Ex Parte Trolier-McKinstry et al

Patent Trial and Appeal Board

Sep 19, 2012

11262524 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/262,524 10/28/2005 Susan Trolier-McKinstry PSU-017 8010
7590 09/19/2012
John A. Parrish
Suite 300
Two Bala Plaza
Bala Cynwyd, PA 19004
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
09/19/2012 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 SUSAN TROLIER-McKINSTRY,
CLIVE A. RANDALL, HAJIME NAGATA,
PASCAL G. PINCELOUP, JAMES J. BEESON,
DANIEL J. SKAMSER, MICHAEL S. RANDALL,
and AZIZUDDIN TAJUDDIN
__________

Appeal 2011-004826
Application 11/262,524
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004826
Application 11/262,524

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 2, 4-7, 15, 29, and 30, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to forming a dielectric, such as
barium titanate or a doped barium titanate, on a substrate by microcontact printing.
Claims 7 and 29, reproduced below, are illustrative.
7. A method of manufacture of a multilayer capacitor by
microcontact printing comprising,
applying a precursor solution of an electrode onto a micro
stamp having a predetermined pattern to form a coated micro stamp,
compressing the coated micro stamp onto a Ni foil substrate to
form a pattern of the precursor solution of the electrode on the
substrate,
heat treating the pattern of precursor solution of the electrode to
produce a crystallized layer of patterned electrode on the substrate,
applying a precursor solution of a dielectric material onto a
micro stamp having a predetermined pattern to form a dielectric
precursor material coated micro stamp,
compressing the dielectric precursor material coated micro
stamp onto the patterned electrode to form a pattern of the dielectric
precursor solution on the patterned electrode,
heat treating the pattern of precursor solution of the dielectric to
produce a crystallized layer of patterned dielectric on the patterned
electrode,
applying a precursor solution of an electrode onto a micro
stamp having a predetermined pattern to form a coated micro stamp,
Appeal 2011-004826
Application 11/262,524

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compressing the coated micro stamp onto the patterned
dielectric to form a multilayer monolith comprising a patterned
electrode precursor on the dielectric, and
heat treating the monolith to produce a multilayer capacitor.
29. A method of forming a microcontact printed layer comprising
barium titanate on a Ni foil substrate consisting essentially of
applying a barium titanate precursor solution onto a micro
stamp that has a predetermined pattern thereon to form a coated
micro stamp,
compressing the coated micro stamp onto a Ni foil substrate to
form a pattern of the precursor solution on the Ni foil substrate,
drying the pattern,
pyrolyzing the pattern and
firing the pattern to produce a micro contact printed layer of
stoichiometric barium titanate on the Ni foil substrate.
App. Br., Claims Appendix (emphasis added).1
The Appellants seek review of the following grounds of rejection:
(1) the rejection of claims 2 and 4-6 under 35 U.S.C. § 103(a) as
unpatentable over Aggarwal2 in view of Zou3, Schueller,4 Kagan,5 Hur,6 and
Talin7;
(2) the rejection of claims 7 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Aggarwal in view of Zou, Schueller, and Kagan;

1 Appeal Brief dated June 9, 2010.
2 US 2005/0239218 A1 published October 27, 2005.
3 US 2004/0175585 A1 published September 9, 2004.
4 US 2003/0047535 A1 published March 13, 2003.
5 US 2004/0163758 A1 published August 26, 2004.
6 US 2003/0133869 A1 published July 17, 2003.
7 US 2004/0151463 A1 published August 5, 2004.
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Application 11/262,524

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(3) the rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Aggarwal in view of Zou, Schueller, Kagan, and Hur; and
(4) the rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable
over Aggarwal in view of Zou, Schueller, Kagan, and Talin.
B. DISCUSSION
There is no dispute on this record that Aggarwal does not teach applying a
precursor solution of a dielectric material, such as barium titanate, on a micro
stamp and compressing the coated micro stamp onto a substrate to form a pattern
of the dielectric precursor solution on the substrate. See, e.g., Ans. 48; App. Br. 10.
Rather, Aggarwal deposits a dielectric material on a substrate using metal organic
chemical vapor deposition. Aggarwal, para. [0044]. However, the Examiner
finds:
Kagan et al. teach that micro contact printing can be used to
pattern a material (such as dielectric, metallic, ferroelectric,
piezoelectric, and superconducting) on a semiconducting substrate.
Schueller et al. teach a micro contact printing method (see abstract)
wherein a solution is applied to a micro stamp, and the stamp is
contacted with the substrate to form a layer ([0019] and [0020]).
Ans. 4-5.
The Appellants argue Schueller and Kagan are both directed to a method of
forming a patterned self-assembly monolayer on a substrate. The Appellants argue
the Examiner has failed to establish any equivalence between the self-assembling
monolayer inks of Schueller and Kagan and the barium titanate solution recited in
the claims on appeal. See, e.g., App. Br. 12-13.

8 Examiner’s Answer dated August 31, 2010.
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Application 11/262,524

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The Appellants’ argument is supported by the record. Significantly, the
Examiner has not directed us to any disclosure in the prior art of record describing
the use of microcontact printing to deposit a precursor solution of a dielectric
material on a substrate. In Kagan’s process, a stamp is coated with an organic
molecular species and brought into contact with a substrate, thereby transferring a
monolayer of molecules to the substrate surface. Kagan, para. [0074].
Subsequently, a thin film may be deposited on the substrate using a solution-based
process, such as spin-or dip-coating, to form a patterned thin film on the substrate.
Kagan, paras. [0077], [0079]. Kagan discloses “[t]he present invention enables a
wide variety of materials including insulators, semiconductors, metals, and
superconductors to be deposited from solution as patterned thin films.” Kagan,
para. [0083] (emphasis added). Thus, Kagan teaches that a solution-based process,
not microcontact printing, may be used to deposit a dielectric or insulator on a
substrate.
For the reasons set forth above, we will not sustain the § 103(a) rejections on
appeal.
C. DECISION
The decision of the Examiner is reversed.

REVERSED
sld