Ex Parte Suganuma et al

Patent Trial and Appeal Board

Aug 30, 2018

14383170 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/383,170 09/05/2014
23373 7590 09/04/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Katsuaki Suganuma
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.
Q213562 4307
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATSUAKI SUGANUMA,
MASAYA NOGI, JINTING JIU,
TOHRU SUGAHARA, HIROSHI UCHIDA,
and KENJI SHINOZAKI
Appeal2018-005973
Application 14/3 83,170 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MONTE T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 6, 7, 12-14, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The real parties in interest, and the Applicants, are said to be Showa Denko K.K.
and Osaka University. Appeal Brief dated November 6, 2017 ("Br."), at 2.
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Application 14/3 83,170
The claimed subject matter is directed to a method for producing a
transparent conductive pattern on a resin substrate having low heat resistance. See
Spec. ,r 10. According to the claimed method, silver nanowires are deposited on
the substrate and the nanowires are irradiated by light from a pulsed xenon lamp to
join intersections of the nano wires.
Independent claim 6 is reproduced below from the Claims Appendix of the
Appeal Brief dated November 6, 2017 ("Br.").
6. A method for producing a transparent conductive pattern,
wherein pulsed light having a pulse width of 30 microseconds to 1000
microseconds is irradiated to metal nanowires deposited on a substrate
to join intersections of the metal nano wires, and to have a light
transmittance within the visible light range wavelength of 400 to 800
nm of 78% to 90%,
wherein the pulsed light is from a xenon irradiation lamp;
wherein the metal nanowire has a diameter of 10 to 100 nm and
a length of 15 to 100 µm,
wherein the metal nanowires are silver nanowires,
wherein the material for the substrate is a polyester resin, a
cellulose resin, a vinyl alcohol resin, a vinyl chloride resin, a cyclo-
olefin resin, a polycarbonate resin, an acrylic resin, or a ABS resin
wherein deposition of the metal nano wires onto the substrate is
performed by coating a dispersion liquid having the metal nanowires
dispersed therein on the substrate, and drying,
wherein the content of the metal nano wire in the dispersion
liquid is 0.05 to 2% by mass, relative to the total mass of the
dispersion liquid.
Br. 24.
The Examiner maintains the following rejections on appeal:
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Application 14/3 83,170
(1) claims 6, 7, 12, and 19 under 35 U.S.C. § I03(a) as unpatentable over
Garnett et al. 2 in view of Li et al.,3 Sohn et al., 4 and Allemand et al., 5 and
(2) claims 13 and 14 under 35 U.S.C. § I03(a) as unpatentable over
Garnett in view of Li, Sohn, and Allemand, and further in view of Huang et al. 6
The rejections are sustained for the reasons provided in the Final Office
Action dated June 8, 2017 ("Final Act.") and the Examiner's Answer dated March
22, 2018 ("Ans."). We add the following for emphasis.
B. DISCUSSION
The Examiner finds Garnett discloses a method of producing transparent
conductive electrodes for devices by exposing silver nanowires deposited on a
heat-sensitive substrate (e.g., plastic wrap) to light in order to join or weld
intersections of the nano wires. Final Act. 3--4, 7. The Examiner finds that Garnett
"teaches pulsed light (lasers) is useful for locally heating nanoscale metallic
structures (page 241 ,r 1 ), but does not specifically teach using a pulsed Zenon [ sic,
xenon] irradiation lamp to produce the light or teach what pulse widths would be
effective to do so." Final Act. 4.
The Examiner finds Li uses a pulsed xenon lamp to join silver
nanostructures (i.e., nanoparticles) together to form conductive electrodes on
substrates. Final Act. 4; see also Li ,r 39 ( disclosing that photosintering may be
applied to films that include silver and/or copper particles). The Examiner finds:
2 Erik C. Garnett et al., Self-limited plasmonic welding of silver nanowire
junctions, 11 Nature Materials 241--49 (2012) ("Garnett").
3 US 2008/0286488 Al, published November 20, 2008 ("Li").
4 US 2008/0163927 Al, published July 10, 2008 ("Sohn").
5 US 2011/0297642 Al, published December 8, 2011 ("Allemand").
6 H. H. Huang et al., Photochemical Formation of Silver Nanoparticles in Poly(N-
vinylpyrrolidone), 12 Langmuir 909-912 (1996) ("Huang").
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Application 14/3 83,170
[Li] teaches using pulsed light sources (pulsed laser or pulsed lamp) to
perform the joining of the nanostructures [0128] and teaches that in
order to avoid overheating the substrate, it is beneficial to provide the
radiation in a relatively short pulse, such as on the order of 300
microseconds or less, in order to join the nanostructures together fast
enough without allowing substantial energy to be transmitted to the
substrate [0038J,[7J since the substrate is heat sensitive [0037]_(8]
Final Act. 4--5.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to use a pulsed xenon lamp light source with a pulse duration of 300
microseconds,9 as taught by Li, to join the nanowires in Garnett's method "to
prevent the heat sensitive substrates from being heated by the pulsed light and thus
damaged by the light used to fuse the nanowires." Final Act. 5.
The Appellants argue that Li's method is inapplicable to Garnett's method
because Li irradiates nanoparticles which are "spaced close together" (Br. 15,
citing Li ,r 38) in contrast to Garnett's nanowires which are "spaced apart,"
whereby gaps are formed between the nanowires (Br. 16).
7 Li discloses that if the light intensity is high enough and the pulse length is short
enough, then the energy transferred to the film is enough to allow the particles to
fuse together without transferring substantial energy to the substrate. Li ,r 38.
8 Li discloses polymer substrates. Li ,r 37.
9 There is no dispute on this record that a pulse duration of 300 microseconds falls
within the range of "3 0 microseconds to 1000 microseconds" recited in claim 6.
See Br. 24. We note that claim 6 does not recite the irradiation interval, i.e., the
time the pulsed light is off. The Appellants disclose that the irradiation interval "is
preferably in a range from 20 microseconds to 5 seconds, and more preferably in a
range from 2000 microseconds to 2 seconds." Spec. ,r 18. The Appellants disclose
that "[i]f the irradiation interval is shorter than 20 microseconds, the pulsed light
becomes similar to a continuous light and another irradiation is performed after
one irradiation without leaving enough time for cooling." Id.
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Application 14/3 83,170
The Appellants' argument is not persuasive of reversible error. The
Examiner finds, and the Appellants do not dispute, that the spacing between the
nanostructures in both Garnett and Li must be narrow enough to join the
structures. 10 Ans. 4. The Appellants do not direct us to any evidence
demonstrating that the narrow spacings in Li and Garnett are so different from one
another that one of ordinary skill in the art would not have expected light from the
pulsed xenon lamp disclosed in Li to successfully weld Garnett's nanowires at
their intersections. In that regard, Garnett discloses a spacing of 2 nm between
nanowires (Garnett 245) and the portion of Li relied on by the Appellants (Li ,r 38)
does not disclose any specific spacing between particles.
The Appellants also argue that technical distinctions between processes for
irradiating nanowires and irradiating nanoparticles do not support the Examiner's
proposed modification of Garnett. Br. 16. First, the Appellants argue that the
amount of conductive elements and the surface area of the conductive elements are
greater in Li (nanoparticles) than in Garnett (nanowires), which requires a different
amount of energy for irradiating nanoparticles compared to irradiating nanowires.
Br. 1 7. Second, the Appellants argue that Garnett and Li disclose different light
sources and "[ w ]hen the light source is different, the photo irradiation amount
becomes largely different." Br. 18.
We recognize that Garnett welds silver nano wires, not silver nanoparticles as
in Li. Nonetheless, the Examiner finds Garnett teaches that in order to weld or
fuse its silver nanowire particles, "wavelengths that can be absorbed by the
particles and sufficient intensity to fuse the particles" are required. Final Act. 9.
10 We note that the diameter of Garnett's nanowires is between 30 and 80 nm
(Garnett 241, col. 2) and the diameter of Li's nanoparticles is 100 nm or less (Li
,r,r 34, 114 ).
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The Examiner finds that the wavelengths disclosed in Garnett "overlap with the
emission spectrum from the pulsed xenon lamp of Li." Final Act. 9. Therefore,
the Examiner finds that "it is entirely predictable and expected that the pulsed
xenon bulb of Li would be effective for fusing silver nanowires." Final Act. 10.
Moreover, Garnett, like Li, is concerned with minimizing damage to a heat
sensitive substrate when welding silver nanostructures. Li discloses that a pulsed
xenon pulsed lamp is useful for minimizing damage to a heat sensitive substrate.
Li ,r 38. Therefore, one of ordinary skill in the art would have been motivated to
use the pulsed xenon lamp disclosed in Li to weld Garnett's silver nanowires.
The Appellants argue that "a person of ordinary skill in the art would not
have been motivated to modify Garnett's method based on Li, because Garnett
discloses that it already solves the problem for which the modification is based -
preparing a transparent conductive pattern using a heat-sensitive substrate." Br.
20. Moreover, the Appellants argue that "[n]o aspect of Li's process has been
shown to improve Garnett's method for welding nanowires on thermally-sensitive
substrates." Br. 21.
The Appellants' arguments are not persuasive of reversible error. As
explained by the Supreme Court in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
415--416 (2007):
Neither the enactment of§ 103 nor the analysis in Graham [ v.
John Deere, 383 U.S. 1 (1966)] disturbed this Court's earlier
instructions concerning the need for caution in granting a patent based
on the combination of elements found in the prior art. For over a half
century, the Court has held that a "patent for a combination which
only unites old elements with no change in their respective functions
... obviously withdraws what already is known into the field of its
monopoly and diminishes the resources available to skillful men."
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,
340 U.S. 147, 152-153 ... (1950). This is a principal reason for
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declining to allow patents for what is obvious. The combination of
familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.
Thus, it is of no moment in the obviousness rejection on appeal that Garnett
solves the problem of welding silver nanowires on a heat-sensitive substrate using
a broadband tungsten-halogen lamp where Li discloses an alternative light source
(i.e., a pulsed xenon lamp) known to solve a similar problem (i.e., welding silver
nanoparticles on a heat-sensitive substrate). Moreover, contrary to the Appellants'
argument, it is not necessary for the Examiner's proposed modification to improve
Garnett's method to demonstrate obviousness.
Finally, the Appellants argue that one of ordinary skill in the art would not
have modified Garnett's method as proposed by the Examiner "because doing so
would improperly destroy Garnett's principle [sic] mode of operation." Br. 21.
More specifically, the Appellants argue that "[b ]ased on the fundamental
differences between the irradiations [ of Garnett and Li]" and "due to the difference
between dispersions of nano wires with spaces/gaps, and nanoparticles positioned
close together, Li's purported benefit of protecting heat-sensitive substrates in
nanoparticle dispersions would not have been expected to apply in spaced
nanowire dispersions." Br. 22.
Suffice it to say that the principal mode of operation in Garnett is welding
silver nanowires to produce a conductive film. As discussed above, the Appellants
do not direct us to any evidence demonstrating that light from the pulsed xenon
lamp of Li would not have been expected to successfully weld the silver nano wires
of Garnett. Thus, the evidence of record does not support a finding that Garnett's
principal mode of operation would be destroyed by the Examiner's proposed
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modification. See Ans. 7 (finding that "[d]estroying the function of Garnett would
be not being able to produce a conductive film").
For the reasons set forth above, a preponderance of the evidence supports the
Examiner's conclusion of obviousness with respect to claim 6. The Appellants do
not present arguments in support of the separate patentability of any of claims 7,
12-14, and 19. Therefore, the§ 103(a) rejections on appeal are sustained.
C. DECISION
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)(l ).
AFFIRMED
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