Lawrence Livermore National Security, LLC

Patent Trials and Appeals Board

Mar 12, 2021

2020002195 (P.T.A.B. Mar. 12, 2021)

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.
15/441,146 02/23/2017 Anna Hiszpanski LLNLP165/IL-13111 1079
78980 7590 03/12/2021
LLNL/Zilka-Kotab
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
EXAMINER
MATZEK, MATTHEW D
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
03/12/2021 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):
llnl-docket@llnl.gov
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANNA HISZPANSKI, THOMAS YONG-JIN HAN,
CARLA LIM WATSON, and TIMOTHY DEXTER YEE

Appeal 2020-002195
Application 15/441,146
Technology Center 1700
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–20 and 27–36. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Lawrence
Livermore National Security, LLC. Appeal Br. 2.
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Application 15/441,146
2
Appellant’s invention is directed to metal nanowire meshes (Claim
17). The nanowire meshes may be used in transparent conductive coatings
(Spec. ¶ 2).
Claim 17 is representative of the subject matter on appeal:
17. A metal nanowire mesh, comprising:
first metal wires oriented in approximately straight lines; and
second metal wires on the first metal wires, the second metal
wires being oriented in approximately straight lines oriented at
an angle from greater than 0 degrees to 90 degrees from a mean
direction of the lines of the first metal wires,
wherein an average diameter of at least one of the first and
second metal wires is in a range of about 8 to about 50
nanometers.
Appellant appeals the following rejections:
1. Claims 17–19 and 27–36 are rejected under 35 U.S.C. § 103 as
unpatentable over Dai et al. (US 2009/0052029 A1; Feb. 26,
2009) (hereinafter “Dai”) in view of Jiao et al. (US
2009/0142558 A1; June 4, 2009) (hereinafter “Jiao”).
2. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Dai in view of Jiao and Hu (Metal nanogrids, nanowires,
and nanofibers for transparent electrodes, 36 MRS Bulletin
760–765 (2011)) (hereinafter “Hu”).
3. Claim 36 is rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Appellant argues the following nine groups of claims with regard to the
§103 rejections: (1) Claim 17; (2) Claim 18; (3) Claim 19; (4) Claims 28 and
29; (5) Claim 30; (6) Claim 31; (7) Claim 35; (8) Claims 27, 32, 33, 34, and
36; and (9) Claim 20 (Appeal Br. 5–25). Because there is overlap in the
argument between the claim groupings, we will address the following claims
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as a group: (A) claims 17, 18, 28, 29, 27, 32, 33, 34, and 36; (B) claims 19
and 31; (C) claim 30; and (D) claims 20 and 35.
We separately address claim 36 in the context of the § 112(a) rejection.
FINDINGS OF FACT & ANALYSIS
(A) Claims 17, 18, 28, 29, 27, 32, 33, 34, and 36
The Examiner’s findings and conclusions regarding the rejection of
claims 17, 18, 28, 29, 27, 32, 33, 34, and 36 over Dai and Jiao are located on
pages 3–4 of the Final Action and pages 4–6 of the Answer. The Examiner
finds that Dai teaches the subject matter of independent claim 17, except for
the average diameter of the metal nanowires is between about 8 to about 50
nanometers (Final Act. 3–4). The Examiner finds that Dai teaches that
nanowires within the context of the publication include wires with diameters
of less than 50 nm (Ans. 4; Dai ¶ 36). The Examiner finds Jiao teaches a
nanowire network composed of nanowires having an average diameter from
30–50 nm (Final Act. 4). The Examiner concludes that it would have been
obvious to use nanowires with an average diameter of 30–50 nm in Dai’s
nanowire mesh in order to provide uniform diameter nanowires of a size less
than 50 nm as taught by Dai (Final Act. 4).
Appellant argues Dai teaches a nanowire diameter range from 100 to
150 nm, which is outside the range recited in the claim (Appeal Br. 7).
Appellant contends that using Jiao’s smaller nanowire diameters of 30 to 50
nm in Dai’s nanowire mesh polarizer would not permit the polarizer to
function as intended (Appeal Br. 5–6). Appellant contends that because the
modification of Dai by Jiao would frustrate Dai’s purpose as a polarizer,
there is no reason to combine the teachings of the references (Appeal Br. 7–
8). Appellant contends that Dai discloses 100 to 150 nm as the range for the
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nanowire diameters because that is the only range that works (Appeal Br. 7).
Appellant argues that there is no reasonable expectation of success in
