KING ABDULLAH UNIVERSITY OF SCIENCE AND TECHNOLOGY

Patent Trials and Appeals Board

May 28, 2020

2019004104 (P.T.A.B. May. 28, 2020)

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.
14/439,655 04/29/2015 Basma El Zein 0338-068-2/2012-054-03 6648
144099 7590 05/28/2020
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
EXAMINER
GOLDEN, ANDREW J
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
05/28/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BASMA EL ZEIN, YINGBANG YAO, ELHADJE DOGHECHE,
SAMIR BOULFRAD, and GHASSAN JABBOUR
____________

Appeal 2019-004104
Application 14/439,655
Technology Center 1700
____________

Before JEFFREY T. SMITH, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14–34, 43, and 44. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 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 the King
Abdullah University of Science and Technology. Appeal Br. 2.
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Application 14/439,655

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The invention relates to a method for producing nanometer sized
materials through the use of a seed layer grown in the presence of oxygen at
a pressure of 10 mTorr. Spec. 2. Claim 14 illustrates the subject matter on
appeal and is reproduced below:
14. A method for producing nanometer sized materials
comprising:

exposing a target to a laser source to remove material
from the target and deposit the removed material onto a surface
of a substrate to grow a thin film, as a seed layer, in the
presence of oxygen at a pressure of 10 mTorr; and

exposing the target to the laser source to remove further
material from the target and deposit the further removed
material onto the seed layer to grow nanometer sized materials
at a pressure of between 2.5 Torr and 10 Torr in a vacuum
chamber.

The Examiner maintains the following rejections from the Final
Office Action dated June 15, 2018 (Final Act. 7–19; Ans. 3–15):
I. Claims 14–17, 21, 22, 24–30, 32, and 33 rejected under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Premkumar (T.
Premkumar et al., “Optical and Field-Emission Properties of ZnO
Nanostructures Deposited Using High-Pressure Pulsed Laser Deposition,”
ACS Applied Materials and Interfaces, 2 (10) 2863–69 (2010)), Li (Chun Li
et al., “Effect of Seed Layer on Structural Properties of ZnO Nanorod Arrays
Grown by Vapor-Phase Transport,” J. Phys. Chem., 112 (4) 990–95 (2008)),
and Sun (X. W. Sun and H. S. Kwok, “Optical Properties of Epitaxially
Grown Zinc Oxide Films on Sapphire by Pulsed Laser Deposition,” J. of
Applied Physics, 86 (1) 408–11 (1999)).

II. Claims 18–20 and 23 rejected under pre-AIA 35 U.S.C. §103(a)
as unpatentable over Premkumar, Li, Sun, and Yi (US 2008/0107876 A1,
published May 8, 2008).

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Application 14/439,655

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III. Claims 31 and 34 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Premkumar, Li, Sun, and Liu (US 2008/0292808 A1,
published November 27, 2008).

IV. Claims 43 and 44 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Premkumar, Li, Sun, and Reddy (US 2008/0110494 A1,
published May 15, 2008).

OPINION
After review of the respective positions that Appellant presents in the
Appeal and Reply Briefs and the Examiner presents in the Final Office
Action and the Answer, we REVERSE the Examiner’s prior art rejection of
claims 14–34, 43, and 44 under 35 U.S.C. § 103(a) for the reasons the
Appellant presents. We add the following.
Independent claim 142 is directed to a method for producing
nanometer sized materials by exposing a target to a laser source to remove
material from the target and depositing the removed material onto a surface
of a substrate to grow a thin film as a seed layer in the presence of oxygen at
a pressure of 10 mTorr; and exposing the target to the laser source to remove
further material from the target and depositing the further removed material
onto the seed layer to grow nanometer sized materials at a pressure of
between 2.5 Torr and 10 Torr in a vacuum chamber.
The Examiner finds that Premkumar teaches a method of producing
nanometer sized materials by exposing a target to a laser source to remove
material from the target and depositing the removed material onto a surface
of a substrate at an oxygen pressure of 7 Torr in a vacuum chamber. Final
Act. 8–9; Premkumar 2863–64. The Examiner finds that Premkumar

2 We limit our discussion to independent claim 14.
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discloses that, during the laser ablation process at an oxygen pressure of 7
Torr, nanoparticles are formed in the gas phase that act as nucleation sites on
the substrate during the growth of nanorods. Final Act. 8–9; Premkumar
2865. The Examiner finds that Premkumar’s formation of nanoparticles as
nucleation sites is tantamount to forming a seed layer. Final Act. 8–9.
Appellant does not dispute this finding. Appeal Br. 5. The Examiner finds
that Premkumar does not teach forming a distinct seed layer at a pressure of
10 mTorr, which is different from the growth pressure of the nanometer
sized materials. Final Act. 9. The Examiner finds that Li teaches a method
of producing nanomaterials by first forming a seed layer substrate using a
low pressure pulsed laser deposition (PLD) method at an oxygen pressure of
0.02 Pa (~0.15 mTorr) followed by a step of forming the nanomaterials.
Final Act. 9; Li 991. The Examiner determines that it would have been
obvious to one having ordinary skill in the art to modify Premkumar’s
method to include a distinct step of forming a seed layer at a low oxygen
pressure in view of Li’s teachings that the properties of the formed seed
layer lead to well-aligned nanorod arrays with uniform diameters and narrow
density distributions. Final Act. 10; Li 664. The Examiner relies on Sun to
teach that it is known to grow a ZnO film layer using low pressure PLD at
an oxygen pressure of 10 mTorr. Final Act. 10; Sun 408.
Appellant argues that Premkumar does not disclose or suggest
growing a distinct thin film as a seed layer using a laser source in the
presence of oxygen at a pressure of 10 mTorr. Appeal Br. 3. Appellant
contends that Premkumar instead teaches forming the seed layer film and the
nanorods in a continuous deposition process under the same oxygen pressure
of approximately 7 Torr. Id. at 4–5. That is, Appellant contends that
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Premkumar does not teach or suggests forming a distinct seed layer as
claimed. Appellant further asserts that absent the formation of a distinct
seed layer in Premkumar, there would be no reason for one skilled in the art
to modify Premkumar’s process in light of Li’s teachings to form a distinct
seed layer at a pressure different from the pressure at which the
nanomaterials are formed. Appeal Br. 8.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness. The Examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
While both the Examiner and the Appellant recognize that
Premkumar’s continuous process of producing nanomaterials forms a seed
layer during that process (Final Act. 8–9; Appeal Br. 5), the Examiner does
not provide an adequate technical explanation of why one skilled in the art
would have modified Premkumar’s continuous process of producing
nanomaterials under a single pressure into a two-step process that forms a
seed layer at one pressure and forms the nanomaterials at a different
pressure, as taught by Li. The Examiner does not explain adequately why
Li’s process would be suitable for making Premkumar’s nanomaterials.
Thus, the Examiner has not provided adequate reasoning with the requisite
rational underpinning explaining how one skilled in the art, absent
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impermissible hindsight, would arrive at the claimed invention from the
disclosures of the prior art.
Accordingly, we REVERSE the Examiner’s prior art rejections of
claims 14–34, 43, and 44 under 35 U.S.C. § 103(a) for the reasons the
Appellant presents and we give above.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
14–17, 21, 22,
24–30, 32, 33
103(a) Premkumar, Li,
Sun
14–17, 21, 22,
24–30, 32, 33
18–20, 23 103(a) Premkumar, Li,
Sun, Yi
18–20, 23
31, 34 103(a) Premkumar, Li,
Sun, Liu
31, 34
43, 44 103(a) Premkumar, Li,
Sun, Reddy
43, 44
Overall
Outcome
14–34, 43, 44

REVERSED