Ex Parte Wigglesworth et al

Patent Trial and Appeal Board

Dec 20, 2017

14189550 (P.T.A.B. Dec. 20, 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.
14/189,550 02/25/2014 Anthony Wigglesworth 20131309US01-XER3105US01 2137
62095 7590 12/21/2017
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
KALAM, ABUL
ART UNIT PAPER NUMBER
2896
MAIL DATE DELIVERY MODE
12/21/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ANTHONY WIGGLESWORTH,
YILLIANG WU, and CUONG VONG1
Applicant: XEROX CORPORATION
Appeal 2017-006508
Application 14/189,550
Technology Center 2800
Before BEVERLY A. FRANKLIN, RAE LYNN P. GUEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—7 and 9. We have jurisdiction
the appeal under 35 U.S.C. § 6(b).
over
1 Appellants identify the real party in interest as Xerox Corporation.
Appeal 2017-006508
Application 14/189,550
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. An electronic device comprising a dielectric layer
and a semiconducting layer;
wherein the dielectric layer is formed from a first
sublayer and a second sublayer, the first sublayer comprising a
higher-k dielectric material and the second sublayer comprising
a lower-k dielectric material, the first sublayer and the second
sublayer being crosslinked together; and
wherein the semiconducting layer comprises a
diketopyrrolopyrrole polymer;
wherein the semiconducting layer is adjacent to and in
contact with the second sublayer of the dielectric layer; and
wherein the diketopyrrolopyrrole polymer has the
structure of Formula (5-a):
Formula (5-aj
wherein n is from 2 to about 5,000.
2
Appeal 2017-006508
Application 14/189,550
The Examiner relies on the following prior art references as evidence
of unpatentability:
Li US 2009/0065878 A1 March 12, 2009
Wu et al. US 2012/0141757 A1 June 07, 2012
(hereafter “Wu”)
THE REJECTION2
Claims 1—7 and 9 are rejected under 35 U.S.C. §103 as being
unpatentable over Wu in view of Li.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claim on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii). In the
instant case, we thus consider only claim 1.
Upon full consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied art. Accordingly, we
sustain the Examiner’s rejection on appeal for essentially the reasons set
forth in the Final Office Action and in the Answer, and affirm. We add the
following for emphasis.
2 The rejection of claims 1—7 and 9 under 35 U.S.C. §112, second
paragraph, as being indefinite has been withdrawn. Ans. 2.
3
Appeal 2017-006508
Application 14/189,550
It is the Examiner’s position that Wu discloses all the limitations of
claim 1, except for explicitly disclosing the claim recitations of “wherein
the semiconductor layer comprises a diketopyrrolopyrrole polymer”, and
“wherein the diketopyrrolopyrrole polymer has the stmcture of Formula
(5-a)”. Final Act. 3^4.
The Examiner relies upon Li for teaching a semiconductor layer 22
that comprises a diketopyrrolopyrrole polymer, and provides advantages
such as improved air-stability and enhanced field-effect mobility, and the
Examiner refers to Li’s Figure 1 and | [0024] in this regard. Final Act. 4.
The Examiner finds that Li discloses that the diketopyrrolopyrrole polymer
has the structure substantially identical to that of Appellants’ claimed
Formula (5-a), and refers to Formula (48) of Li. The Examiner finds that Li
discloses conjugated moieties shown in | [0058], and concludes that the
combined teachings of Formula (48) with the conjugated moieties taught in
1 [0058] renders obvious Appellants’ claimed formula (5-a). Final Act. 4—5.
Appellants argue that Li’s Formula (48) does not read on the claimed
Formula (5-a). Appeal Br. 5. However, as the Examiner finds (as stated
above), it is the multiple teachings of Li regarding Formula (48) with the
conjugated moieties shown in | [0058] which renders obvious Appellants’
claimed Formula (5-a). Ans. 5. Hence, Appellants inadequately address
squarely the Examiner’s stated position in this regard.
Appellants then state that it is not enough to show that a claimed
species is encompassed by a prior art genus to establish a prima facie case of
obviousness (Appeal Br. 5), and Appellants present several lines of
argument on pages 5—7 of the Appeal Brief, and on pages 2—3 of the Reply
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Appeal 2017-006508
Application 14/189,550
Brief, in support of this position. We are unpersuaded by such line of
argument. We note that the fact that a reference “discloses a multitude of
effective combinations does not render any particular formulation less
obvious.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989); see also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)
(obviousness rejection of claims affirmed in light of prior art teaching that
“hydrated zeolites will work” in detergent formulations, even though “the
inventors selected the zeolites of the claims from among ‘thousands’ of
compounds”). As such, Appellants’ position that the “multiple selections”
(Appeal Br. 6) required to arrive at the claimed species, from among the
possibilities found in Li, make the selection unobvious, is unpersuasive. The
Examiner’s findings in the record indicate that the possibilities in Li are not
so large, so as to make the selection as identified by the Examiner in the
record, unobvious. Within this context, we thus agree with the Examiner’s
conclusion of obviousness. Additionally, the Examiner points out on pages
6—7 of the Answer that the record is absent evidence of criticality or
unexpected results, and this further supports the Examiner’s conclusion of
obviousness.
In view of the above, we affirm the rejection.
DECISION
The rejection is affirmed.
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Appeal 2017-006508
Application 14/189,550
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
ORDER
AFFIRMED
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