Ex Parte Zaumseil et al

Patent Trial and Appeal BoardMay 14, 2018

14616803 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/616,803 02/09/2015 23373 7590 05/16/2018 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Jana ZAUMSEIL 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. Q217692 9332 EXAMINER TORNOW, MARK W ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JANA ZAUMSEIL, HENNING SIRRINGHAUS, LAY-LAY CHUA, PETER KIAN-HOON HO, and RICHARD HENRY FRIEND Appeal2017-010941 Application 14/616,803 Technology Center 2800 Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and MERRELL C. CASHION JR., Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 requests our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 1, 3-12, 16-27, 35, and 39--41. We have jurisdiction over the appeal under 35 U.S.C. Â§6(b ). We AFFIRM. Claim 22 is illustrative (emphasis added): 22. An ambipolar, light-emitting transistor comprising: 1 Appellant is the Applicant, Cambridge University Technical Services Limited as stated in the BIB data sheet. The real party in interest is identified as "PLASTIC LOGIC LIMITED" (Appeal Brief 2). Appeal2017-010941 Application 14/616,803 an organic gate dielectric layer; an organic semiconductive polymer layer forming an interface with the organic gate dielectric layer; and an electron injecting electrode and a hole injecting electrode in contact with the semiconductive polymer layer, separated by a distance L defining a length of a channel of the transistor, and arranged for travel of charge carriers along the interface between the organic gate dielectric layer and the organic semiconductive polymer layer, wherein a zone of the organic semiconductive polymer layer from which the light is emitted has a moveable location within the channel more than Lil 0 away from both the electron as well as the hole injecting electrode, the movable location within the channel being determined by a voltage applied between said electron injecting electrode and said hole injecting electrode. Claims Appendix (Appeal Br. 26). The Examiner maintains, and Appellant appeals, the following rejections: I. Claims 22, 16-21, 26, 35, and 39 are rejected under 35 U.S.C. Â§ 102(e) as being anticipated by Reeger et al. (US Patent No. 6,828,583 B2; issued Dec. 7, 2004) ("Reeger"); II. Claims 23 and 24 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Reeger; III. Claims 1, 3-12 and 25 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Reeger with Kelley (US Patent Application Publication No. 2003/0102472 Al; published June 5, 2003) ("Kelley"); and 2 Appeal2017-010941 Application 14/616,803 IV. Claims 27, 40, and 41 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Reeger with Meijer et al., (Solution-processed ambipolar organic field-effect transistors and inverters, Nature Materials 2, 678---682 (2003). ANALYSIS We have reviewed each of Appellant's arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner's finding that the claimed subject matter of independent claims 22 and 39 is anticipated, as well as the Examiner's determination that independent claim 23 is obvious, in view of Reeger (Rejections I and II). We also determine that a preponderance of the evidence supports the Examiner's rejections of claims 1, 3-12, 25, 27, 40, and 41 over the applied prior art (Rejections III and IV). Accordingly, we will sustain the Examiner's rejections for essentially those reasons expressed in the Answer, including the Examiner's Response to Argument section, and we add the following primarily for emphasis. Appellant's main dispute is that the Examiner has not properly identified where Reeger describes "a zone of the organic semiconductive polymer layer from which the light is emitted has a moveable location within the channel more than L/10 away from both the electron as well as the hole injecting electrode" as recited in claim 22 (and similarly in claims 23 and 39). The Examiner urges that Reeger does indeed have structural identity to the materials as recited in claim 22 (Ans. 3). Indeed, as the Examiner points out, Appellant's Specification indicates that any light emitting polymer will function as recited in claim 22 (Ans. 4; Spec. 41 ). 3 Appeal2017-010941 Application 14/616,803 It is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). It is also well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on Â§ 102 or Â§ 103 since the burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner's determination that the materials taught and suggested in Reeger are capable of having a moveable location as recited in each independent claim, especially since this capability is dependent upon an applied voltage, not on materials alone (e.g., Ans. 2 (pointing out that the claim recites that the moveable location is determined by an applied voltage)). See In re Michlin, 256 F.2d 317, 320 (CCPA 1958) ("It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function."). Attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Accordingly, the Examiner has presented a prima facie case of anticipation under 35 U.S.C. Â§ 102 (e) of the transistor as claimed. 4 Appeal2017-010941 Application 14/616,803 Appellant also argues that Reeger is not enabling for "an electrically- pumped light-emitting TFT in which the location of light-emission is determined by a voltage applied between the injecting contacts" (Appeal Br. 20; see also Appeal Br. 14, relying upon an article by Swensen et al. (also referred to as the Reeger article by the Examiner)). It is well settled that prior art under 35 U.S.C. Â§ 102(b) must be "enabling", i.e., it "must sufficiently describe the claimed invention to have placed the public in possession of it." In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). "Such possession is effected if one of ordinary skill in the art could have combined the publication's description of the invention with his own knowledge to make the claimed invention." Id. A reference is presumed to be enabling and therefore, once the examiner establishes that the reference teaches each and every limitation of the claimed invention, the burden shifts to the applicant to prove the reference is not enabling. Enablement is a question of law based on underlying factual findings. In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012). "[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee." Id. at 1288. When the applicant challenges enablement, however, the Board must "thoroughly revie[w]" all evidence and applicant's argument to determine if the prior art reference is enabling. Id. at 1292. "In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation. The standard for enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard under 35 U.S.C. Â§ 112." Novo Nordisk Pharms., Inc. v. Bio-Tech. 5 Appeal2017-010941 Application 14/616,803 Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (internal citations omitted). While section 112 states that the Specification must enable one skilled in the art to 'use' the invention, "section 102 makes no such requirement as to an anticipatory disclosure .... Rather, anticipation only requires that those suggestions be enabled to one of skill in the art." "Whether a prior art reference is enabling is a question of law based upon [the] underlying factual findings." Id. (internal citations omitted.) It has also been held that "proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation." Impax Labs. Inc. v. Aventis Pharms. Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006). "Rather, the proper issue is whether the ... patent is enabling in the sense that it describes the claimed invention sufficiently to enable a person of ordinary skill in the art to carry out the invention." Id. at 1383. In light of these guiding principles, we have reviewed Appellant's argument regarding enablement of Reeger (Appeal Br. 12 (e.g., Appellant states "facts indicate that Reeger does not include any enabling disclosure")). We conclude that a preponderance of the evidence supports the Examiner's position that Reeger has an enabling disclosure, contrary to Appellant's position (see Ans. 4--5 (the Examiner points out that the Reeger article did not discuss the Reeger patent relied upon, and Reeger explicitly describes electrically pumped organic injection lasers in support of enablement (Reeger, col. 14, 11. 22--48)). Cf In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013). Appellant does not provide sufficient factual evidence to support the arguments that Reeger is non-enabling (Briefs, generally). Furthermore, an artisan must be presumed to know something about the art apart from what the reference discloses. Cf In re Preda, 401 F .2d 825, 826 6 Appeal2017-010941 Application 14/616,803 (CCPA 1968) (In determining whether a reference anticipates the subject matter recited in a claim, "it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). After all, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int 'l. Co. v. Teleflex lnc., 550 U.S. 398, 421 (2007). Accordingly, the preponderance of the evidence supports the Examiner'sÂ§ 102(e) rejection. Appellant de facto mainly relies on the same arguments presented for the rejection of independent claim 22 for each of theÂ§ 103 rejections (Appeal Br. 17-20). To the extent Appellant separately addresses the Â§ 103 rejections, a preponderance of the evidence supports the Examiner's position for reasons as stated by the Examiner (Ans. 5-7). To the extent Appellant presents new arguments in the Reply Brief regarding the combination of Reeger and Kelley, it is inappropriate for Appellant to discuss for the first time in the Reply Brief matters that could have been raised in the Appeal Brief. 37 C.F.R. Â§ 41.41(b)(2) (2013). Accordingly, the Examiner'sÂ§Â§ 102 and 103 rejections are affirmed with respect to all of the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). ORDER AFFIRMED 7