combining Jiao’s average nanowire diameters with Dai’s nanowire mesh
(Appeal Br. 8). Appellant argues there is no reasonable expectation of
success in using Jiao’s smaller diameter nanowires for Dai’s nanowires
having a diameter from 100 to 150 nm (Appeal Br. 9). Appellant argues
Jiao’s process of growing the nanowire network is not compatible with Dai’s
process that uses a nanowire suspension (Appeal Br. 9). Appellant contends
that subjecting Jiao’s nanowire network to Dai’s shear force orientation
process would likely distort the network and increase the density of
nanowires in Dai (Appeal Br. 9).
Appellant’s arguments are undermined by Dai’s teaching that
nanowires in the context of Dai’s disclosure include diameters of less than
50 nm (Dai ¶ 36). Appellant incorrectly argues that Dai’s disclosure is
limited solely to nanowire diameters from 100 to 150 nm because that is the
only nanowire diameter range that will work (Appeal Br. 7). To the
contrary, Dai exemplifies using a silver nanowire with a width (diameter)
from 70 to 80 nm (Dai ¶ 127). Dai further discloses that “[t]ypically, better
optical properties (higher transmission and lower haze) can be achieved with
higher aspect ratio wires (i.e., longer lengths and thinner widths)” (¶ 127).
Dai discloses that thinner nanowires (i.e., smaller diameters) provide better
optical properties. Id. Dai is not limited solely to 100 to 150 nm nanowires
as argued by Appellant. With this understanding in mind, Appellant’s
arguments about lack of reasonable expectation of success, no reason to
combine, and frustration of Dai’s purpose are not persuasive.
Regarding claim 18, Appellant relies on similar unpersuasive
arguments made regarding claim 17 (Appeal Br. 10). Appellant additionally
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argues the Examiner fails to provide an explicit analysis of the claim 18
subject matter that explains why a skilled artisan would have modified Dai
to use 30 to 100 nanometer spacing between the nanowires (Appeal Br. 11).
Appellant argues that Dai teaches a fill factor (FF) relationship (FF=d/d1)
that is based on the spacing between nanowires (d) and the nanowire
diameter (d1) (Appeal Br. 11). Appellant contends that if the fill factor is
defined as being less than 1.0 (i.e., 0.1 to 0.6 as in Dai), then d will always
be less than d1 (Appeal Br. 11).
Contrary to Appellant’s arguments, the Examiner finds that the
combined teachings of Jiao and Dai would have resulted in a fill factor of
0.6 (Ans. 5). Specifically, the Examiner finds that when the 50 nm wire
diameter is substituted into the equation for a form factor of 0.6, the
resulting nanowire spacing is 30 nm (Ans. 5). As we noted above, the
Examiner correctly finds that Dai teaches the nanowires include diameters of
less than 50 nm. Appellant does not dispute the Examiner’s calculation
(Reply Br. 9). Rather, Appellant responds with the same unpersuasive
arguments made in the Appeal Brief (Reply Br. 9).
Regarding claims 28 and 29, Appellant relies on similar unpersuasive
arguments made regarding claim 17 (Appeal Br. 13–16). Claim 28 depends
from claim 17 and recites that the average diameter is in the range of about 8
to about 43 nm. Claim 29 depends from claim 17 and recites that the
average nanowire diameter in the range of about 8 to about 40 nm.
Appellant argues Dai’s polarizer would not function by using Jiao’s smaller
diameter nanowires (Appeal Br. 13). Appellant’s argument is premised on
Dai’s nanowire diameter being limited to 100 and 150 nm (Appeal Br. 14).
This argument is not persuasive for the reasons given above in our
discussion of claim 17. As noted above with our discussion of claim 17,
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Jiao describes average diameter ranges that overlap with ranges recited in
claims 28 and 29. Moreover, Dai teaches that nanowire diameters may be
less than 50 nm (Dai ¶ 36). The Examiner finds that the nanowire diameters
would have been optimized based on the teachings of Dai and Jiao to
diameters within the range of 30 to 40 nm (Ans. 6). Appellant does not
respond specifically to this the determination by the Examiner (Reply Br.
10). We find Appellant’s arguments do not show reversible error in the
Examiner’s rejection of claims 28 and 29.
Regarding claims 27, 32, 33, 34, and 36, Appellant relies on
arguments made regarding claim 17 (Appeal Br. 21). We find those
arguments unpersuasive as discussed above with respect to claim 17.
We affirm the Examiner’s § 103 rejection of claims 17, 18, 28, 29, 27,
32, 33, 34, and 36 over Dai and Jiao.

Claim 30
Claim 30 depends from claim 17 and recites that “the metal nanowire
mesh is a mask for making a pattern on a substrate.”
The Examiner finds that Dai’s nanowire mesh as modified by Jiao
would have been capable of use as a mask for making a pattern on a
substrate (Final Act. 4). The Examiner explains that Dai forms a network
mesh of fibers that cover an underlying substrate in the same way a pattern
masks an underlying substrate (Final Act. 4).
Appellant argues Dai and Jiao do not teach using the nanowire mesh
as a mask (Appeal Br. 15). Appellant argues that Dai teaches forming a
conductive network on an optically clear substrate, so the modification
proposed by the Examiner would involve removing the nanowire mesh from
the substrate (Appeal Br. 18). Appellant contends the removal of the mesh
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from the substrate would frustrate Dai’s purpose (Appeal Br. 18). Appellant
argues a person skilled in the art would not modify Dai’s wire-grid to be
used as a mask, since without the nanowires, the film does not have any
polarizing ability (Appeal Br. 18).
Appellant has not shown any structural difference between the
claimed nanowire mesh and the nanowire mesh of Dai as modified by Jiao.
Even adhering the nanowire mesh to a substrate in Dai would not prevent the
nanowire mesh from being used as a mask. Dai’s Figure 2 shows light 60
propagating through the substrate 44, where a portion of the light is blocked
by the polarizer (Dai ¶¶ 44, 45). In other words, we find the Examiner is
correct that Dai’s nanowire mesh as modified by Jiao would have been
capable of use as a mask. See, In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (anticipation rejection affirmed based on the Board’s factual
finding that the reference dispenser (a spout disclosed as useful for purposes
such as dispensing oil from an oil can) would be capable of dispensing
popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for
dispensing popcorn in a specified manner)).
We affirm the § 103 rejection of claim 30 over Dai and Jiao.

Claims 20 and 35
Claim 20 is rejected under § 103 over Dai, Jiao, and Hu. Claim 20
depends from claim 17 and recites “wherein the first metal wires have at
least one difference from the second metal wires, the difference being
selected from a group consisting of: composition, average diameter, and
average spacing between adjacent wires.” The Examiner finds that Hu
teaches silver and copper nanowire grids having a different distance between
vertical and horizontal nanowires in the grid as shown in Hu’s Figure 1a
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(Final Act. 4–5). The Examiner concludes that it would have been obvious
to align the nanowires of Dai so that the distance separating parallel
nanowires in one set of nanowires differs for the nanowire spacing in the
other set as a matter of design choice as shown in Hu (Final Act. 5).
Claim 35 is rejected under § 103 over Dai and Jiao. Claim 35
depends from claim 34 and recites “wherein an average spacing between the
first metal wires is different than an average spacing between the second
metal wires.” The Examiner finds that Dai teaches in paragraph 51 that
uniformity in nanowire spacing is preferred, but not required (Ans. 7). The
Examiner finds that Dai teaches that nanowire spacing may vary between
first and second sets of nanowires (Ans. 7).
Appellant argues that Dai fails to teach a difference in spacing
between the first wires and the spacing between the second wires as recited
in claim 35 (Appeal Br. 19-20). Contrary to Appellant’s argument, Dai
teaches that uniformity in spacing between the nanowires is preferred but it
is not necessary to form the structure (¶ 51). Stated differently, Dai teaches
a non-preferred embodiment where there are differences in spacing between
nanowires. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining that a
prior art reference’s disclosure must be considered for all that it teaches,
including “the inferences which one skilled in the art would reasonably be
expected to draw therefrom”).
The Examiner cited Hu in the rejection of claim 20 for Hu’s
disclosure in Figure 1a that the spacing between the first and second set of
nanowires may be different (Final Act. 4–5). Appellant argues the Examiner
improperly relies on design choice as a reason for modifying the spacing
between nanowires in Dai’s mesh (Appeal Br. 23). Appellant argues that the
Board in Ex parte Gunasekar, Appeal No. 2009-008345, held that to rely on
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design choice an Examiner must present a convincing line of reasoning as to
why one of ordinary skill in the art would have found the claimed feature
obvious (Appeal Br. 23). While we generally agree that a well-reasoned
basis for the conclusion that the proposed modification is an obvious design
choice is necessary, we note that we are not bound by the holding in the non-
precedential Gunsekar decision. Nevertheless, we find that the Examiner
has provided a line of reasoning as to why Hu would have suggested
modifying Dai’s nanowire mesh to have different spacing between the first
and second set of nanowires (Ans. 8). The Examiner finds that Hu teaches
two factors that must be considered when making nanowire grids: (1) the
diameter or thickness of the nanowire must be a subwavelength to provide
sufficient transparency and (2) the period of the mesh (distance between
adjacent nanowires) is submicron to ensure uniform current across the active
electrode layer (Ans. 8). We understand the Examiner to find that a person
of ordinary skill would have considered these parameters in determining the
spacing between nanowires in each set. The Examiner further finds that
Hu’s Figure 1a shows a different nanowire spacing between the first and
second set of fibers (Ans. 8). Appellant does not respond to these findings
or this reasoning (Reply Br. 10–11).
On this record, we affirm the Examiner’s § 103 rejection of claim 20
over Dai, Jiao, and Hu and the § 103 rejection of claim 35 over Dai and Jiao.

Appeal 2020-002195
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Claims 19 and 31
Claim 19 depends from claim 17 and recites “wherein an average
spacing between the first metal wires varies by less than 20% along lengths
thereof.”
The Examiner finds that Dai teaches that the nanowires are typically
straight (preferably deviate less than 5 degrees) and the spacing between
adjacent nanowires is preferably uniform (Ans. 5). The Examiner concludes
that “it would have been obvious to have the average spacing between a first
set of nanowires vary by less than 20% because Dai teaches a preference in
minimizing spacing variation (i.e., run in parallel) through the use of straight
nanowires that have a uniform distance between them” (Ans. 6).
Appellant argues that neither Dai nor Jiao teaches a variation of less
than 20% along lengths thereof (Appeal Br. 12; Reply Br. 6). We agree.
The Examiner has not established that Dai or Jiao teaches or would have
suggested a less than 20% variation in the spacing between nanowires. The
Examiner appears to rely on the parallel arrangement to teach the variation
recited in claim 19. However, just because two lines are ideally parallel
does not suggest a less than 20% variation along the length of the fiber. The
Examiner has not explained how Dai’s teaching to keep the wire spacing
below 10 or 5 degrees of deviation equates to a less than 20% variation in
the spacing.
Claim 31 depends from claim 17 and recites “wherein the first metal
wires extend along an entire length of the metal nanowire mesh.”
The Examiner finds that because Dai teaches that the mesh is
electrically conductive, that means that nanowires must extend along the
entire length of the metal nanowire mesh in order to provide electrical
conductivity (Ans. 7).
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Appellant persuasively argues that interconnected mesh may be
electrically conductivity via the joints in the nanofiber mesh (Appeal Br. 19).
We agree in that the electrical conductivity alone is an insufficient basis to
conclude that each wire in the mesh extends along the entire length metal
mesh. Rather, the interconnected mesh may provide the connections
required to support electrical conductivity.
On this record, we reverse the Examiner’s § 103 of claims 19 and 31
over Dai and Jiao.

Claim 36 35 U.S.C. § 112(a), Written Description
The Examiner finds that the Specification fails to provide adequate
support for coupling of the metal wires at their intersection (Final Act. 3).
The Examiner finds the verb “couple” is defined as connecting or joining
(Ans. 8). The Examiner finds that first and second metal wires in
Appellant’s Figures 4A and 4B show two sets of wires that cross each other,
but there is no support for two sets of wires being located in the same plane,
which would be required in order to connect the wire sets shown in the
Figures (Ans. 8).
Appellant argues that Figures 4A and 4B show interconnected first
and second sets of wires (Appeal Br. 27). Appellant contends the nanowire
mesh in Figures 4A and 4B are formed by sintering the metal nanowires
(Reply Br. 4). Appellant argues that sintering is defined as “to cause to
become a coherent mass by heating without melting” (Reply Br. 4).
Appellant argues that sintering would have resulted in a forming a nanowires
coupled together as the intersections (Reply Br. 4–5).
To satisfy the written description requirement, an applicant must
convey with reasonable clarity to those skilled in the art that, as of the filing
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date sought, he or she was in possession of the invention, and that the
invention, in that context, is whatever is now claimed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
In the present appeal, the Specification describes Figures 4A and 4B
as being formed by sintering the metal lines to form the nanowire mesh
(Spec. ¶¶ 57, 70). We find that sintering of the formed metal lines would
have resulted in the bonding of the two sets of metal lines at their
intersection points. Appellant has shown possession of claim 36’s subject
matter.
We reverse the Examiner’s § 112(a) written description rejection.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–19, 27–36 103 Dai, Jiao 17, 18,
27-30,
32–36
19, 31
20 103 Dai, Jiao, Hu 20
36 112(a) Written
Description
36
Overall
Outcome
17, 18,
20, 27–
30, 32–
36
19, 31

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART