Fr¿d¿ric Bouyer et al.

Patent Trials and Appeals Board

Oct 22, 2019

14355148 - (D) (P.T.A.B. Oct. 22, 2019)

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.
14/355,148 04/29/2014 Frédéric Bouyer 0720-1075 9918
65363 7590 10/22/2019
Todd A. VAUGHN
Jordan IP Law, LLC
12501 Prosperity Drive, Suite 401
Silver Spring, MD 20904
EXAMINER
TAI, XIUYU
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
10/22/2019 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):
admin4@jordaniplaw.com
admin@jordaniplaw.com
tvaughn@jordaniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRÉDÉRIC BOUYER, BRUNO VUILLEMIN,
and FABIEN GABEN
____________________
Appeal 2018-008169
Application 14/355,148
Technology Center 1700
____________________

Before GRACE KARAFFA OBERMANN, DEBRA L. DENNETT, and
LILAN REN Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 16–24, 26–29, 31, and 37.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

1 In our Decision, we refer to the Final Office Action dated June 6, 2017
(“Final Act.”); the Appeal Brief filed March 28, 2018 (“Br.”); the Advisory
Action dated May 18, 2018 (“Adv. Act.”); and the Examiner’s Answer dated
May 23, 2018 (“Ans.”). Appellant did not file a Reply Brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as I-TEN.
Br. 3.
3 Claims 25, 30, and 32–36 are withdrawn from consideration. Final Act. 1.
Appeal 2018-008169
Application 14/355,148

2
The invention relates to a process for making dense thin films by
electrophoresis. Spec. 1, l. 4–7. Claim 16, reproduced below from the
Claims Appendix of the Appeal Brief, illustrates the claimed subject matter:
16. A process for deposition of a dense film having at least
one material Px on a substrate, the process comprising:
providing a colloidal suspension containing nanoparticles
of said at least one material Px, wherein the diameter of said
nanoparticles of the at least one material Px is less than 100 nm;
immersing, together with a counter electrode, said
substrate in said colloidal suspension;
applying an electrical voltage between said substrate and
said counter electrode to obtain an electrophoretic deposition of
a compact film having nanoparticles of said at least one
material Px on said substrate;
drying said compact film;
mechanically consolidating said dried, compact film; and
conducting a thermal consolidation of said dried,
compact film at a temperature that does not exceed 0.7 times a
melting or decomposition temperature of the at least one
material Px having the lowest melting temperature of the at
least one material Px present,
wherein, after mechanical consolidation and thermal
consolidation, the density of the compact film is 80% of a
theoretical density of a solid substance.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Frey US 2004/0259713 A1 Dec. 23, 2004
Lee et al. (“Lee”) US 2011/0100532 A1 May 5, 2011
Ahn et al. (“Ahn”) US 2011/0240112 A1 Oct. 6, 2011
Joung et al. (“Joung”) US 2012/0211365 A1 Aug. 23, 2012
Appeal 2018-008169
Application 14/355,148

3
REJECTION
The Examiner maintains the rejection under 35 U.S.C. § 103 of (1)
claims 16–24, 26–28, and 37 over Joung in view of Lee, as evidenced by
Frey; and (2) claims 29 and 31 over Joung and Lee, further in view of Ahn.
Final Act. 3–7. The Examiner provisionally rejects claims 16–19, 21, 26,
27, 29, and 31 on the ground of non-statutory double patenting over (a)
claims 18–24, 27, 29, and 38 of co-pending Application No. 14/355,182
(now U.S. Patent 9,660,252), and (b) claims 15, 16, 24–29, and 32 of co-
pending Application No. 14/355,179 (now U.S. Patent 10,340,548).
OPINION
Rejection of claims 16–24, 26–28, and 37 as obvious over Joung in
view of Lee, as evidenced by Frey
Appellant argues claims 16–24, 26–28, and 37 as a group. Br. 5–10.
We select the sole independent claim, claim 16, as representative of the
group. Claims 17–24, 26–28, and 37 will stand or fall with claim 16.
37 C.F.R. § 41.37(c)(1)(iv).
With respect to claim 16, the Examiner finds that Joung discloses a
method of depositing a layer of nanoparticles on a substrate, the method
comprising the steps of (1) providing a suspension containing SiO2 and/or
TiO2 nanoparticles having a size range of 1 to 100 nm; (2) immersing
electrodes in the suspension; (3) electrophoretically depositing nanoparticles
on one of the electrode by applying a voltage between the electrodes; (4)
drying the depositing film on the electrode; and (5) heating the dried film on
the electrode at a temperature of 550°C. Final Act. 3. The Examiner cites to
Frey as evidence that the melting point of TiO2 is 1840°C. Id. The
Appeal 2018-008169
Application 14/355,148

4
Examiner finds that Joung’s heating temperature of 550°C does not exceed
0.7 x 1840°C (as required by claim 16). Id.
The Examiner interprets the “compact film” of claim 16 as “a dense
film/layer” or “a film/layer formed from electrophoretic deposition.” Id. at
10. The Examiner determines that Joung teaches forming a dense film by
electrophoretic deposition, thus Joung teaches forming a “compact film,” as
claimed in claim 16. Id.
The Examiner finds that Lee discloses a method of depositing
nanoparticles on a conductive substrate by electrophoretic deposition, then
applying a compression pressure to the deposited film. Id. at 3–4. The
Examiner finds that Joung does not teach mechanically consolidating the
dried film, but that Lee discloses the formed layer can be compressed to
increase the linkage between the particles within the formed layer. Id. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to use the method of Joung and
compress the formed layer after electrophoretic deposition as suggested by
Lee in order to increase the linkage between particles within the formed
layer. Id. at 4. The Examiner finds that the method of Joung combined with
Lee’s compression comprises substantially the same steps as the claimed
method, thus a skilled artisan would have expected substantially similar film
properties, such as high density/compactness or low porosity. Id.
Appellant contends that the Examiner’s interpretation of “compact
film” is unreasonable in light of the specification, pointing to the Examiner’s
statement that “the claim [16] does not specifically define ‘a compact film’
or require a certain porosity for the formed film.” Br. 6–7 (quoting Final
Appeal 2018-008169
Application 14/355,148

5
Act. 10). Appellant identifies paragraph 53 of the published version of the
Application4 as defining “compact film”:
A compact deposit is a deposit without any cavities or cracks.
On the other hand, it does have porosity in a ratio expressed as
a percentage and calculated as follows:
Porosity[%]=[(density of the solid-state material–real
density)/real density] x 100
knowing that the “real density” is the density measured on the
deposited film and the density of the solid-state material is the
solid density of the deposited material, ignoring the presence of
particles that create porosity when stacked.
Br. 10. Appellant argues that the importance of a compact film deposition is
articulated throughout the specification, quoting paragraph 55 as an
example:
Deposition is preferably done from very stable colloidal
suspensions so as to obtain a deposit with a perfectly uniform
thickness with no roughness, few defects and as compact as
possible after the electrophoretic deposition process. This
minimizes the formation of pores, cavities and clusters that
hinder consolidation of the deposit. The stability of
suspensions depends on the size of the particles and the nature
of the solvent used and the stabilizer if a stabilizer was used to
stabilize the colloidal suspension.
Br. 7.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted

4 Appellant cites to US Pat. Pub. No. 2014/0335085 A1, the published
version of Application 14/355,148. Br. 7. For consistency, we follow
Appellant’s practice.
Appeal 2018-008169
Application 14/355,148

6
by one of ordinary skill in the art at the time of the invention. Id.; see also
In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997) (holding that during
prosecution claim terms are given “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.”).
Appellant defines “compact deposit”5 in the Specification: requiring
no cavities or cracks and a specific porosity. Spec. ¶ 53. The Examiner’s
construction of the term as merely “a dense film” or “a film/layer formed
from electrophoretic deposition” is overly broad under these circumstances.
See Final Act. 10. The broadest reasonable interpretation of “compact film”
in claim 16 is a dense film having no cavities or cracks and porosity in a
ratio expressed as a percentage and calculated as follows:
Porosity[%]=[(density of the solid-state material–real
density)/real density] x 100
knowing that the ‘real density’ is the density measured on the deposited film
and the density of the solid-state material is the solid density of the deposited
material, ignoring the presence of particles that create porosity when
stacked. See Spec. ¶ 53.
The Patent and Trademark Office bears the burden of establishing a
case of prima facie obviousness. In re Bell, 991 F.2d 781, 783 (Fed. Cir.
1993) (citing In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Given the
overly broad construction of “compact film,” upon which the rejection is
based, the Examiner fails to establish that the combined references teach all

5 “Compact deposit” and “compact film” are used interchangeably in the
Specification. See Spec. Abstract, ¶¶ 5, 7, 23, 31, 46, 53, and 55.
Appeal 2018-008169
Application 14/355,148

7
of the claimed limitations. The Examiner’s unsupported assertion that the
steps are substantially the same, thus the results would be substantially the
same, is inadequate without further support or explanation. See Fine, 837
F.2d at 1074. The rejection lacks specific finding regarding whether the
references teach “compact film” as correctly construed in light of the
Specification. Therefore, we reverse the rejection of claim 16 over Joung in
view of Lee, as evidenced by Frey. We likewise reverse the rejection of
dependent claims 17–24, 26–28, and 37 for the same reason.
Rejection of claims 29 and 31 as obvious over Joung in view of Lee
and Ahn
Claims 29 and 31 depend from claim 16. Br. 17–18. Because the
rejection of claim 16 is reversed, we also reverse the rejection of claims 29
and 31 as obvious.
Double patenting rejections
The Examiner rejected claims 16–19, 21, 26, 27, 29, and 31
(provisionally) on the ground of non-statutory double patenting over (a)
claims 18–24, 27, 29, and 38 of co-pending Application No. 14/355,182
(issued May 23, 2017 as US 9,660,252 B2), and (b) claims 15, 16, 24–29,
and 32 of co-pending Application No. 14/355,179 (issued July 2, 2019 as
US 10,340,548 B2). When the co-ending applications issued as patents, the
provisional rejection became an actual double patenting rejection.
Appellant does not address the double patenting rejection in the
Appeal Brief. See Br. generally. In addition, we do not find a terminal
Appeal 2018-008169
Application 14/355,148

8
disclaimer related to either patent in the file history.6 Under these
circumstances, we summarily affirm the double patenting rejection.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
16–24, 26–
28, 37
103(a) Joung, Lee, Frey 16–24, 26–
28, 37
29, 31 103(a) Joung, Lee, Ahn 29, 31
16–19, 21,
26, 27, 29,
31
Obviousness-
type Double
Patenting
16–19, 21,
26, 27, 29,
31

Overall
Outcome
16–19, 21,
26, 27, 29,
31
20, 22–24,
28
AFFIRMED IN PART

6 The submission of a terminal disclaimer in compliance with 37 C.F.R.
§ 1.321(b) to overcome a double patenting rejection ensures that a patent
owner with multiple patents claiming obvious variations of one invention
retains all those patents or sells them as a group. In re Van Ornum, 686 F.2d
at 937, 944–45 (CCPA 1982).