Ex Parte Yang et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201612496453 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/496,453 07/01/2009 75589 7590 02/11/2016 Matheson Keys Daffer & Kordzik PLLC 7004 Bee Cave Rd. Bldg. 1, Suite 110 Austin, TX 78746 FIRST NAMED INVENTOR Mohshi Yang 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. 21545-218001 4567 EXAMINER CARLEY, JEFFREY T. ART UNIT PAPER NUMBER 3729 NOTIFICATION DATE DELIVERY MODE 02/11/2016 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): kkordzik@mathesonkeys.com claney@mathesonkeys.com kdaffer@mathesonkeys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MOHSHI YANG, DAVID MAX ROUNDHILL, and ZVIYANIV Appeal 2014-001418 1,2 Application 12/496,453 Technology Center 3700 Before ANTON W. PETTING, PHILIP J. HOFFMANN, and KENNETH G. SCHOPPER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 12-15, 17-20, 38, and 40-54. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Our decision references Appellants' Specification ("Spec.," filed July 1, 2009), Appeal Brief ("Appeal Br.," filed May 28, 2013), and Reply Brief ("Reply Br.," filed Nov. 12, 2013), as well as the Final Office Action ("Final Action," mailed Jan. 2, 2013) and the Examiner's Answer ("Answer," mailed Sept. 12, 2013). 2 "The real parties in interest are Applied Nanotech Holdings, Inc. and Ishihara Chemical Co. Ltd." Appeal Br. 1. Appeal2014-001418 Application 12/496,453 According to Appellants, the invention relates to "metallic pastes and inks that can be used to form metallic conductors with improved conductivity." Spec. 1, 11. 9-10. Claims 12, 38, and 44 are the only independent claims under appeal. We reproduce below claim 12 as representative of the appealed claims. 12. A method of making a metallic conductor comprising curing a metallic paste to provide the metallic conductor, wherein the metallic conductor has a resistivity of about 5 x 10-4 Q·cm or less, wherein the curing comprises photosintering. Appeal Br., Claims App. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: claims 42 and 43 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 42 and 43 under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention; claims 12-15, 17-20, 38, 40-49, and 54 under 35 U.S.C. § 102(b) as anticipated by Kodas (US 6,951,666 B2, iss. Oct. 4, 2005); claim 50 under 35 U.S.C. § 103(a) as unpatentable over Kodas and Endo (US 6,165,386, iss. Dec. 26, 2000); and claims 51-53 under 35 U.S.C. § 103(a) as unpatentable over Kodas and Harada (US 6,191,191 Bl, iss. Feb. 20, 2001). See Answer 2-8. 2 Appeal2014-001418 Application 12/496,453 ANALYSIS Written description and indefiniteness rejections of claims 42 and 43 As stated above, the Examiner rejects claims 42 and 43 under 35 U.S.C. § 112, first and second paragraphs, although it is not entirely clear whether the Examiner concludes the claims are not supported by the written description or are not enabled. See Answer 2-3. Regardless, based on our review of the Examiner's findings and conclusions (see, e.g., id. at 3--4, 8-9) and Appellants' arguments (see Appeal Br. 3; see also Reply Br. 1-3), we agree with Appellants that the Examiner incorrectly finds that the Specification "only [describes] that copper oxides [and not any other metals] can be reduced to [an elemental metal]" (Answer 2, 3). Thus, inasmuch as we do not agree with the Examiner's basis for both of the rejections, we do not sustain either rejection under Section 112. Anticipation rejection of independent claims 12, 38, and 44, and dependent claims 13-15, 17-20, 40--43, 45--49, and 54 Initially, we note that Appellants argue each of claims 12-15, 17-20, 38, 40--49, and 54 in a single section of the Appeal Brief, without any separate subheadings. See Appeal Br. 3-9. Thus, each of these claims stands or falls together. See 37 C.F.R. § 41.37 (c)(l)(iv). Appellants essentially argue that the Examiner's anticipation rejection is erroneous because although Kodas discloses "sintering," Kodas fails to teach "photosintering." See Appeal Br. 3-9. Based on our review of the Examiner's findings and conclusions 9 (see, e.g., Answer 3---6, 9-12) and Appellants' arguments (see Appeal Br. 3-9; see also Reply Br. 4---6), we conclude that the Examiner's rejection is supported by a preponderance of the evidence, and Appellants do not persuade us the Examiner's rejection is 3 Appeal2014-001418 Application 12/496,453 in error. Thus, we sustain the anticipation rejection of claims 12-15, 17-20, 38, 40-49, and 54. A relevant definition of "photo-" is "a combining form meaning 'light."'3 We agree with the Examiner's determination that Kodas discloses sintering with a laser light, and, thus, Kodas teaches photosintering. See Answer 3--4, citing Kodas col. 30, 11. 11-18, 24--30, 48---63. Nonetheless, it is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides [either] a definition for [a] claim term[ ] [or disavowal of claim scope], but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citations omitted). In this case, however, we conclude that Appellants' Specification does not rise to the level of providing a specific definition of photosintering. For example, although Appellants point to page 3, lines 6- 14, of their Specification, this portion states that photosintering "may" use high thermal pulses to evaporate organic components, but does not require a photosintering process to do so. See Appeal Br. 5; see also Reply Br. 4--5. By way of further example, Appellants point to page 9, lines 26-28, of their Specification as providing a definition for photosintering. But, this portion of the Specification states that photosintering "promotes" the elimination of metal oxide, without explaining what "promotes" means. One relevant definition of "promote" is "to help or encourage to exist or flourish." 4 Kodas appears to discuss throughout its disclosure various steps taken to 3 The Free Dictionary, http://www.thefreedictionary.com/photo (last visited February 1, 2016). 4 The Free Dictionary, http://www.thefreedictionary.com/promote (last visited February 1, 2016). 4 Appeal2014-001418 Application 12/496,453 '1 1 • • ' • {' ' 1 • 1 r1 TT 1 1 1 ,.... 11 !""' ,_, f A encourage me enmmauon or mern1 ox10e . .)ee, e.g., 1\._0aas col. l.J, 11. :J 1-0<:+, col. 18, 11. 51---67. Further, it appears to be well-known that sintering occurs under conditions that use a protective gas that prevents or even reverses oxidation. 5 Thus, a preponderance of the evidence supports the Examiner's finding that Kodas discloses photosintering that promotes elimination of metal oxide. With respect to the portion of Appellants' Specification that mentions the elimination of metal oxide by "reduction" of the metal oxide to an elemental metal, we note that the Specification states that the elimination of metal oxide "may" occur through reduction, but does not require that reduction occur. See Spec. 9, 11. 26-28. This understanding that photosintering may, but need not, result in the elimination of metal oxide through reduction is consistent with Appellants' claims, inasmuch as claim 42, which depends directly from independent claim 12 and presumably further limits the independent claim, requires that "the photosintering reduces metal oxides in the metallic paste to elemental metal." Appeal Br., Claims App. Thus, based on the foregoing, we sustain the Examiner's anticipation rejection of claims 12-15, 17-20, 38, 40-49, and 54 based on Kodas. Obviousness rejection of claim 50 Appellants additionally argue that the obviousness rejection of claim 50 based on Kodas and Endo is erroneous because the photosetting conductive paste disclosed in Endo is made with a resin, and the photo setting is referring to a process whereby the resin infused conductive paste is cured. This is not in any way similar to the photosintering process and utilized 5 Wikipedia, https://en.wikipedia.org/wiki/Sintering, https:// en. wikipedia.org/wiki/Endothermic_gas (last visited February 1, 2016). 5 Appeal2014-001418 Application 12/496,453 metallic paste disclosed in the present invention, nor even the thermal sintering and utilized pastes in Kodas. One of ordinary skill in the art would not have looked to combine Endo with Kodas to arrive at the claimed invention, since such a combination would not lead to a predictable result, and would require undue experimentation to utilize the resin infused conductive paste of Endo with the process disclosed in Kodas. The compositions utilized in Kodas and Endo are completely different, and these references are not analogous for addressing the claimed invention. Appeal Br. 9--10. Appellants' arguments are conclusory in nature, and do not provide a sufficient factual basis establishing that the reasons that the Examiner offers for combining the references are erroneous. Thus, we sustain the rejection of claim 50. Obviousness rejection of claims 51-53 Appellants additionally argue that the obviousness rejection of claims 51-53 based on Kodas and Harada is erroneous because as with Endo, Harada pertains to curing of polymerizable compos1t10ns, and in fact teaches that its process pertains to "photopolymerizable" compositions. One of ordinary skill in the art would not have looked to combine Harada with Kodas to arrive at the claimed invention, since such a combination would not lead to a predictable result, and would require undue experimentation to utilize the polymerizable compositions of Harada with the process disclosed in Kodas. There is nothing in the references that would lead one of ordinary skill in the art to believe that "photo-irradiation with a dental irradiator," which is made for curing polymerizable compositions could be utilized with the thermal sintering process disclosed by Kodas, and especially to arrive at the claimed invention. The compositions utilized in Kodas and Harada are completely different, and these references are not analogous for addressing the claimed invention. 6 Appeal2014-001418 Application 12/496,453 Appeal Br. 10. Appellants' arguments are conclusory in nature, and do not provide a sufficient factual basis establishing that the reasons that the Examiner offers for combining the references are erroneous. Thus, we sustain the rejection of claims 51-5 3. DECISION We REVERSE the Examiner's rejections under 35 U.S.C. § 112, first and second paragraphs, of claims 42 and 43. We AFFIRM the Examiner's rejections under 35 U.S.C. § 102(b) of claims 12-15, 17-20, 38, 40-49, and 54. We AFFIRM the Examiner's rejections under 35 U.S.C. § 103(a) of claims 50-53. 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation