Ex Parte Veerasamy

Patent Trial and Appeal Board

Apr 27, 2018

12461349 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/461,349 08/07/2009
23117 7590 05/01/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Vijayen S. Veerasamy
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.
JAR-3691-1895 2406
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
05/01/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIJA YEN S. VEERASAMY
Appeal 2016-007039
Application 12/461,349 1
Technology Center 1700
Before JEFFREY T. SMITH, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 8-17 and 31--43. We have jurisdiction under 35 U.S.C. § 6(b ).
The invention relates generally to a touch panel subassembly
comprising a glass substrate, first and second transparent graphene-based
1 Appellant is the Guardian Industries Corp., which according to the Appeal
Brief, is also the real party in interest. See App. Br. 3.
Appeal 2016-007039
Application 12/461,349
layers. Independent claims 8 and 35 are representative of the appealed
subject matter and are reproduced below:
8. A touch panel subassembly, comprising:
a glass substrate;
a first transparent, conductive graphene-based layer provided,
directly or indirectly, on the glass substrate;
a deformable foil, the deformable foil being substantially
parallel and in spaced apart relation to the glass substrate; and
a second transparent, conductive graphene-based layer
provided, directly or indirectly, on the deformable foil,
wherein the first and second graphene-based layers each are n-
type dopable and p-type dopable, and
wherein at least one of the first and second graphene-based
layers is doped with n-type or p-type dopants embedded in the
bulk thereof from a solid dopant source material that at least
initially lies under the graphene-based layer(s) that is/are doped.
35. A touch panel subassembly, comprising:
a glass substrate;
a first transparent, conductive graphene-based layer provided,
directly or indirectly, on the glass substrate;
a deformable foil, the deformable foil being substantially
parallel and in spaced apart relation to the glass substrate; and
a second transparent, conductive graphene-based layer
provided, directly or indirectly, on the deformable foil,
wherein each said graphene-based layer is hetero-epitaxially
grown, directly or indirectly, on a metal catalyst thin film, and
wherein at least one of said graphene-based layers is
electrochemically anodized so as to render the catalyst thin film
thereunder a substantially transparent metal oxide.
App. Br., Claims App 'x.
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Appeal 2016-007039
Application 12/461,349
Appellant (see generally App. Br.) requests review of the following
rejections:
I. Claims 8-17 and 31--43 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written
description requirement.
II. Claims 8-17 and 31-34 are rejected under 35 U.S.C. § 103
over Hong (US 7,436,393 B2, issued Oct. 14, 2008),
Polyakov (US 2010/0109486, published May 6, 2010), Shin
(US 2009/0146111 Al, published June 11, 2009), and Kong
(US 8,535,553 B2, issued Sept. 17, 2013).
III. Claims 35--43 are rejected 35 U.S.C. § 103 over Hong in
view of Polyakov and Choi (US 2009/0068471 Al,
published Mar. 12, 2009).
The complete statement of the rejections on appeal appear in
the Non-Final Office Action. Non-Final Act. 2-19.
OPINION
The Examiner rejects independent claims 8-17 and 31--43 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. 2 According to the Examiner, the claim language
"wherein the first and second graphene-based layers each are n-type dopable
and p-type dopable" does not have descriptive support in the Specification.
Non-Final Act. 3.
2 We observe that the Examiner only discusses independent claim 8 but fails
to address the remaining claims.
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Appeal 2016-007039
Application 12/461,349
We agree with Appellant's general proposition (App. Br. 8-9) that the
above-quoted claim language is supported by the Specification. Appellant's
explain that the Specification describes techniques can be used to create n-
type and p-type dopable graphene-based layers. App. Br. 8-9. In this
regard, the Examiner improperly interprets the disputed claim language as
not supported by the Specification. Final Action 2. Rather, one with
ordinary skill in this art would recognize that the inventor, at the time the
application was filed, was in possession of techniques that involve the
formation of graphene-based layers that each are n-type dopable and p-type
dopable and that such layers could be used in a touch panel subassembly as
described by the Specification.
We do not sustain, therefore, the Examiner's rejection of claims 8-17
and 31--43 under 35 U.S.C. § 112, first paragraph.
Prior Art Rejections3
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we determine
that Appellant has not identified reversible error in the Examiner's rejection
of claim 8. However, Appellant has identified reversible error in the
Examiner's rejection of claim 35. Our reasons follow.
3 Appellant's arguments are directed to independent claim 8 and independent
claim 35. (App. Br. 9-18). Appellant does not provide separate arguments
addressing the dependent claims 9-17, 31-34, and 36--43 (including separate
