Ex Parte Wolkin et al

Patent Trial and Appeal Board

Jun 29, 2016

13620381 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/620,381 09/14/2012
99064 7590
Hollingsworth Davis
8000 West 78th Street
Minneapolis, MN 55439
07/01/2016
FIRST NAMED INVENTOR
Michal V. Wolkin
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.
20041212Q-USCNT/PARC003Cl 1251
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
tdotter@hdpatlaw.com
roswood@hdpatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAL V. WOLKIN and ANA C. ARIAS
Appeal2015-001000
Application 13/620,381
Technology Center 1700
Before GEORGE C. BEST, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 22-29. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 We cite to the Specification ("Spec.") filed Sep. 14, 2012; Final Office
Action ("Final Act.") mailed Dec. 10, 2013; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify Palo Alto Research Center Incorporated as the real
party in interest. App. Br. 3.
Appeal2015-001000
Application 13/620,381
BACKGROl.J1'-JD
The subject matter involved in this appeal relates to a method for
fabricating layered structures on a substrate to form a device, such as a
nanocalorimeter array. Spec. 1. Particularly, the Specification describes
using a printed layer as an etch mask and subsequently as a lift-off material
to produce adjacent first and second deposited material layers on a substrate.
Id. at 12, 24, Fig. 9. Sole independent claim 22 illustrates the subject matter
on appeal and is reproduced from the Claims Appendix of the Appeal Brief
as follows:
22. A method that produces a layered structure on a support
surface, the method comprising:
depositing a first layer of material over the support
surface with no interceding mask disposed between the first
layer and the support surface;
printing a mask over the first layer, the mask leaving
exposed a part of the first layer in a first region and covering an
adjacent part of the first layer;
removing the exposed part of the first layer;
depositing a second layer over the support surface, with a
first part of the second layer over the mask and a second part of
the second layer in the first region; and
lifting off the mask and the first part of the second layer
and leaving the second part of the second layer in the first
region next to the adjacent part of the first layer.
REJECTIONS3
I. Claims 22, 23, 25, 27 and 28 stand rejected under 35 U.S.C. § 102(e)
as unpatentable over Veres. 4
3 Ans. 2-3; Final Act. 2-3.
4 US 2006/0105492 Al, published May 18, 2006 ("Veres").
2
Appeal2015-001000
Application 13/620,381
IL Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Veres and Imai.5
III. Claims 24 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Veres and Rivers. 6
DISCUSSION
I.
With regard to Rejection I, Appellants argue that Veres fails to
describe "using a mask for the dual purposes of etching and lift off," in the
manner recited in claim 22. Reply Br. 5. Appellants further argue that
Veres also fails to describe the claimed step of "leaving the second part of
the second layer in the first region next to the adjacent part of the first
layer." Id. at 5-6. Rather, Veres describes only "vertically aligned/stacked
layers." Id. at 5. We agree.
Appellants' claimed method requires two process steps using the same
printed mask---(i) removing an exposed region of an underlying first coated
material and, subsequently, (ii) lifting off the mask to remove overlying
parts of a second coated material. Claim 22. There is no dispute that Veres
describes a step corresponding to (ii). Compare Ans. 2 with App. Br. 7
("Veres describes ... removing the lift-off ink and unwanted portions of the
device layers above it .... "). For the recited prior step of "removing the
exposed part of the first layer," the Examiner solely relies on paragraph 51
in Veres. Ans. 2, 4. There, Veres states only that "[t]he ink may optionally
be used in one or more additional steps as an etch mask." However, the
5 US 5,521,032, issued May 28, 1996 ("Imai").
6 US 6,878,495 Bl, issued Apr. 12, 2005 ("Rivers").
3
Appeal2015-001000
Application 13/620,381
Examiner does not identify sufficient evidence in Veres to support a finding
that the noted optional use of ink as an etch mask is performed prior to using
the same mask as a lift-off layer. Neither does the Examiner present any
finding that a process described in Veres produces the claimed arrangement
of a second coated material next to an adjacent first coated material on a
substrate. The fact that a subsequently-deposited ink pattern might be used
for etching does not establish disclosure of using a common ink pattern, first
as an etch mask and subsequently as a lift-off layer.
To establish a prima facie case of anticipation, the claimed elements
"arranged as in the claim" must be found in the prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d, 1359, 1370 (Fed. Cir. 2008). On
this record and for the foregoing reasons, we cannot conclude that the
Examiner has met the initial burden of showing that Veres describes the
arrangement of steps recited in each of claims 22, 23, 25, 27 and 28.
Accordingly, we cannot sustain Rejection I.
II, III.
Because each of Rejections II and III is principally based on the same
findings and determinations underlying Rejection I, we do not sustain either
of these rejections for the reasons set forth above in connection with
Rejection I.
DECISION
The Examiner's decision rejecting claims 22-29 is reversed.
REVERSED
4