Ex Parte Pruneri et al

Patent Trials and Appeals Board

Apr 29, 2019

13322810 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/322,810 12/29/2011
26304 7590 05/01/2019
KATTEN MUCHIN ROSENMAN LLP
575 MADISON A VENUE
NEW YORK, NY 10022-2585
FIRST NAMED INVENTOR
Valerio Pruneri
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.
HERR24891(100700-00341) 5516
EXAMINER
GONZALEZ RAMOS, MA YLA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
nycuspto@kattenlaw.com
samson.helf gott@kattenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALERIO PRUNER! and DHRITI SUNDAR GHOSH 1
Appeal2018-007523
Application 13/322,810
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-14 and 16. We have jurisdiction
over the Appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as "FUNDACIO INSTITUT
DE CIENCIES FOTONIQUES." Br. 1.
Appeal2018-007523
Application 13/322,810
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A transparent electrode consisting of:
a dielectric substrate and a transparent ultra-thin metal
conductor with a thickness between 1 nm and 10nm; and
a metal grid on and in contact with the ultra-thin metal
conductor, the metal grid comprising openings,
wherein the ultra-thin metal conductor is located directly
on the surface of the substrate.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Okada et al.
Meier et al.
Matsui et al.
US 2005/0034755 Al
US 2009/0211627 Al
US 2009/0320910 Al
Feb. 17,2005
Aug.27,2009
Dec. 31, 2009
D. S. Ghosh et al., Widely transparent electrodes based on ultrathin
metals, 34:3 OPTICS LETTERS 325-27 (2009) ("Ghosh").
THE REJECTIONS
1. Claims 1-11, 13, and 16 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Ghosh in view of Okada.
2. Claim 12 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ghosh in view of Okada as applied to claims 1-11,
13, and 16 above, and further in view of Meier.
3. Claim 14 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ghosh in view of Okada as applied to claims 1-11,
13, and 16 above, and further in view of Matsui.
2
Appeal2018-007523
Application 13/322,810
ANALYSIS
For purposes of this Appeal, we address separately argued claims, and
the remaining claims stand or fall with the argued claims, consistent with
37 C.F.R. § 4I.37(c)(l)(iv) (2017). We thus consider claim 1 in this appeal.
Appeal Br. 11.
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner's findings and conclusion that the subject matter of
Appellants' claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner's rejections on appeal for the reasons set forth
in the Final Office Action and in the Answer, and affirm, with the following
emphasis.
Rejections 1-3
It is the Examiner's position that Ghosh teaches a transparent
electrode (metal-based transparent electrode) (p. 325, col. 1, 2nd i-f)
consisting of a dielectric substrate ( silica and/ or silicon substrate) and a
transparent ultra-thin metal conductor (UTMF) with a thickness between 1
nm and 10 nm (p. 325, col. 2 of Ghosh) wherein ultra-thin metal films i.e.,
UTMFs, with thicknesses of 2, 3.5, 5 and 10 nm are formed on silica and
silicon substrates (see also p. 325, col. 1, 2nd ,r, wherein metal films,
when sufficiently thin e.g.,