Ex Parte Bahnmuller et al

Patent Trial and Appeal BoardJul 14, 2015

12171513 (P.T.A.B. Jul. 14, 2015)

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. 12/171,513 07/11/2008 Stefan Bahnmuller 100717-736 WCG 3092 27386 7590 07/15/2015 GERSTENZANG, WILLIAM C. NORRIS MCLAUGHLIN & MARCUS, PA 875 THIRD AVE, 8TH FLOOR NEW YORK, NY 10022 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 07/15/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte STEFAN BAHNMULLER, STEFANIE EIDEN, STEPHAN MICHAEL MEIER, CHRISTIAN ETIENNE HENDRIKS, and ULRICH SCHUBERT ________________ Appeal 2013-008207 Application 12/171,513 Technology Center 1700 ________________ Before TERRY J. OWENS, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for fabricating electrically conductive structures. Claim 1 is illustrative: 1. Method for fabricating electrically conductive structures that have a dimension of not more than 25 µm in two dimensions, on an optically transparent substrate with moldable surface, which comprises i) mechanically and/or thermally creating channels on the surface of the optically transparent substrate, Appeal 2013-008207 Application 12/171,513 2 ii) applying an electrically conductive ink comprising an [sic] electrically conductive nanoparticles or a precursor compound for an electrically conductive material onto the channels, iii[)] filling the channels with said ink by capillary action, iv) converting the ink in the channels into conductive structures by introducing energy thereto. The References Chen (Chen ‘251) US 2002/0119251 A1 Aug. 29, 2002 Chen (Chen ‘450) US 6,887,450 B2 May 3, 2005 The Rejection Claims 1–10 stand rejected under 35 U.S.C. § 103 over Chen ‘251 in view of Chen ‘450. OPINION We affirm the rejection. The Appellants argue the claims as a group (Br. 3–8). We therefore limit our discussion to one claim, i.e., claim 1, which is the sole independent claim. Claims 2–10 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2011). Chen ‘251 forms fine, close-proximity metallic features on a substrate by “providing a stamp having a raised region; depositing catalytic particles on a selected area of the stamp, including the raised region thereof; providing a substrate; applying the stamp to the substrate, such that the raised region of the stamp causes a corresponding indented region in the substrate and at least some of the catalytic particles are transferred to a selected area of the substrate; and plating the selected area of the substrate” (¶ 9). “The catalytic particles 5 perform as activators for the plating” (¶ 93), Appeal 2013-008207 Application 12/171,513 3 and “the deposited metal 8 is restricted to the indented regions 7 of the surface of the substrate 6” (¶ 94). “The plating may be electroless plating, or may be performed by any other suitable method, for example immersion plating” (¶ 93). Chen ‘450 discloses a method “for the post-growth assembly and manipulation of nanotubes in a controlled fashion such that the resulting nanotubes are positioned in a specific pattern and have controlled lengths” (col. 3, ll. 25–29). Chen ‘450 1) introduces, into an end of covered micromold channels which can be 4.5 µm wide and 1.6 µm deep, drops of randomized nanotube-containing liquid which fills the channels by capillary action, 2) allows the liquid to evaporate, 3) carefully separates the cover from the micromold, and 4) harvests, from the channels, freestanding, directional nanotube strings which may find applications in nanoscale electronic circuits (col. 3, ll. 30–42; col. 4, l. 65 – col. 5, l. 17; col. 5, ll. 23– 25; col. 8, ll. 61–65). The Examiner states that “[t]he Chen ‘[450] reference is utilized to provide an alternative to filling channels with a conductive solution (i.e. using capillary action instead of immersion/electroless plating)” (Ans. 2), and argues that “it would have been obvious for one skilled in the art at the time the invention was made to have modified Chen et al. (2002/0119251) process to fill the indentation by a drop solution with capillary action as evidenced by Chen et al. (6,887,450) with the expectation of achieving similar success, i.e., filled channels/indentations with metal material” (Final Act. 4). Appeal 2013-008207 Application 12/171,513 4 The Appellants argue that the Examiner does not explain how Chen ‘251’s two-step stamping/plating process can be done by capillary action or how Chen ‘450’s parallel array of nanotubes transverse to the channel could lead to an electrically conductive structure (Br. 4–8). Those arguments do not indicate reversible error in the Examiner’s rationale for combining the references, i.e., to achieve similar success by using Chen ‘251’s stamp to form channels and then filling the channels with Chen 450’s electrically conductive nanotubes by capillary action instead of filling them with metal by Chen ‘251’s plating (Final Act. 4; Ans. 2). The Appellants assert that “[t]he Examiner has not explained how [Chen ‘251’s] plating can be accomplished by capillary action” (Br. 5) and that “the Examiner has not explained how [Chen ‘450’s] parallel array of nanotubes transverse to the channel could possibly lead to an electrically conductive structure” (Br. 6). The Examiner relies upon Chen ‘450 as suggesting electrically conductive nanotube deposition by capillary action as an alternative to Chen ‘251’s plating (Final Act. 3–4; Ans. 2–3). The Appellants’ assertions do not adequately address the substance of the Examiner’s rationale and indicate reversible error therein. Accordingly, we affirm the rejection. DECISION/ORDER The rejection of claims 1–10 under 35 U.S.C. § 103 over Chen ‘251 in view of Chen ‘450 is affirmed. It is ordered that the Examiner’s decision is affirmed. Appeal 2013-008207 Application 12/171,513 5 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED kmm