Rejection III). We limit our discussion to independent claims 8 and 35,
which we select as representative of the rejected claims.
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Appeal 2016-007039
Application 12/461,349
Claim 8
The Examiner found the combination of Hong, Polyakov, Shin, and
Kong renders obvious a touch panel subassembly comprising a glass
substrate, first and second transparent graphene-based layers----directly or
indirectly on the glass substrate-wherein at least one of the first and second
transparent graphene-based layers is doped with an-type or p-type dopants
as required by independent claim 8. Non Final Act. 4--12.
Appellant argues claim 8 specifies "the first and second graphene-
based layers each are n-type dopable and p-type dopable, and ... at least one
of the first and second graphene-based layers is doped with n-type or p-type
dopants embedded in the bulk thereof from a solid dopant source material
that at least initially lies under the graphene-based layer(s) that is/are
doped." App. Br. 9. Appellant argues the product-by-process limitations of
claim 8 described a structure that is patently distinct from the prior art cited
by the Examiner. App. Br. 9--15. Appellant argues that dopants embedded
in the graphene-based layer from a solid dopant source material that at least
initially lies under it would likely result in structural voids in the
underlayer-and of course a different structure in the layer being doped.
App. Br. 14.
Appellant has not disputed the prior art cited by the Examiner would
have suggested a touch panel subassembly comprising a glass substrate, first
and second transparent graphene-based layers wherein at least one of the
transparent graphene-based layers is doped with an-type or p-type dopants.
Consequently, the Examiner has satisfied the burden of establishing under
§ 103 that the prior art reasonably appears to disclose a product that is
identical with or only slightly different from the product claimed. See In re
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Appeal 2016-007039
Application 12/461,349
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Fessman, 489 F.2d 742, 744
(CCPA 1974). Once the Examiner meets this burden of proof, the burden
shifts to Appellant to show that the claimed product materially differs from
the product of the prior art. It is the product that must be gauged in light of
the prior art, not the process limitations. See In re Wertheim, 541 F.2d 257,
2 71 ( CCP A 197 6); In re F essman, supra. It is well settled that when a
claimed product reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the Appellant to prove that the
prior art product does not necessarily or inherently possess characteristics
attributed to the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellant has not directed us to evidence that establishes the claimed
touch panel subassembly is patently distinct. Appellant asserts the voids in
the underlayer establish a patentable distinction over the prior art. App. Br.
14--15. The Examiner correctly determined claim 8 does not require an
underlying layer with voids in the final touch pad subassembly. Ans. 24--25.
Appellant has not directed us to evidence that establishes a patentable
distinction between the claimed touch pad subassembly comprising at least
one graphene-based layer doped with n-type or p-type dopants derived from
a solid dopant source material that at least initially lies under the graphene-
based layer compared to a touch pad subassembly comprising at least one
graphene-based layer doped with n-type or p-type dopants wherein the
dopants are implanted by different techniques. Appellant has not disputed
that there are other known techniques for doping a graphene-based layer
doped with n-type or p-type dopants.
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Appeal 2016-007039
Application 12/461,349
For the foregoing reasons and those presented by the Examiner, we
sustain the rejection of claims 8-17 and 31-34.
Claim 35
We do not sustain the rejection of independent claim 3 5. Claim 3 5
describes a touch pad subassembly "wherein at least one of said graphene-
based layers is electrochemically anodized so as to render the catalyst thin
film thereunder a substantially transparent metal oxide."
The Examiner contends the product of claim 3 5 does not require the
structure of the "metal catalyst thin film" in the touch panel subassembly.
Non Final Act. 15.
Contrary to the Examiner's position, the Specification discloses
anodization of the metal catalyst thin film creates a transparent oxide layer
while bonded to the graphene layer. Spec. 65. Thus, the touch pad
assembly of independent claim 3 5 requires the catalyst thin film
substantially transparent metal oxide to be present beneath the graphene
layer.
For the foregoing reasons, we cannot sustain the rejection of claims
35--43.
ORDER
The written description rejection of claims 8-17 and 31-34 is
reversed.
The obviousness rejection of claims 8-17 and 31-34 is affirmed.
The obviousness rejection of claim 35--43 is reversed.
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Appeal 2016-007039
Application 12/461,349
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-IN-PART
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