Ex Parte Wigglesworth et alDownload PDFPatent Trial and Appeal BoardDec 20, 201714189550 (P.T.A.B. Dec. 20, 2017) Copy Citation 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. 14/189,550 02/25/2014 Anthony Wigglesworth 20131309US01-XER3105US01 2137 62095 7590 12/21/2017 FAY SHARPE / XEROX - ROCHESTER 1228 EUCLID AVENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115 EXAMINER KALAM, ABUL ART UNIT PAPER NUMBER 2896 MAIL DATE DELIVERY MODE 12/21/2017 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 ANTHONY WIGGLESWORTH, YILLIANG WU, and CUONG VONG1 Applicant: XEROX CORPORATION Appeal 2017-006508 Application 14/189,550 Technology Center 2800 Before BEVERLY A. FRANKLIN, RAE LYNN P. GUEST, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1—7 and 9. We have jurisdiction the appeal under 35 U.S.C. § 6(b). over 1 Appellants identify the real party in interest as Xerox Corporation. Appeal 2017-006508 Application 14/189,550 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below: 1. An electronic device comprising a dielectric layer and a semiconducting layer; wherein the dielectric layer is formed from a first sublayer and a second sublayer, the first sublayer comprising a higher-k dielectric material and the second sublayer comprising a lower-k dielectric material, the first sublayer and the second sublayer being crosslinked together; and wherein the semiconducting layer comprises a diketopyrrolopyrrole polymer; wherein the semiconducting layer is adjacent to and in contact with the second sublayer of the dielectric layer; and wherein the diketopyrrolopyrrole polymer has the structure of Formula (5-a): Formula (5-aj wherein n is from 2 to about 5,000. 2 Appeal 2017-006508 Application 14/189,550 The Examiner relies on the following prior art references as evidence of unpatentability: Li US 2009/0065878 A1 March 12, 2009 Wu et al. US 2012/0141757 A1 June 07, 2012 (hereafter “Wu”) THE REJECTION2 Claims 1—7 and 9 are rejected under 35 U.S.C. §103 as being unpatentable over Wu in view of Li. ANALYSIS To the extent that Appellants have presented substantive arguments for the separate patentability of any individual claim on appeal, we will address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii). In the instant case, we thus consider only claim 1. Upon full 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 the Examiner’s rejection on appeal for essentially the reasons set forth in the Final Office Action and in the Answer, and affirm. We add the following for emphasis. 2 The rejection of claims 1—7 and 9 under 35 U.S.C. §112, second paragraph, as being indefinite has been withdrawn. Ans. 2. 3 Appeal 2017-006508 Application 14/189,550 It is the Examiner’s position that Wu discloses all the limitations of claim 1, except for explicitly disclosing the claim recitations of “wherein the semiconductor layer comprises a diketopyrrolopyrrole polymer”, and “wherein the diketopyrrolopyrrole polymer has the stmcture of Formula (5-a)”. Final Act. 3^4. The Examiner relies upon Li for teaching a semiconductor layer 22 that comprises a diketopyrrolopyrrole polymer, and provides advantages such as improved air-stability and enhanced field-effect mobility, and the Examiner refers to Li’s Figure 1 and | [0024] in this regard. Final Act. 4. The Examiner finds that Li discloses that the diketopyrrolopyrrole polymer has the structure substantially identical to that of Appellants’ claimed Formula (5-a), and refers to Formula (48) of Li. The Examiner finds that Li discloses conjugated moieties shown in | [0058], and concludes that the combined teachings of Formula (48) with the conjugated moieties taught in 1 [0058] renders obvious Appellants’ claimed formula (5-a). Final Act. 4—5. Appellants argue that Li’s Formula (48) does not read on the claimed Formula (5-a). Appeal Br. 5. However, as the Examiner finds (as stated above), it is the multiple teachings of Li regarding Formula (48) with the conjugated moieties shown in | [0058] which renders obvious Appellants’ claimed Formula (5-a). Ans. 5. Hence, Appellants inadequately address squarely the Examiner’s stated position in this regard. Appellants then state that it is not enough to show that a claimed species is encompassed by a prior art genus to establish a prima facie case of obviousness (Appeal Br. 5), and Appellants present several lines of argument on pages 5—7 of the Appeal Brief, and on pages 2—3 of the Reply 4 Appeal 2017-006508 Application 14/189,550 Brief, in support of this position. We are unpersuaded by such line of argument. We note that the fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). As such, Appellants’ position that the “multiple selections” (Appeal Br. 6) required to arrive at the claimed species, from among the possibilities found in Li, make the selection unobvious, is unpersuasive. The Examiner’s findings in the record indicate that the possibilities in Li are not so large, so as to make the selection as identified by the Examiner in the record, unobvious. Within this context, we thus agree with the Examiner’s conclusion of obviousness. Additionally, the Examiner points out on pages 6—7 of the Answer that the record is absent evidence of criticality or unexpected results, and this further supports the Examiner’s conclusion of obviousness. In view of the above, we affirm the rejection. DECISION The rejection is affirmed. 5 Appeal 2017-006508 Application 14/189,550 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). ORDER AFFIRMED 6 Copy with citationCopy as parenthetical citation