Ex Parte Stasiak et al

Board of Patent Appeals and Interferences

Dec 20, 2007

10423063 (B.P.A.I. Dec. 20, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES STASIAK
and KEVIN PETERS
____________

Appeal 2007-3793
Application 10/423,063
Technology Center 1700
____________

Decided: December 20, 2007
____________

Before BRADLEY R. GARRIS, THOMAS A. WALTZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-7, 9-12, 14-51, 53-59, 61-80, 100, and 101. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

INTRODUCTION
Appellants disclose using imprint lithography to produce sensors
(Specification ¶ [0001]). Imprint lithography uses a mold to stamp a design
Appeal 2007-3793
Application 10/423,063

into an imprintable layer on the semiconductor (Specification ¶ [0034]).
Imprint lithography enables many small features to be replicated quickly at
lower cost and higher volume than would be achievable using conventional
etching methods to form a pattern in the layer (Specification ¶ [0035]).
Claims 1, 27, 53, and 100 are illustrative:
1. A method of manufacturing a sensor comprising:

depositing an imprintable layer on a substrate;

imprinting the imprintable layer into the pattern of an imprint-
fabricated ribbon using imprint lithography;

transferring the pattern from the imprintable layer to the substrate to
be used to fabricate the imprint-fabricated ribbon; and

configuring the sensor as an imprint-fabricated sensor, including
integrating the imprint-fabricated ribbon in the imprint-fabricated sensor.

27. A method comprising:

fabricating an imprint-fabricated ribbon using imprint lithography,
including integrating the imprint-fabricated ribbon in an imprint fabricated
sensor, by:

providing a semiconductor active layer having a prescribed thickness
on a substrate,

depositing an imprintable layer on the semiconductor active
layer,

imprinting the imprintable layer in the pattern of an imprint-
fabricated ribbon to create imprinted portions of the imprintable layer and
non-imprinted portions of the imprintable layer,

depositing a protective layer on both imprinted portions
of the imprintable layer and non-imprinted portions of the imprintable layer,

2
Appeal 2007-3793
Application 10/423,063

removing the non-imprinted portions of the imprintable
layer from the substrate, wherein the non-imprinted portions include those
potions of the protective layer deposited on the non-imprinted portions of the
imprintable layer, and

etching the semiconductor active layer, wherein those
portions of the semiconductor active layer that are below the remaining
protective layer following lift-off are substantially not etched, while those
portions of the semiconductor active layer that are not below the remaining
protective layer following lift-off are substantially etched.

53. A method comprising:

fabricating an imprint-fabricated ribbon using imprint lithography,
including integrating the imprint-fabricated ribbon in an imprint fabricated
sensor, by:

providing a conductor active layer having a prescribed
thickness,

depositing an imprintable layer on the conductor active layer,

imprinting the imprintable layer,

depositing a protective layer on both imprinting portions of the
imprintable layer and non-imprinted portions of the imprintable layer,

removing those non-imprinted portions of the imprintable layer
including those portions of the protective layer deposited on the non-
imprinted portions of the imprintable layer, and

etching the conductor active layer, wherein those portions of the
conductor active layer that are below the remaining protective layer
following lift-off are not etched; and

applying the imprint-fabricated ribbon to contact an analyte,
wherein the imprint-fabricated ribbon is configured to perform sensing of
target molecules contained in the analyte.

3
Appeal 2007-3793
Application 10/423,063

100. A method of manufacturing a sensor comprising:

depositing an imprintable layer on a substrate;

imprinting the imprintable layer into the pattern of an imprint-
fabricated ribbon using imprint lithography;

transferring the pattern from the imprintable layer to the substrate to
be used to fabricate the imprint-fabricated ribbon; and

configuring the sensor as an imprint-fabricated sensor, including
integrating the imprint-fabricated ribbon in the imprint-fabricated sensor,

wherein the substrate is flexible, and wherein the imprint-fabricated
ribbon is configured to conform to deformations of the substrate resulting
from the flexibility of the substrate, wherein the imprint-fabricated ribbon is
configured to allow four-point electrical resistance measurement, and
wherein the imprint-fabricated ribbon is then functionalized, such that the
sensor is configured to react in response to a target species.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Chou 5,772,905 Jun. 30, 1998

Cui, Yi, et al., “Nanowire Nanosensors for Highly Sensitive and Selective
Detection of Biological and Chemical Species” Science 1289-1292 v. 293
Aug. 17, 2001.

