherein the photons generated in the light-emitting layer pass through the second electrode so as to exit the device, wherein the device allows detection of wavelengths in the range of about 1 µm to about 4 µm. Br. 20. 49. A device, comprising: a transparent substrate; an electrode; and a plurality of layers positioned between the transparent substrate and the electrode, wherein the plurality of layers comprises an absorbing layer comprising quantum dots and an OLED comprising a light-emitting layer, wherein each layer positioned between the transparent substrate and the electrode is a thin film, wherein the device allows detection of wavelengths in the range of about 1 µm to about 4 µm. Br. 25. 2 Appeal2017-004881 Application 11/865,505 The Examiner maintains the following grounds of rejection on appeal: 3 (1) claim 50 under 35 U.S.C. § 102(b) as anticipated by Vega; (2) claim 49 under 35 U.S.C. § 103(a) as unpatentable over Kaufman 4 in view of Vega and Laou; (3) claims 1, 6, 22, 38, and 44--46 under 35 U.S.C. § 103(a) as unpatentable over Kaufman in view of Vega, Liddiard, 5 and Laou; (4) claims 2, 8, 9, 35, 42, and 48 under 35 U.S.C. § 103(a) as unpatentable over Kaufman in view of Vega, Liddiard, and Laou, further in view of Shannon et al.; 6 (5) claims 11-13 under 35 U.S.C. § 103(a) as unpatentable over Kaufman in view of Vega, Liddiard, Laou, Shannon, further in view of Sargent et al.; 7 (6) claims 5, 14, 17, 19, and 46 under 35 U.S.C. § 103(a) as unpatentable over Kaufman in view of Vega, Liddiard, Laou, further in view of Sargent; 3 In the Examiner's Answer, the Examiner withdrew the§ 103(a) rejection of claim 51 based on Vega et al. (US 2006/0266998 Al, published November 30, 2006 ("Vega")) and the§ 103(a) rejection of claim 52 based on Vega in view ofLaou et al. (US 2007/0029482 Al, published February 8, 2007 ("Laou")). Examiner's Answer dated November 23, 2016 ("Ans."), at 2. 4 US 7,381,953 Bl, issued June 3, 2008 ("Kaufman"). 5 US 2003/0168599 Al, published September 11, 2003 ("Liddiard"). 6 US 2009/0206237 Al, published August 20, 2009 ("Shannon"). 7 US 2005/0236556 Al, published October 27, 2005 ("Sargent"). 3 Appeal2017-004881 Application 11/865,505 (7) claim 47 under 35 U.S.C. § 103(a) as unpatentable over Kaufman in view of Vega, Liddiard, Laou, and Sargent, further in view of Kim et al.; 8 (8) claim 15 under 35 U.S.C. § 103(a) as unpatentable over Kaufman in view of Vega, Liddiard, and Laou, further in view of Forrest et al.; 9 and (9) claim 16 under 35 U.S.C. § 103(a) as unpatentable over Kaufman in view of Vega, Liddiard, and Laou, further in view of Yuan et al. 10 B. DISCUSSION 1. Rejection (1) The Examiner finds Vega discloses a device (i.e., a quantum dot intermediate band infrared photodetector) comprising, inter alia, a light emitting layer 12 as recited in claim 50, wherein layer 12 absorbs high energy photons 13 and emits infrared photons 5. Final Act. 3; see also Vega Fig. 1. The Appellant argues that Vega describes layer 12 as "a 'low band- pass filter' (e.g., a filter that permits the passage of low energy photons, such as infrared photons, and blocks the passage of high energy photons), not a light emitting layer." Br. 7 (citing Vega Abstract; Vega i-f 34; Vega Fig. 1 ). The Appellant argues that interpreting a low band-pass filter to be a "light- emitting layer" is inconsistent with the ordinary and customary meaning of 8 US 2006/0097247 Al, published May 11, 2006 ("Kim"). 9 US 2004/0031965 Al, published February 19, 2004 ("Forrest"). 10 US 2002/0066904 Al, published June 6, 2002 ("Yuan"). 4 Appeal2017-004881 Application 11/865,505 the term "emit" which is to "produce and discharge." Br. 7-8 (citing https://www.google.com/webhp?sourceid=chrome-instant&ion=l&espv= 2&ie=UTF-8#q=emit). Likewise, the Appellant argues that interpreting a low band-pass filter to be a "light-emitting layer" is inconsistent with the usage of the term in the Specification and Drawings. Br. 8. In particular, the Appellant argues: Br. 8. [T]he specification describes certain embodiments in which, upon photoexcitation of an absorbing layer with infrared light, charge carriers of a first type (e.g., electrons, holes) are injected into a light-emitting layer, where they recombine with charge carriers of a second type (e.g., holes, electrons) to generate light (Specification, page 4, lines 21-24; page 5, lines 14--18; page 7, lines 25-28; page 8, lines 22-24). The Appellant's arguments are persuasive of reversible error. During prosecution, claims are given the broadest reasonable interpretation in light of the Specification. 11 Although the Appellant does not expressly define the phrase "light-emitting layer," the Appellant discloses: [C]arriers can be photoexcited in the quantum dot (QD) layer through the absorption of IR rays. The carriers can travel to an OLED element to emit, for example, green light. In particular, electrons may be injected into an emissive layer of the OLED element and recombine with holes to give off light. Spec. 7, 11. 25-28 (emphasis added). 11 See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ("the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification"). 5 Appeal2017-004881 Application 11/865,505 We find the Appellant's use of the term "emit" in the Specification to be consistent with the meaning of "emit" relied on by the Appellant (i.e., to "produce and discharge"). Therefore, we interpret the "light-emitting layer" recited in claim 50 as a layer that produces and discharges light. The Examiner does not direct us to any evidence establishing that Vega's low band-pass filter produces and discharges light. Therefore, the § 102(b) rejection of claim 50 is not sustained. 2. Rejection (2) The Examiner finds Kaufman discloses a device comprising, inter alia, transparent substrate 528 and electrode 506 wherein absorbing layer 504 is positioned between the transparent substrate and the electrode. Final Act. 4. Referring to Kaufman Figure 5, the Appellant argues that layer or detector 504 appears to be positioned external to electrode or contact pad 506 and substrate 528 "such that IR photons first enter the device by striking the surface of detector 504." Br. 11. In response, the Examiner provides an annotated version of Kaufman Figure 5, reproduced below, that is said to show absorbing layer 504 positioned between substrate 528 and electrode or contact pad 506. Ans. 6. 6 Appeal2017-004881 Application 11/865,505 ·'Tf ~-~ ~ • V1 / \ ' Annotated Kaufman Figure 5 illustrates a side view of an infrared detector according to one embodiment of the invention. The Examiner finds annotated Kaufman Figure 5 shows that the portion of 504 between 506 and 528 is between 506 and 528 since the two arrows shown in [F]ig. 5 as labeled by [E]xaminer are clearly between 506 and 528. The two arrows pass[] between the portion of 504 before reaching 528, and such 504 is between 506 and 528 as claimed. Ans. 6-7. Claim 49 recites that an absorbing layer is positioned between a transparent substrate and an electrode. Consistent with the Appellant's Specification, we interpret "absorbing layer" in claim 49 to mean the entire absorbing layer. See, e.g., Appellant's Fig. 1 (showing entire absorbing layer PTCBI positioned between the glass substrate and the NiO electrode layer); see also Br. 12 (contending that "FIGS. 1, 3--4, and 6-7 of the present application show as absorbing layer that is positioned between (i.e., 7 Appeal2017-004881 Application 11/865,505 physically located between) a transparent substrate (e.g., glass) and an electrode (e.g., NiO, ITO)"). The Examiner has not shown that the entirety of Kaufman's absorbing layer 504 is positioned between substrate 528 and electrode or contact pad 506. Therefore, the§ 103(a) rejection of claim 49 is not sustained. 3. Rejections (3}--(9) Claim 1 recites a device comprising, inter alia, "a first electrode transparent to IR light, wherein the IR light to be detected passes through the first electrode and enters the absorbing layer." Br. 20. Referring to Kaufman Figure 5, the Examiner finds Kaufman discloses a device comprising an absorbing layer, wherein the IR light to be detected enters the absorbing layer. Final Act. 10. The Examiner finds Kaufman does not disclose, inter alia, "a first electrode transparent to IR light, wherein the IR light to be detected passes through the first electrode" as recited in claim 1. 12 Final Act. 13. Referring to Liddiard Figure 1, the Examiner finds: Liddiard discloses in IR detector compris[ing] an absorbing layer 4, a first electrode 5 transparent to infrared light ... , and it would obviously be the case that wherein IR light to be detected passes through the first electrode transparent to IR light and enters the absorbing layer 4 because the first electrode in on top of the absorbing layer 4, in order to meet the requirement for infrared absorption .... Final Act. 14. 12 The Examiner also finds that Kaufman does not disclose "a second electrode transparent to the photons generated in the light-emitting layer, wherein the photons generated in the light-emitting layer pass through the second electrode so as to exit the device." Final Act. 13. 8 Appeal2017-004881 Application 11/865,505 The Appellant argues: Kaufman describes a device in which detector 504 (the absorbing layer) is positioned external to contact pad 506 (the electrode), such that IR photons first enter the device by striking the surface of detector 504. Since IR photons first enter the device through detector 504, one of ordinary skill in the art would have had no reason to modify contact pad 506 to be transparent to IR light or to add an additional electrode that is transparent to IR light. Br. 16 (emphasis added). The Appellant's argument is persuasive of reversible error. The Examiner's reason for modifying Kaufman's device to add a transparent electode (i.e., "to meet the requirement for infrared absorption" (Final Act. 14)) is not supported by rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" (emphasis added)). That is, on this record, there would have been no reason to modify Kaufman's device as proposed by the Examiner because, in the words of the Appellant, "IR photons first enter the device through detector 504." Br. 16. Thus, any requirement for infrared absorption is already met by the position of Kaufman's absorbing layer 504 relative to electrode 506. The Examiner does not rely on the remaining prior art of record to cure this deficiency in the § 103(a) rejection of claim 1. Therefore, rejections (3}-(9) are not sustained. C. DECISION The Examiner's decision is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation