Ex Parte EDD et al

Patent Trial and Appeal BoardJul 27, 2016

13692570 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/692,570 12/03/2012 42640 7590 Yudell Isidore PLLC 10601 RR2222, Ste. Rll 1 Austin, TX 78730 07/29/2016 FIRST NAMED INVENTOR ANDREW E. EDD 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 ATTORNEY DOCKET NO. CONFIRMATION NO. NCC.001016 4517 EXAMINER MCCLURE, CHRISTINA D ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 07/29/2016 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): Patents@yudellisidore.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW E. EDD and CHARLES C. MUNSON Appeal2015-001001 Application 13/692,570 Technology Center 1700 Before MICHAEL P. COLAIANNI, CHRISTOPHER L. OGDEN, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-11 and 21-23. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 We cite to the Specification ("Spec.") filed Dec. 3, 2012; Final Office Action ("Final Act.") mailed Apr. 23, 2014; Examiner's Answer ("Ans."); and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br."). 2 Appellants identify N ovacentrix Corporation as the real party in interest. App. Br. 3. Appeal2015-001001 Application 13/692,570 BACKGROUND The subject matter involved in this appeal relates to methods for forming thin film conductors on a substrate. Spec. 2. Particularly, Appellants disclose in their Specification that photonic curing of a thin film precursor material can lead to increased film porosity which, in tum, negatively impacts conductivity. Spec. 5. A "compressive stress is applied to the thin film material ... to cause the thin film material to densify," such that its electrical conductivity is increased. Id. Independent claims 1 and 21 illustrate the subject matter on appeal and are reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A method for forming a thin film conductor on a substrate, said method comprising: depositing a thin film precursor material onto a porous substrate; irradiating said thin film precursor material with a light pulse to transform said thin film precursor material to a thin film, wherein said thin film is more electrically conductive than said thin film precursor material; and applying compressive stress to said thin film and said porous substrate by a pair of pinch rollers to further increase said thin film's electrical conductivity, wherein said pinch rollers are driven at co= v/r, where co is an angular velocity of said pinch rollers, r is a radius of said pinch rollers, and v is a moving speed of said thin film. 21. A method for forming a thin film conductor on a substrate, said method comprising: depositing a thin film precursor material onto a porous substrate; irradiating said thin film precursor material with a light pulse to transform said thin film precursor material to a thin 2 Appeal2015-001001 Application 13/692,570 film, wherein said thin film is more electrically conductive than said thin film precursor material; and applying compressive stress to said thin film and said porous substrate to further increase said thin film's electrical conductivity, wherein said applying of compressive stress oscillates in magnitude with time. REJECTION The Examiner maintained the following grounds of rejection: 3 I. Claims 1-5 and 8-11 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kowalski4 and Trafton.5 II. Claim 6 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kowalski, Trafton and Iijima. 6 III. Claim 7 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kowalski, Trafton and Choy.7 IV. Claims 21and23 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kowalski and Keddie. 8 V. Claim 22 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kowalski, Keddie and Choy. 3 Ans. 2-9. 4 US 2008/0008822 Al, published Jan. 10, 2008 ("Kowalski"). 5 US 5,982,477, issued Nov. 9, 1999 ("Trafton"). 6 US 2001/0008717 Al, published Jul. 19, 2001 ("Iijima"). 7 Choy, K.L., Chemical vapour deposition of coatings, 48 Progress in Materials Science, 57-170 (2003). 8 US 4,078,924, issued Mar. 14, 1978 ("Keddie"). 3 Appeal2015-001001 Application 13/692,570 DISCUSSION I With regard to Rejection I, Appellants argue that the Examiner reversibly erred in finding that it would have been obvious to one skilled in the art to use Trafton's pinch roller assembly in Kowalski's electronic ink printing process. App. Br. 5-7; Reply Br. 2. We agree. The Examiner found that Kowalski teaches depositing an electronic ink onto a substrate, and curing the deposited ink with UV light and/or compression. Ans. 2 (citing Kowalski ,-i,-i 118-119). To that end, Kowalski discloses use of a photoactive reagent, such as a monomer or low molecular weight polymer, which polymerizes under exposure to UV light. Kowalski ,-i 11 7. "The temperature or the pressure or both combined will usually be sufficient to cure the electronic ink .... " Id. at ,-i 118. Kowalski identifies "stamping and roll pressing" as suitable techniques for achieving the desired compression for curing, id., but, as the Examiner correctly acknowledged, Ans. 3, Kowalski does not teach using pinch rollers. 9 The Examiner also found that Trafton "teach[ es] using a pair of pinch rollers ... to move a film through an apparatus." Ans. 3 (citing Trafton col. 2, 11. 17-24). Trafton describes a technique in which upstream and 9 Given that Kowalski does not disclose pinch rollers, the Examiner's observation that Kowalski does not teach "using pinch rollers under the equation in instant claim l" also is correct. It is worth noting, however, that the recited formula, co = v/r, represents the angular velocity (co) of any rotating cylinder relative to its radius (r) and tangential velocity (v). Appellants' requirement that (v) in the equation also reflects the moving speed of the film merely requires that the film and the roller surfaces move together. 4 Appeal2015-001001 Application 13/692,570 downstream pairs of rollers are operated at respectively different tangential velocities to maintain tension in the moving film. Id. Particularly, Trafton provides each roller pair with a compliant elastomeric surface, such that a force on the compliant roller in the nip region through which the film passes causes a deformation of the roller and, consequently, a change in the roller's tangential velocity due to its reduced radius. Trafton col. 6, 11. 40-65. In that manner, the relative elasticity of the roller pairs are selected such that the downstream rollers operate at a greater tangential velocity than the upstream rollers, whereby the moving film is maintained under linear tension between the roller pairs. Id. at col. 7, 1. 65 to col. 8, 1. 5. We are persuaded by Appellants' argument, App. Br. 5-7; Reply Br. 2, that the Examiner has not identified substantial evidence to support a finding that one skilled in the art would have employed Trafton's compliant pinch rollers to achieve Kowalski's compression of a conductive film. Neither are we presented with persuasive evidence that Trafton's rollers, if so-employed, would have been expected to apply significant compression to Kowalski's conductive film, much less a sufficient compression to achieve the stated objective of curing the film. There can be no dispute that pinch rollers for compressively rolling films were known prior to Appellants' invention. However, the Examiner's particular finding that Trafton' s elastic rollers would have been deemed suitable for Kowalski's rolling process lacks both an articulated reason for the combination and a reasonable expectation of success. Accordingly, on this record, we are constrained not to sustain Rejection I. 5 Appeal2015-001001 Application 13/692,570 II, III Because Rejections II and III are directed solely to claims which depend from claim 1, and are principally based on the same findings underlying Rejection I of that claim, we do not sustain either Rejection II or III for the reasons set forth above in connection with Rejection I. IV, V With regard to Rejection IV, Appellants persuasively argue that the Examiner erred in finding that Keddie teaches applying a compressive force that "oscillates in magnitude with time" as is recited in claim 21. App. Br. 8; Reply Br. Particularly, the Examiner relied on column 6, lines 4-11, of Keddie in finding that Keddie teaches use of a smoothing element that is "oscillated at right angles to the direction of the movement of the surface" of a film. Ans. 7-8. However, as Keddie plainly depicts in the corresponding Figure 2, the above-mentioned oscillation occurs parallel to the film surface, and not normal to the film surface as would be required to achieve Appellants' claimed variation in compressive stress applied to the film. Because the Examiner's obviousness determinations involving Keddie are premised on the foregoing erroneous finding of fact, we also do not sustain either of Rejections IV and V. DECISION The Examiner's decision rejecting claims 1-11and21-23 is reversed. REVERSED 6