SERRE, Pauline et al.

Patent Trials and Appeals Board

Dec 30, 2019

14950639 - (D) (P.T.A.B. Dec. 30, 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.
14/950,639 11/24/2015 Pauline SERRE 463511US41X 1049
22850 7590 12/30/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAULINE SERRE, THIERRY BARON, and CELINE TERNON
____________________

Appeal 2019-000444
Application 14/950,639
Technology Center 1700
____________________

Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
November 30, 2017 decision finally rejecting claims 1–3 and 6–23 (“Final
Act.”). We have jurisdiction over the appeal 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 Commissariat a L’Energie Atomique
et aux Energies Alternatives, CNRS Centre National de la Recherche
Scientifique, and Institut Polytechnique de Grenoble, as the real parties in
interest (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method for producing a network of
nanostructures from at least one semiconductor material, comprising a step
of forming nanostructures on the surface of a substrate, at least a part of the
nanostructures having areas of contact between each other (Abstract). After
forming the nanostructures, the following steps are performed in sequence:
(1) deoxidising the surface of the nanostructures and (2) reinforcing the bond
between the nanostructures at the contact areas (id.). Details of the claimed
process are set forth in representative claim 1, which is reproduced below
from the Claims Appendix to the Appeal Brief:
1. A method for producing a network of nanostructures
from at least one semiconductor material, comprising:
forming the nanostructures on a surface of a substrate,
with at least a part of the nanostructures having contact areas
between each other,
after said forming, reinforcing a bond between the
nanostructures at the contact areas, wherein said reinforcing
comprises a heat treatment in the form of annealing, and
after said forming and prior to said reinforcing,
deoxidising the surface of the nanostructures.

REJECTION
Claims 1–3 and 6–232 are rejected under 35 U.S.C. § 103 as
unpatentable over Reifenberg3 in view of Coffey.4

2 The statement of the rejection in the Final Action indicates that claim 5
was also part of the rejection (Final Act. 3). However, claim 5 has been
canceled in an amendment filed October 9, 2017.
3 Reifenberg et al., US 2014/0116491 A1, published May 1, 2014.
4 Coffey et al., US 2010/0112373 A1, published May 6, 2010.
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DISCUSSION
Because we decide this appeal on the basis of a limitation appearing in
independent claim 1, and hence part of each of the claims on appeal, we
focus our analysis on the rejection of claim 1. The Examiner’s findings are
set forth at pages 3–4 of the Final Action. The Examiner finds that
Reifenberg teaches each limitation of claim 1, except that it does not
specifically teach deoxidizing before the annealing step (Final Act. 3). The
Examiner further finds that Coffey teaches a nanowire structure in which an
activating process including etching, cleaning, and reducing can be
performed prior to a heating or annealing step (Final Act. 4, citing Coffey
¶¶ 233, 249). According to the Examiner, it would have been obvious to
have utilized a precleaning/reducing step to remove native oxides thereon
prior to annealing with the expectation of achieving an improved connection
between the wires at the contact points thereof (id.).
Appellant argues that Reifenberg does not teach “forming the
nanostructures on a surface of a substrate, with at least a part of the
nanostructures having contact areas between each other” (Appeal Br. 4).
Instead, according to Appellant, Reifenberg teaches the formation of bulk-size
nanostructured sold materials by sintering (id.). Appellant also disputes the
Examiner’s finding the Coffey teaches deoxidisation of the nanowire structure
followed by a reinforcing annealing step (Appeal Br. 5). The Examiner relies
on Coffey’s ¶ 233 as support for the finding that Coffey teaches activation of
the nanowires (Final Act. 4). This passage reads as follows:
In some embodiments, a process of the present invention
comprises activating a surface of a substrate. As used herein,
“activating” refers to treating a substrate prior to, or
concomitant with, disposing to enhance the quality of a
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deposition process (e.g., provide enhanced yield, a faster
deposition rate, a more controlled deposition process).
Activating can include, without limitation, cleaning, reducing,
oxidizing, functionalizing, derivatizing, polishing, roughening,
plasma treating, thermally treating, and combinations thereof.
In some embodiments, activating comprises removing a native
oxide layer from a surface of a conductive and/or
semiconductive substrate.
(Coffey ¶ 233, emphasis added). Thus, Appellant argues that Coffey does
not teach activation (deoxidization) of the nanostructures, as is called for by
the claim (Appeal Br. 6).
In response, the Examiner acknowledges that Coffey explicitly
teaches activating/deoxidizing the substrate prior to applying the
nanostructures (Ans. 3). However, the Examiner finds that Coffey also
suggests when forming multiple layers of nanostructures, performing an
activation step prior to the application of subsequent layers (id.). Thus,
according to the Examiner:
while Reifenberg[] teaches performing the removal of native
oxides after the annealing step, Reifenberg[] also teach[es]
forming this step in conjunction with the annealing step and
hence the combination of references teaches that it is known to
perform a native oxide removal step (deoxidizing step) before,
after and during an annealing step as these are all taught to be
ways to improve conductivity of the applied nanostructures.
(Ans. 3–4).
Having considered the arguments of both Appellant and the Examiner,
and the evidence of record, we determine that Appellant has demonstrated
reversible error in the rejection.
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As discussed by Appellant (Reply Br. 3)5, Coffey specifically defines
“pre-treating” as chemically or physically modifying a surface, and includes
reducing (i.e., deoxidizing) that surface (Coffey ¶ 267). Coffey also
describes “post-treating” its multilayer coating, to include annealing, and
states that post-treating can take place after deposition of a single layer,
multiple layers, or the entire coating (Coffey ¶ 301). Thus, as argued by
Appellant, nothing in Coffey suggests “activation” as a form of post-
treatment. That is, the evidence of record does not support a finding that
Coffey (or Reifenberg) teaches or suggests a deoxidizing step for the
nanostructures prior to the annealing step.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). In the absence of a proper prima facie case of obviousness, an
applicant who complies with the other statutory requirements is entitled to a
patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On the record before us, the
Examiner has not adequately shown that the limitation of “after said forming
and prior to said reinforcing, deoxidizing the surface of the nanostructures”
was taught or suggested by, or otherwise rendered obvious, over the cited
art. Accordingly, we reverse the rejection of claim 1. Because the

5 The pages of the Reply Brief are not numbered, but we refer to pages by
number.
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remaining claims on appeal depend from claim 1 and, therefore, contain this
same limitation, we also reverse the rejection of the remaining claims.

CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. §  References(s)/Basis Affirmed Reversed
1–3, 6–23 103 Reifenberg, Coffey 1–3, 6–23

REVERSED