Ufer 6,843,899 B2 Jan. 18, 2005

Wolf, Stanley (Wolf I), Silicon Processing for the VLSI Era: Volume 1
Process Technology, 120.1

Wolf, Stanley (Wolf II), Silicon Processing for the VLSI Era: Volume 4
Deep-Submicron Process Technology, 501-502.2

1 Appellants have not contested the availability of the Wolf I reference as
prior art.
4
Appeal 2007-3793
Application 10/423,063

The rejections as presented by the Examiner are as follows:
1. Claims 1-7, 9-12, 14, 16-18, 22-38, 40-47, 50, 51, 53-59, and 62-80
are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Chou in view of Ufer and Cui.
2. Claims 15, 19-21, 38 [sic 39], 48, 49, 61, 100, and 101 are rejected
under 35 U.S.C. § 103(a) as being unpatentable Chou in view of Ufer,
Cui, Wolf I and Wolf II.3

Appellants separately argue independent claims 1, 27, 53, and 100. In
accordance with our decision below the following disposition applies to the
claims: (1) dependent claims 2-7, 9-12, and 14-26 stand or fall with claim 1,
(2) dependent claims 28-51, stand or fall with claim 27, (3) dependent
claims 54-59 and 61-80, stand or fall with claim 53, and (4) dependent claim
101 stands or falls with claim 100.

OPINION

35 U.S.C. § 103 REJECTION OVER CHOU IN VIEW OF UFER
AND CUI

CLAIM 1
2 Appellants have not contested the availability of the Wolf II reference as
prior art.
3 The Examiner’s explanation of the § 103 rejection over Chou in view of
Ufer, Cui, Wolf I and Wolf II indicates that claim 39 is the claim that is
under this rejection, not claim 38 as listed in the statement of the rejection
(Ans. 31).
5
Appeal 2007-3793
Application 10/423,063

The Examiner finds that Chou discloses all that is recited in
independent claim 1, except producing a sensor (Ans. 5). The Examiner
finds that Chou discloses forming microdevices and electrical circuits at a
low cost (Ans. 5). The Examiner further finds that Ufer discloses chemical
sensors are a type of microdevice or electrical circuit (Ans. 5). The
Examiner finds that Cui discloses that nanoscale dimensions are desirable
for chemical sensors (Ans. 5). Based on these disclosures, the Examiner
concludes that it would have been obvious to manufacture a sensor
according to Chou’s process because one skilled in the art would be
motivated to manufacture a widely used electrical circuit or microdevice,
such as a sensor, at low cost (Ans. 6).
Appellants argue that the claim term “imprint-fabricated ribbon” is
defined in paragraphs [0017]-[0018], such that Chou, Ufer or Cui does not
disclose forming an imprint-fabricated ribbon as recited in claim 1 (Br. 10;
Reply Br. 2-3). Appellants argue that neither Chou, Ufer nor Cui disclose
“configuring the sensor as an imprint-fabricated ribbon in the imprint-
fabricated sensor” (Br. 10-11). Appellants contend that Ufer and Cui teach
away from using any type of lithography for making their sensors (Br. 11
and 12).
We have considered all of Appellants’ arguments and are unpersuaded
for the reasons below.
We begin our analysis by construing Appellants’ claim term “imprint-
fabricated ribbon.” Appellants describe an “imprint-fabricated ribbon” as
having a “variety of configurations” and it “can be considered a ribbon-
shaped strip having any desired cross-sectional aspect ratio in one or two
substantially orthogonal dimensions, and which is formed from a
6
Appeal 2007-3793
Application 10/423,063

semiconductor material, a conductor material, or a composite material”
(Specification ¶ [0017]). Appellants further disclose that “ribbon” implies a
rectangular cross-sectional configuration; however, the ribbon may have any
cross-sectional shape (Specification ¶ [0018]). Appellants further disclose
that imprint lithography (abbreviated IL) is used to form the ribbon
(Specification ¶ [0013]).
From Appellants’ disclosures, we construe “imprint-fabricated
ribbon” as a strip of semiconductive, conductive or composite material
having any cross-sectional shape with any aspect ratio formed by imprint
lithography.
Chou discloses forming microdevices and integrated circuits using
imprint lithography (Chou, col. 1, ll. 61-67; col. 2, ll. 1-45). Chou discloses
forming a thin film 20 (i.e., imprintable layer) into which a mold 10 having
features 16 is pressed (Chou, col. 4, ll. 7-12). The features 16 on mold 10
may take the form of pillars, trenches or holes (Chou, col. 4, ll. 39-41). The
compressed areas 24 formed by the mold 10 are etched away to form
recesses 28 and dams 26 (Chou, col. 4, ll. 27-38). Chou discloses that after
etching to form the recesses 28 and dams 26, the pattern formed by
imprinting may be either replicated in material added on the substrate, or
replicated directly into the substrate (Chou, col. 5, ll. 43-45).
The pattern may be replicated in material added on the substrate by
application of material 30 into the recesses 28 and removal of the dams 26 to
form elements 32 (Chou, col. 5, ll. 45-64). The deposited material may take
the form of a series of metal lines (i.e., conductive material) (Chou, Figure
7). As an alternative, the pattern may be formed directly into the substrate
by performing another etching step to the recesses 28 to form recesses 40
7
Appeal 2007-3793
Application 10/423,063

(Chou, col. 6, ll. 13-23). Subsequent processing steps, such as deposition of
metals into the recesses 40 may follow the additional etching step (Chou,
col. 6, ll. 20-23).
Ufer discloses forming a chemical sensor using lithographic
techniques (Ufer, col. 3, ll. 55-60; col. 9, ll. 25-58; col. 10, ll. 45-67; col. 11,
ll. 1-19). Ufer discloses that an advantage of the chemical sensor is that the
flexible dielectric layer controls the spacing between the upper and lower
electrodes, rather than using lithography to control the spacing between the
electrodes (Ufer, col. 2, ll. 20-24). Ufer discloses the sensor may be
comprised of a series of spaced apart portions 150 (Ufer, col. 5, ll. 64-67).
Cui discloses using planar field effect transistors as chemical and
biological sensors (Cui 1289). Cui further discloses that nanoscale
dimensions may be used to overcome the physical properties limiting sensor
devices (Cui 1289).
Contrary to Appellants’ argument, Chou discloses using imprint
lithography to form a pattern of lines, for example, which are then
transferred either into or onto the substrate. Moreover, as shown by Chou’s
Figures 5B and 7, the material 30 applied to the recesses 28 form metal lines
onto the substrate having an aspect ratio and a rectangular cross-section.
Accordingly, we determine that Chou discloses forming an “imprint-
fabricated ribbon” as we have construed the term above. Accordingly,
Appellants’ arguments regarding Ufer’s and Cui’s failure to disclose an
imprint-fabricated ribbon are unpersuasive because Chou, the primary
reference used in the rejection, discloses the argued claim feature.
Additionally, Ufer and Cui do not teach away from using lithography
to form the sensor as argued by Appellants. Appellants’ argument is
8
Appeal 2007-3793
Application 10/423,063

premised on Ufer’s disclosure that the spacing between the upper and lower
electrodes is controlled by the thickness of the dielectric layer, rather than by
lithography (Br. 11). Appellants’ argument is also based on Cui’s disclosure
to use vapour-liquid-solid growth method to form the nanowires (Br. 12).
However, Ufer discloses using photolithography to form the electrodes and
the dielectric layer (Ufer, col. 9, ll. 25-58). Moreover, Cui discloses that
electron beam lithography is used to make electrical contacts (i.e., to form
electrical structures) between the nanowires formed by vapour-liquid-solid
growth (Cui 1290). Accordingly, neither Ufer nor Cui teach away from
using lithography to form the sensors as argued by Appellants.
In the same vein of argument, Appellants contend that “[u]sing
imprint lithography to fabricate either the sensor of Ufer, the sensor of Cui,
or a sensor based on the combination of Ufer and Cui, would change the
principle of operation of the sensors” (Reply Br. 4). Presumably, Appellants
argument is based on their interpretation that Ufer and Cui teach away from
using lithography because Appellants refer to the section of the Brief where
that argument is made (Reply Br. 3-4). However, as we determined above,
neither Ufer nor Cui teach away from using lithography to manufacture the
sensor. Rather, Ufer and Cui disclose using lithography as part of the
process in forming the sensors such that using imprint lithography would not
have changed the principle of operation of Ufer’s and/or Cui’s sensor(s).
Instead, using imprint lithography would have provided a lower cost method
to form Ufer’s and/or Cui’s sensor(s) (Chou, col. 1, ll. 61-63).
Additionally, we note that the Examiner does not rely on Ufer or Cui
for the specific way their sensors function or suggest combining Chou with
Ufer or Cui so as to form Ufer’s or Cui’s sensors as argued by Appellants.
9
Appeal 2007-3793
Application 10/423,063

Rather, the Examiner relies on Ufer as showing that chemical sensors are
“microdevices” and Cui as stressing the importance of nanoscale dimensions
in chemical sensors to suggest combining those features with Chou’s method
of using imprint lithography to form microdevices (Ans. 5). Regardless, we
determine that in view of Ufer’s and Cui’s disclosure to use lithography to
form the sensors, one of ordinary skill in the art would have been motivated
to use Chou’s lower cost imprint lithography in place of the more costly
photolithography and electron beam lithography disclosed by Ufer and Cui,
respectively, to form Ufer’s and Cui’s sensors.
Appellants’ argument that Chou, Ufer and Cui fail to teach
configuring an imprint-fabricated ribbon into a sensor is not persuasive. We
agree with the Examiner that Ufer discloses that chemical sensors are
included in Chou’s generic disclosure to manufacture microdevices, such
that the step of configuring Chou’s elements 32 (i.e., imprint-fabricated
ribbons) in a chemical sensor would have been obvious.
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 1-7, 9-12, 14, 16-18, and 22-26 over Chou in view of Ufer and Cui.

CLAIMS 27 AND 53
Appellants argue that neither Chou, Ufer nor Cui disclose the claims
27 and 53 feature of “depositing a protective layer on both imprinted and
non-imprinted portions of the imprintable layer” and “etching the
semiconductor [or conductor (claim 53)] active layer, wherein those portions
of the semiconductor [or conductor (claim 53)] active layer that are below
the remaining protective layer following lift-off are substantially not etched”
(Br. 13 and 14). We agree.
10
Appeal 2007-3793
Application 10/423,063

Chou’s, Ufer’s and Cui’s disclosures are noted above in the section
regarding claim 1. We shall not repeat their disclosures here.
The Examiner construes the claim phrase “protective layer” as
including Chou’s material 30 (Ans. 13). The Examiner determines that one
skilled in the art may “omit . . . [Chou’s first] etching step [that removes the
compressed areas 24 of the thin film layer 20], depending upon the final
structure of the imprint-fabricated ribbon” (Ans. 15), such that once material
30 is applied it will cover both the imprinted (i.e., compressed areas 24) and
non-imprinted portions of the thin film layer 20.
Contrary to the Examiner’s construction of “protective layer,” Chou
discloses using material 30 to replicate the imprinted pattern onto the
substrate and form elements 32. Chou further discloses that elements 32
formed from the material 30 are of the type used in integrated circuits
(Chou, col. 5, ll. 60-62). In other words, material 30 is the active material
(i.e., conductors, semiconductors or dielectrics) (Chou, col. 5, ll. 43-55) that
forms the sensor, not a protective layer that is later removed.
We determine that the Examiner’s rationale for omitting the first
etching step is based on impermissible hindsight. We find no disclosure in
Chou to omit the first etching step. Rather, Chou discloses performing the
first etching step to remove the compressed areas 24 and form an
intermediate substrate having recesses 28 and dams 26, which may then be
treated by either adding material 30 to replicate the imprint pattern onto the
substrate or subsequent etching to directly form the imprint pattern into the
substrate (Chou, col. 4, ll. 30-36; col. 5, ll. 43-64; col. 6, ll. 13-23). The
Examiner has improperly engaged in impermissible hindsight.
11
Appeal 2007-3793
Application 10/423,063

For the above reasons, we reverse the Examiner’s § 103 rejection of
claims 27-38, 40-47, 50, 51, 53-59, and 62-80 over Chou in view of Ufer
and Cui.

35 U.S.C. § 103 REJECTION OVER CHOU IN VIEW OF UFER, CUI,
WOLF I AND WOLF II

DEPENDENT CLAIMS 15, 19-21, 38 [sic 39], 48, 49, AND 61
Appellants do not separately argue dependent claims 15, 19-21, 38
[sic 39], 48, 49, and 61. Rather, Appellants provide the same the arguments
as were made for independent claims 1, 27, and 53. We were unpersuaded
by Appellants’ arguments regarding claim 1, but we were persuaded by
Appellants’ arguments regarding claims 27 and 53.
Accordingly, the rejection of claims 15, 19-21, 38 [sic 39], 48, 49, and
61 receives the following dispositions: (1) we affirm the § 103 rejection of
claims 15 and 19-21 over Chou in view of Ufer, Cui, Wolf I and Wolf II,
and (2) we reverse the § 103 rejection of claims 38 [sic 39], 48, 49, and 61
over Chou in view of Ufer, Cui, Wolf I and Wolf II.

INDEPENDENT CLAIM 100
Claim 100 recites all that is included in claim 1 and further recites the
following:
. . .wherein the substrate is flexible, and wherein the imprint-
fabricated ribbon is configured to conform to deformations of the
substrate resulting from the flexibility of the substrate, wherein the
imprint-fabricated ribbon is configured to allow four-point electrical
resistance measurement, and wherein the imprint-fabricated ribbon is
then functionalized, such that the sensor is configured to react in
response to a target species.
12
Appeal 2007-3793
Application 10/423,063

Appellants argue that while Ufer discloses a flexible substrate, Ufer
fails to disclose an imprint-fabricated ribbon that is configured to conform to
deformations of the substrate resulting from flexibility of the substrate (Br.
17). Appellants contend Ufer’s sensor does not include an imprint-
fabricated ribbon and, thus, functions differently than an imprint-fabricated
ribbon such that one skilled in the art would not have combined the imprint
lithography method of Chou with the interdigitated electrode sensor of Ufer
to arrive at the imprint-fabricated ribbon having a flexible substrate (Br. 17).
Appellants argue that there is no suggestion to combine the imprint
lithography method of Chou and Wolf I’s four-point electrical resistance
measurement technique for a thin film with the nanowire sensor of Cui and
arrive at the imprint-fabricated ribbon configured to allow four-point
electrical resistance measurements as recited in claim 100 (Br. 17).
Appellants contend that Cui’s nanowire is not a thin film such that it could
not be configured to allow four-point electrical resistance measurements (Br.
17). Appellants contend that Cui is non-analogous art such that one would
not look to the nanowire sensor disclosed by Cui for applying an imprint-
fabricated ribbon to contact an analyte (Br. 15, 17-18). Appellants also
advance the same arguments made regarding claim 1 (Br. 17).
We have considered all of Appellants’ arguments and are unpersuaded
for the reasons below.
Chou’s, Ufer’s and Cui’s disclosures were noted above with regard to
claim 1. We shall not repeat their disclosures here.
Ufer further discloses using a flexible substrate and flexible electrodes
(Ufer, col. 2, ll. 24-26). Ufer discloses that the flexible substrates are less
13
Appeal 2007-3793
Application 10/423,063

expensive and are more useful for accommodating tissue movements than
usual substrate materials (i.e., silicon wafers) (Ufer, col. 2, ll. 25-33).
Wolf I discloses that it is known to use a four-point technique to
measure the resistance of a sheet material (Wolf I 120).
Regarding Appellants’ arguments that were made previously
regarding claim 1, we are unpersuaded for the same reasons indicated in our
discussion of claim 1 above.
Appellants’ argument regarding Ufer’s flexible sensor appear to be
that since neither Chou nor Ufer disclose an imprint fabricated ribbon and
their devices function differently than an imprint-fabricated ribbon sensor,
one would not have been motivated to combine Chou’s imprint lithography
method with the interdigitated electrode sensor of Ufer and arrive at the
imprint-fabricated ribbon having a flexible substrate (Br. 17).
However, as we discussed above regarding claim 1, Chou discloses
forming an “imprint-fabricated ribbon” (i.e., elements 32), as we have
construed that claim phrase, and that imprint lithography lowers the cost to
produce the “ribbons” as compared to conventional lithographic processes
(Chou, col. 1, ll. 61-63). Moreover, Ufer discloses that the flexible
electrodes are made of conductive material, have an aspect ratio and a cross-
section (i.e., rectangular cross section) and are formed using lithography on
a flexible substrate (Ufer, col. 5, ll. 30-40; col. 7, ll. 44-49; col. 9, ll. 25-58;
Figure 2). In other words, Ufer discloses using lithography to form on a
flexible substrate flexible electrodes that satisfy our construction of
“imprint-fabricated ribbon,” except that the electrodes are not made using
imprint lithography. Ufer further discloses that the flexible substrate
provides the benefit of permitting the sensor to conform to tissue and, thus,
14
Appeal 2007-3793
Application 10/423,063

use in in vivo applications (Ufer, col. 2, ll. 29-33). In view of the above
prior art disclosures and contrary to Appellants’ arguments, one of ordinary
skill in the art would have been motivated to combine Chou’s imprint
lithography method to form elements 32 (i.e., “imprint-fabricated ribbon”)
with Ufer’s method of forming chemical sensors with a flexible substrate to
form the elements 32 (i.e., “imprint-fabricated ribbon”) on a flexible
substrate at a lower cost and permit the microdevice (i.e., chemical sensor)
in in vivo applications.
We note that Appellants appear to be arguing against combining
Chou’s imprint lithography method with Ufer’s interdigitated chemical
sensor, however, the Examiner’s combination involves combining Ufer’s
features (e.g., flexible substrate) of the chemical sensor with Chou’s imprint
lithography method for producing microdevices (Ans. 33-37) (i.e.,
Appellants are suggesting to combine the references in a different manner
than the Examiner proposed). Regardless, as noted in the preceding
paragraph of this opinion, there would have been motivation for combining
the references in the manner proposed by Appellants. Specifically, it would
have been obvious to use Chou’s lower cost imprint lithography to form the
electrodes on Ufer’s flexible substrate because Ufer discloses lithography to
form the electrodes (Ufer, col. 9, ll. 25-58) and Chou provides a lower cost
lithography process (Chou, col. 1, ll. 61-63) to produce Ufer’s electrodes.
Regarding Appellants’ argument that Ufer fails to disclose an imprint-
fabricated ribbon configured to conform to deformations of the substrate
resulting from the flexibility of the substrate, it is Chou that discloses an
“imprint-fabricated ribbon” as we have construed the claim phrase above.
Chou discloses using electrically conductive materials 30 to form elements
15
Appeal 2007-3793
Application 10/423,063

32 (i.e., imprint-fabricated ribbons) (Chou, col. 5, ll. 43-64). Moreover, we
agree with the Examiner that Ufer’s disclosure that using a flexible substrate
permits using the chemical sensor formed on the substrate in in vivo
applications such that “one who is skilled in the art would [have] be[en]
motivated to adopt a process such that the imprint-fabricated ribbon retains
its flexibility” (Ans. 35 and 36).
We add that, like Appellants’ ribbons (Specification [¶ 0029]), Ufer
discloses forming a “flexible” electrode (i.e., ribbon) made of platinum,
palladium or other conductive materials (Ufer, col. 5, ll. 31-37).
Accordingly, it would have been obvious to use Ufer’s electrically
conductive materials in Chou’s imprint lithography method to make the
electrically conductive elements 32 (i.e., imprint-fabricated ribbons) as such
is merely the predictable use of prior art elements (i.e., electrically
conductive materials) according to their established functions (i.e.,
conducting electricity). KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740
(2007).
Therefore, since Chou’s elements 32 (i.e., imprint-fabricated ribbons),
as modified by Ufer, would have been made of the same materials that
Appellants use to make their imprint-fabricated ribbons (e.g., palladium,
platinum or an electrically conductive material), the flexibility of Chou’s
elements 32 (i.e., imprint-fabricated ribbons) must be the same as
Appellants’ imprint-fabricated ribbons such that Chou’s elements 32 (i.e.,
imprint-fabricated ribbons) would conform to deformations resulting from
the flexibility of the substrate. In re Spada, 911 F.2d 705, 709 (Fed. Cir.
1990).
16
Appeal 2007-3793
Application 10/423,063

We add that combining Ufer’s flexible substrate with Chou’s imprint
lithography method would have been obvious because such is merely the
predictable use of a prior art element (i.e., a flexible substrate) according to
its established function (i.e., providing flexibility to the sensor).
KSR, 127 S. Ct. at 1740.
Appellants’ arguments regarding Wolf I relate to combining the four-
point resistance measurement technique with Cui’s nanowire (Br. 17).
However, the Examiner does not combine the references in that manner.
Rather, the Examiner indicates that it would have been obvious to combine
Wolf I’s four-point resistance method with Chou’s imprint lithography
method to form microdevices because it is an established method for
measuring sheet resistance of a thin film and Cui indicates that measuring
resistance is used to detect chemical species (Ans. 36-37).
Regarding Appellants’ argument that there is no motivation to
combine Wolf I’s four-point resistance measuring technique with Cui’s
nanowire sensor and Chou’s imprint lithography method, the Examiner has
indicated that the references provide motivation for the combination.
Specifically, Cui discloses that sensors measure resistance (i.e., electrical
measurements) to detect chemical species and Wolf I discloses that the four-
point resistance measurement technique is well known. Therefore, it would
have been obvious to use Chou’s imprint lithography method to form a
microdevice (i.e., chemical sensor) that uses four-point resistance
measurements to detect chemical species as disclosed by Cui and Wolf I to
measure the resistance and, thus, detect chemical species.
We add that combining Wolf I’s four-point resistance measurement
technique with Chou’s imprint lithography method to form a microdevice
17
Appeal 2007-3793
Application 10/423,063

(e.g., chemical sensor) is merely the predictable use of prior art elements
(i.e., resistance measurement techniques) according to their established
function (i.e., measuring resistance). KSR, 127 S. Ct. at 1740.
Appellants’ non-analogous art argument regarding Cui is
unpersuasive. Generally, analogous art may include art that is not in
applicant’s field of endeavor. KSR, 127 S. Ct. at 1742 (“Common sense
teaches, however, that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle”).
Analogous art may also include art designed to solve any problem, not only
the problem that an applicant seeks to solve. Id.
In the present appeal, Cui is in the same field of endeavor as
Appellants’ claimed invention (i.e., the sensor art). Furthermore, Cui is
reasonably pertinent to the problem that Appellants sought to solve, namely,
functionalizing the sensor to increase its sensitivity to particular chemical
species. Therefore, Appellants' non-analogous art argument is unavailing.
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 100 and 101 over Chou in view of Ufer, Cui, Wolf I and Wolf II.

DECISION
We AFFIRM the Examiner’s § 103(a) rejection of claims 1-7, 9-12,
and 14, 16-18, and 22-26 over Chou in view of Ufer and Cui.
We REVERSE the Examiner’s § 103(a) rejection of claims 27-38,
40-47, 50, 51, 53-59, and 62-80 over Chou in view of Ufer and Cui.
We AFFIRM the Examiner’s § 103(a) rejection of claims 15 and
19-21 over Chou in view of Ufer, Cui, Wolf I and Wolf II.
18
Appeal 2007-3793
Application 10/423,063

We REVERSE the Examiner’s § 103(a) rejection of claims 38 [sic
39], 48, 49, and 61 over Chou in view of Ufer, Cui, Wolf I and Wolf II.
We AFFIRM the Examiner’s § 103(a) rejection of claims 100 and 101
over Chou in view of Ufer, Cui, Wolf I and Wolf II.
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

cam

Hewlett-Packard Development Company
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
19